Renewal Of An Expired Trademark In India And United States

Trademark law of India is passing through an interesting and developmental phase. Recently Samsung has raised the issue of international exhaustion of a trademark under Indian trademark law. Similarly, trademarks registrations in India have also increased as India is becoming a favourite destination for commercial activities world over.

Trademark registration in India is regulated by the Trademarks Act 1999 of India. A registered trademark is valid for a period of 10 years that can be renewed for another 10 years at a time. Further, international registration of trademarks under Madrid Agreement and Madrid Protocol can also be explored by applicants. However, the Madrid Agreement and Madrid Protocol and its applicability and implementation in India are still in a flux.

There may be cases where a trademark holder fails to renew his/her/its trademark in time. Renewal of an expired trademark is the only option left in such cases. In India even if the mark has been expired, one can apply for its re-registration. If someone else applies for registration of expired trademark as per the prescribed procedure, owner of expired trademark can file objections at the registry, tribunal or appropriate forum.

In United States (US), to keep the registration alive or valid for all trademarks registrations, except for non Madrid Protocol based registrations, the registration owner must file specific documents and pay fees at regular intervals.  Failure to file these documents will result in the cancellation of his/her/its registration.

For Madrid Protocol Based Registration, after the protection is granted to the international registration and a U.S. registration issues, to keep protection in the U.S., the U.S. registration owner must file specific documents and pay fees at regular intervals. Failure to file these documents will result in the cancellation of his/her/its U.S. registration and the invalidation of protection of the international registration by the United States Patent and Trademark Office (USPTO).

Under Section 8 of the Trademark Act, 15 U.S.C. §1058, a §8 Declaration of Continued Use is required to be given by the trademark owner. The Declaration is a sworn statement, filed by the owner of a registration that the mark is in use in commerce. If the owner is claiming excusable nonuse of the mark, a §8 Declaration of Excusable Nonuse may be filed. The purpose of the §8 Declaration is to remove marks no longer in use from the register.

The USPTO will cancel any registration on either the Principal Register or the Supplemental Register if a timely §8 Declaration is not filed by the current owner of the registration during the prescribed time periods.  The USPTO has no authority to waive or extend the deadline for filing a proper §8 Declaration. Registrations finally cancelled after the expiry of permissible period due to the failure to file a §8 Declaration cannot be reinstated or revived.  A new application to pursue registration of the mark again must be filed.

Holders (owners) of registered extensions of protection to the U.S. (also called §66(a) registrations, registrations resulting from 79’ series applications, international registrations extended to the U.S.) who wish to maintain the protection granted their mark in the U.S. pursuant to the Madrid Protocol must file an affidavit or declaration of use in commerce or excusable nonuse to avoid cancellation of protection in U.S. Such affidavits are required pursuant to Section 71, 15 U.S.C. §1141k, of the Trademark Act.  The USPTO has no authority to waive or extend the deadline for filing a proper §71 Declaration.  Registrations finally cancelled after the expiry of permissible period due to the failure to file a §71 Declaration cannot be reinstated or revived.  A new application to pursue registration of the mark again must be filed.  

The holder of a registered extension of protection of an international registration to the U.S. must file an application for renewal of the international registration with the International Bureau (IB). Renewal of international registrations is governed by Article 7 of the Madrid Protocol and Rules 29 - 31 of the Common Regulations under the Madrid Agreement and Protocol.

A renewal can be filed during the six months before expiry of the period of protection or in the six months following the expiry of the current period of protection with the payment of a surcharge.

The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee.

Perry4Law hope this information would be useful to all concerned stakeholders.

Source: IPR Services In India.

Online Gambling Laws And Regulations In India

Online gambling in India has aroused great interest among many e-commerce entrepreneurs of India. This is because online gambling is a very remunerative and profit oriented business. However, online gambling is also a complicated business filed as many laws and technical issues have to be resolved at the same time.

We have a central law on gambling called the Public Gambling Act of 1867. Similarly, we have many state laws on gambling that are mostly based upon the central law. Further, almost all the state laws are regulating real world or offline gambling in India. The exception in this regard can be found in the laws applicable in places like Goa and Sikkim.

Recently Goa has made its casino laws very stringent keep in mind the money laundering, black money and tax evasion issues in mind. Similarly, Sikkim is also in the process of harmonising its laws with the central laws.

