trademarks & its advantages

8/9/2019 Trademarks & Its Advantages

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INTELLECTUAL PROPERTYRIGHTS

Presented by:AnnaAyushika

DinoLianShresthaSurbhi


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TRADEMARKS


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BRIEF BACKGROUND

TheTrade Marks Registry was established inIndia in 1940 and presently it administers theTrade Marks Act, 1999 and the rules thereunder.

The objective of theTrade Marks Act, 1999 isto register trade marks which qualifies forregistration under the Act and Rules and toprovide for better protection of trade markfor goods and services and also to preventfraudulent use of the mark.


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Why protection of Trademarks

Cons er ece tion

Quality associate to

roducts/services istinguis traders

cts as an advertise entinstrument for trader

rotects goodwill revents Unfair

advantage


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What is a Trademark?

A trade mark is a visualsymbol which may be a wordsignature, name, device,

label, numerals orcombination of colors usedby one undertaking on goodsor services or other articles of

commerce to distinguish itfrom other similar goods orservices originating from adifferent undertaking.


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The legal requirements to register a trademark under the Act are:

The selected mark should be capable of being

represented graphically (i.e. in the paper form).

It should be capable of distinguishing the goods orservices of one undertaking from those of others.

It should be used or proposed to be used in

relation to goods or services for the purpose of

indicating or so as to indicate a connection in thecourse of trade between the goods or services and

some person have the right to use the mark withor without identity of that person.


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Brand Value

Google $100.04 billion

Microsoft $76.25 billion

Coca-Cola $67.63 billion

IBM $66.62 billion McDonald's $66.58 billion

Source: Investopedia.com


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What can be a Trademark ?

(1)Any word or words:

Anacin, Compaq, MERCEDES-BENZ

(2)Any phrase or slogan "Just do it. Nike

Fly the good times Kingfisher

(3)Combination of words, phrases


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(4)Symbol (Sign) or design

(5)Device , Monograms, Sound marks.

(6)Signature


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(7) Letters

(8)Numerals

555 101 777

(9)Combination of Letters and Numerals


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(10)Names

(11)Shape of Goods,Color orcombination ofcolors.

(12) Package of the Goods


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What can be a Trademark?


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Trade name & Trademark A trade name is the full name of your business, such as:

Blackmark International Ltd and it identifies yourcompany. It often ends with Ltd., Inc. or other similarabbreviations that denote the legal character of thecompany.

A trademark, however, is the sign that distinguishes theproduct(s) of your company. And the company may havevarious trademarks.

Companies may use a specific trademark to identify allthe products, a particular range of products, or onespecific type of product.


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How to claim a Trademark Right

Trademark Rights associate to thebusiness by merely using it in themarket.

Also by Registration under theT

rademark legislation by which itrecognizes the owner of the mark asRegistered proprietor.

Trademark Registration is notMandatory

However having registration will helpin preventing piracy quickly and alsotake away the defense of innocentadoption by other traders


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WHAT IS THE DURATION OF A

TRADEMARK IN INDIA? Term of registration of a trademark is 10

years, which may be renewed for a further

period of 10 years on payment of prescribedrenewal fees.

Non-user of a registered trademark for a

continuous period of five years is a ground for

cancellation of registration of such trademark atthe behest of any aggrieved party.


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What is a servicemark?

Marks used to distinguish certain servicesas those Provided by a specific enterprise.

ex: Javed Habib, Cafee Cofeeday, VLCC,Nat West etc


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What is a certification mark?

Marks used to distinguish goods orservices that comply with a set of

standards and have been certified by acertifying authority.ex: ISI, WOOLMARK etc


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What is a collectivemark?

Marks used to distinguish goods orservices produced or provided bymembers of an association or Cooperative

Society.ex: CII, FICCI, Egyptian cotton


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What is a Well-Known Mark?

Marks that are considered to be well-known in the market and as a result

benefit from stronger protection.ex: Wander cola, Rolacola etc.


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How to selecta

trademark? If it is a word it should be easy to

speak, spell and remember.

The best trade marks are invented

words or coined words. Selection of a geographical name

should be avoided.

Avoid adopting laudatory word orwords that describe the quality of

goods (such as best, perfect, superetc)

It is advisable to conduct a marketsurvey to ascertain if same/similarmark is used in market.


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How to apply for atrademark

in respect of particular goods

or services? It is provided under theTrade Marks Act,1999 that

goods and services are classified according to theInternational Classification of goods and services

as laid in schedule IV of the Act. The Registrar is the final authority in the

determination of the class in which particulargoods or services fall.


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Whatpurpose/function thetrade

mark system serves ? It identifies the actual physical origin of goods

and services.The brand itself is the seal ofauthenticity.

It guarantees the identity of the origin ofgoods and services.

It stimulates further purchase, brand image,quality & advertisement.