As far as judiciary is concerned, the Supreme Court of India has made a distinction between skills based and chance based gaming activities. Of course, each case depends upon its own facts and circumstances and the respective state law and we cannot apply one decision uniformly in all cases of gambling and online gambling. 

The e-commerce laws and regulations in India are still at the infancy stage. As a matter of fact, a majority of e-commerce portals and players in India are not following the laws of the land in true letter and spirit. Surprisingly, there is a general misconception among the e-commerce players of India that for running an e-commerce website in India they need not to follow much law. On the contrary, there are well recognised legal requirements to start an e-commerce website in India and the legal formalities required for starting e-commerce business in India.

The chief among these e-commerce players are online pharmacies, online gambling and gaming portals, electronics e-commerce websites, etc. They fail to understand that use of technology has brought additional legal issues that are primarily techno legal in nature. Their continued ignorance may bring civil, criminal and financial penalties. The recent spate of FDI crackdowns by India government proves this point.

At Perry4Law and Perry4Law’s Techno Legal Base (PTLB) we believe that cyber law due diligence, Internet intermediary liability and cyber due diligence for Indian companies must be kept in mind by various e-commerce websites and players. The skill and chance and state subject legal arguments are not sufficient to comply with complicated techno legal requirements of India as on date. So before launching an e-commerce portal, the concerned person or company must make it sure that techno legal requirements are duly complied with.

Source: E-Commerce Laws And Regulations In India.

Optical Character Recognition (OCR) Legal Issues India

Optical character recognition (OCR) is one of the most important stages of e-discovery or cyber forensics process. OCR is the process where images of handwritten, typewritten or printed text are converted into machine-encoded text using the mechanical or electronic conversion.

The main purpose of OCR is to digitise printed texts so that they can be electronically searched, stored more compactly, displayed on-line through virtual data rooms, and used in machine processes such as machine translation, text-to-speech and text mining. OCR is also very important for presenting and defending claims and obligations in civil and criminal proceedings.

OCR, e-discovery and cyber forensics are sometimes combined while investigating financial frauds and crimes, serious frauds, forensics audit, white collor crimes, corporate frauds, fraud risk analysis, IT and cyber frauds, etc.

However, there are certain techno legal issues that must be taken care of while engaging in the OCR activities. If these techno legal issues are not followed properly, the end OCR product may not be admissible in a court of law or other investigation.

Further, only relevant material must be converted into legally admissible electronic records, including OCR. A proper chain of custody must be maintained at all stages of converting printed and other text documents into digital documents and OCR.

There is no sense in converting the entire paper based document s in to electronic format as not all electronic versions would be relevant to the case or investigation. Even lesser electronic records and OCR would be held admissible in a court of law.

According to Perry4Law and Perry4Law’s Techno Legal Base (PTLB) the most important attribute while engaging in the OCR exercise meant for litigation purposes is to first ascertain the relevant documents and then convert them into digital format keeping in mind the admissibility criteria while following proper chain of custody. 

If you are interested in our techno legal services, you may contact us in this regard. See our techno legal services, cyber forensics services, US, UK and EU laws compliances, etc in this regard.

Source: E-Discovery Services In India.

Inter-Ministerial Group Will Study TRAI Recommendations On Broadcasting

Telecom Regulatory Authority of India (TRAI) has recently given some very far reaching and significant recommendations to the Indian government. TRAI’s recommended liberal shareholding rules for telecom service providers is one such recommendation. TRAI has also provided its recommendations regarding the feasibility of entering into broadcasting business by the Central and State Government(s).

Now an inter ministerial group has been set up to examine recommendations made by TRAI regarding the broadcasting business by Centre and States. The group has been set up by the Information and Broadcasting Ministry (I&B Ministry) and it would be headed by the Additional Secretary J S Mathur.

The I&B Ministry would reach a conclusion only after the group studies the TRAI’s recommendations. I&B Ministry had earlier sought clarifications from TRAI on whether Central or State Government(s) or entities on which they have control could be allowed to enter broadcasting or distribution of channels.

TRAI had given an opinion that Central Government Ministries, Departments, Companies, Joint Ventures or Entities which belong to or are funded by Centre or State Government(s) should not be allowed to enter in to the business of broadcasting and or distribution of TV channels.