It serves as a badge of loyalty and affiliation.

It may enable consumer to make a life style orfashion statement.


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Trademarks Distinctiveness ladder

SuggestiveDescriptiveGeneric FancifulArbitrary

LESS DISTINCTIVE MORE DISTINCTIVE


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Whatarethe sources of trade

mark laws?(1)The national statue i.e., theTrade Marks

Act,1999 and rules there under .

(2) International multilateral convention.

(3) National bilateral treaty.(4) Regional treaty.

(5) Decision of the courts.

(6) Office practice and rulings

(7) Decision of Intellectual Property AppellateBoard.

(8)Text books written by academician andprofessional experts.


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Whatdoes the Register of trade

mark contain ? The register of trade mark currently maintained

in electronic form contains inter-alia the trade mark,

the class and goods/ services in respect of which it isregistered including particulars affecting the scope ofregistration of rights conferred;

the address of the proprietors;

particulars of trade or other description of theproprietor;

the convention application date (if applicable); wherea trade mark has been registered with the consent ofproprietor of an earlier mark or earlier rights, that fact.


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Trademark Registration

ProcessFlow Chart

SEARCH

TRADE MARK APPLICATION

ISSUANCE OF OFFICIAL RECEIPT

RESPONSE

RESPONSE

ACCEPTED?

ACCEPTANCE

PUBLICATION

(Opposition 3 months)

REGISTRATION

RENEWAL

OFFICIAL

ACTION/HEARING

10 years from the

date of filing of

the application


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Two Stages

Stage One

Classification and Pre-Filing

Search

Trademark 42 Classes (including 7

Classes for Service Marks)

TM 54 (Search application) threecopies

TM 55 (Registrars PreliminaryAdvice)

Public Search atTrademark Office

StageTwo

Involves the registration Process

itself


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Trademark Registration Process

Contd.. Acceptance before

advertisement

Publication Wait for Opposition forThreemonths

Opposition Proceedings

Registration Initially for 10 years from the date of

the application

Renewal


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What are the main reasons for

rejecting the application?While selecting a trademark it is helpful to

know which categories of signs are usuallynot acceptable for registration.

Applications for trademark registration areusually rejected on what are commonly calledabsolute grounds.


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Absolute Grounds?

GenericTerms:

CHAIR for chairs

Descriptive terms:

SWEET for chocolates

Marks considered to be contraryto public order or morality

Flags, armorial bearings, officialHallmarks & emblems of states

And international organizations

Deceptive: marketing margarine

under a trademark featuring a cow


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Relative Grounds

When the trademark conflicts with prior

trademark rights

If the trademark is considered to be identicalor confusingly similar to an existing one for

an identical or similar products, it will be

rejected or cancelled, as the case may be

Avoid using trademarks that risk beingconsidered confusingly similar to existing

marks


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CAN A REGISTERED TRADEMARK BE REMOVED FROM

THE REGISTER

It can be removed on application to the

Registrar on prescribed form on the ground that

the mark is wrongly remaining on the register.The Registrar also can issue Notice for removal

of a registered trade mark. Non use of a

registered trademark for continuous period of 5

years is also a ground of removal.


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WHOCAN USESYMBOL ININDIA

Only the proprietor of a trademark whosetrademark has been registered in India can use thesymbol in India. sing the symbol unless yourmark has been registered in India is unlawful.WHENCANTHESYMBOL BE USEDININDIA

Using this symbol with your trademark simply

implies that you claim to be the proprietor of thetrademark.There is no prohibition on the use of thesymbol in India.


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WHAT IS THE PENALTY PRESCRIBED UNDER

CRIMINAL LAWS FOR INFRINGEMENT OF ATRADEMARK IN INDIA

The penalty for selling or providing services

using a false trademark is a minimum of sixmonths and maximum of three years and with

fine not less than Rupees fifty thousand but

which may extend to Rupees two lakh.


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The Advantages of Trademark

Registration in India Indian trademarks registration is possibly the most

crucial piece of the intellectual property protectionprogram of a company.Therefore without proper

trademark registration the company would entirelyrely upon common legal rights in the geographicarea where the company uses trademark.

Most important, without this registration thelatecomer might even register a mark similar or

identical to their own mark. But if you haveregistered at the right time your company wouldhave all the superior rights to the latecomer andblock their expansion.


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Trademark filing in India offers constructive notice of yourregistration and also defeats any claims which the infringerdidnt know that you had already registered trademark.

Trademark registration India creates jurisdiction to filetrademark infringement action at the business place ofplaintiff.

The credible rights can also become incontestable whenyou use Indian trademarks within the next five years.

Some other companies which conduct trademark searchbefore adopting the trademark would most likely not adopta mark strictly similar to the trademarks of your company.