Many States have approached the I&B regarding the issue at hand and the group’s finding may help the Ministry at reaching a conclusive decision.  

TRAI Recommended Liberal Shareholding Rules For Telecom Service Providers

Telecom Regulatory Authority of India (TRAI) has recommended liberal and relaxed shareholding rules for service providers provided the stakes do not lead to control of spectrum. This means that no spectrum trading would not be permitted. TRAI has provided its suggestions to the Department of Telecommunications (DoT).

Further, as per the recommendations, new service providers will be able to own more than 10% equity in more than one operator in a service area. However, it will be permitted only if the operator owns spectrum in just one company. This means that the substantial equity/cross-holding requirement should only be linked to spectrum holding.

For instance, a mobile service provider can own a company that is operating fixed line services in the same service area. This was not permitted under existing guidelines. At present, an operator is allowed to own more than 10% equity in only one company in a service area.

The regulator has also recommended that sharing of the spectrum should be permitted for the new operators. Old operators will have to pay the new price of spectrum determined through the auction.

If accepted, this would be a major relief to the new operators. Service providers are demanding that spectrum sharing should be permitted as it would reduce the cost of providing services and would increase efficiency.

MTS Plans To Continue Its Operations In India In 2013

Telecom operations in India were in doldrums in the year 2012. The licences of many telecom service providers involved in 2G spectrum allocation were cancelled after the directions of Supreme Court of India.

Even taxation issues were in limelight when Vodafone dragged the disputed tax to the level of Supreme Court and won the case. Now Indian government has once again served a tax due notice upon Vodafone. Vodafone has reacted to the same by denying any pending tax payments and has made Vodafone’s intention of invoking international arbitration for tax disputes with India very clear.

One of the telecom operators whose licence was cancelled by the Supreme Court is MTS. The Russian industrial group Sistema owns 57% of shareholding and stakes in the MTS and the remaining is with its Indian partner. MTS has also made it clear that it will continue its operations after its licences expire on 18 January 2013. The company is optimistic for a favourable decision in its favour to an appeal filed by it against a decision in 2012 to cancel its licences.

Telecom Regulatory Authority of India (TRAI) has already told all telecom operators affected to tell their customers of the expiry of the licences after 18 January. MTS has responded by saying it “wishes to inform millions of its customers that being fully committed to its customers and the investments it has made in India, it intends to continue its operations beyond 18 January 2013 and in this context has taken and is taking all the possible steps, to ensure the continuity of its services beyond 18 January 2013”.

MTS has already filed a curative petition against the judgment seeking to annul the cancellation of its licenses. MTS believes that it has a very good case in the curative petition both in facts and law and is hopeful of a favourable order of restoration of its licences.

Vodafone May Invoke Arbitration For Fresh Tax Demands By India

The Vodafone taxation controversy in India has again resurfaced. Vodafone has been served with tax due notice by Indian tax authorities. Vodafone reacted in the much anticipated manner and denied any tax due on its part. Vodafone is also feeling confident due to the ruling of Supreme Court of India in its favour.

Meanwhile, the Parliament of India amended the tax law of India with retrospective effect. At Perry4Law, we believe that legally there are few options still available to both Indian government and Vodafone. It is not the situation that either party to the dispute has absolute case.

While the Indian government has the backing of a retrospective law yet Vodafone can invoke arbitration proceedings before international tribunals under the concerned Bilateral Investment Protection Agreement.

In fact, Vodafone has already served an arbitration notice to the Indian government regarding the proposed tax. However, Indian government declared such notice to be premature and ignored it. Now that Indian government has raised fresh tax liability claims, Vodafone may serve a fresh notice to initiate the international arbitration proceedings.

Vodafone has already acknowledged the receipt of fresh demand notice by Indian tax authorities. However, Vodafone told Indian government that it is not liable to any tax on the deal in question. The reminder does not include a deadline for payment and it pertains to the alleged capital gains tax arising from the sale of assets by Hutchison Whampoa to Vodafone in 2007.

Now that a fresh tax demand has been raised, it is for the Vodafone to challenge the same either in Indian courts or at an international arbitration forum. It seems Vodafone would prefer the arbitration mode as against the litigation in India but only time would tell what would be Vodafone’s choice.