Your registration on Indian trademarks register would bethe basis for the convulsion of infringing merchandise and

counterfeit. Additionally if you need to expand offshore then the date

of trademark filing might even be used as the precedencedate in other countries if they are members of anInternational agreement.


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The registration of a trade mark confers upon the ownerthe exclusive right to the use of the registered trademark and indicate so by using the symbol (R) in relationto the goods or services in respect of which the mark isregistered and seek the relief of infringement inappropriate courts in the country. The exclusive right ishowever subject to any conditions entered on theregister such as limitation of area of use etc. Also, wheretwo or more persons have registered identical or nearly

similar mark due to special circumstances such exclusiveright does not operate against each other.


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Excl siv rights revent thersfro r eting products under

same or confusingl similarmar

ecures investment inmar eting efforts

romotes customer loyalty/reputati o n / image ofcompany

Provides coverage in relevant

mar ets here usinessoperates

Registered mar s permitlicense or asis franchisingagreements


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Who benefits fromatrademark? T

he Regd.Proprietor: The Regd.Proprietor of a trade markcan stop other traders from unlawfully using his trade mark,sue for damages and secure destruction of infringing goodsand or labels.

The Government: TheTrade Marks Registry is expected toearn a revenue of nearly Rs.40 crores during the current

year and which is perpetually on the rise. The Legal professionals: TheTrade Marks Registration

system is driven by professionals and legal and para legaladvisors(Agents) who act for the clients in the processing ofthe trade marks application.

The Purchaser and ultimately Consumers of trade marks

goods and services.


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TRADEMARK RISKS

INFRINGEMENT

PASSINGOFF

SUIT FORTHREATOF LEGAL PROCEEDINGS

ANDTRADE LIBEL


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WHAT CONSTITUTES INFRINGEMENT IDENTICAL OR DECEPTIVELY SIMILAR MARKS

COVEREDGOODS AND SERVICES

USE OF MARK IN COURSE OFTRADE USE OF MARK IN MANNER OFTRADE MARK

PERMITTEDUSER

MAGIC V MAGIX FOR FANS


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INFRINGEMENT

IDENTICAL MARK - SIMILARGOODS AND

SERVICES

MATRIX V MATRIX FOR MOUSE AND KEYBOARD

SIMILAR MARK IDENTICAL OR SIMILAR

GOODS AND SERVICES

MAGIC V MAZIX FOR FANS

IDENTICAL MARK IDENTICALGOODS AND

SERVICESMATRIX V MATRIX FOR COMPUTERS


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MEDILINE HEALTH CARE PVT. LTD. V. SHRI PAWAN

KUMAR VARSHNEY, TRADING AS SALAKA PHARMA

CARE PVT. LTDAPPLICANTSTRADE MARK ANTIFLAM

RESPONDENTTRADE MARK NT FLEM

PHARMA PRODUCTSINFRINGEMENT?

YES

THE COURT HELD SINCE THE GOODS ARESAME, RIVAL MARKS PHONETICALLY SIMILARAND RESPONDENT SUBSEQUENT USER,THEREFORE HELD INFRINGEMENT


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INFRINGEMENT BYADVERTISING

COMPARATIVE ADVERTISINGDECLARE OWNGOODS AS BESTDECLARE OWNGOODS BETTERTHAN

OTHERS, EVEN IFUNTRUE

COMPARE ADVANTAGES OF OWNGOODSWITH OTHERS

NOT SLANDER OR DEFAME

DISPARAGEMENT

FALSE OR MISLEADINGSTATEMENTSTATEMENTCAPABLE OF DECEPTIONDECEPTION INFLUENCE PURCHASINGDECISION


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ACTS NOT CONSTITUTING INFRINGEMENT

HONEST PRACTICES EG LIVTEC V LIVDEE

NOUNFAIR ADVANTAGE DETRIMENTALTODISTINCTIVE CHARACTER OR REPUTE. EG

COMPARATIVE ADVERTISEMENT

DESCRIPTIVENESS. EG COOLAIR FOR AIRCONDITIONERS


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USAGE SUBJECTTO CONDITIONS ANDLIMITATIONS

RESALE OFGOODS OR SUPPLY OF SERVICESON WHICH MARK APPLIED AND NOTREMOVED EG PARALLEL IMPORTATION

USE ON PARTS OR ACCESSORIES EG CARAND CAR ACCESSORIES

LAWFUL ACQUISITION OFGOODS WITHTRADEMARK


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MCDONALDS V MCCURRY

MCDONALDS -RIGHTCLAIMED OVERTHE WORD MC

SIMILAR SERVICES- BOTH IN RESTAURANT BUSINESS

MCCURRY - MC / MAC IS A COMMON NAME OF A

PERSON,USED COMMONLY IN BUSINESS ACROSSVARIOUS DOMAINS

INFRINGEMENT?

NO

COURTHELD HONEST PRACTICE. NOTTAKINGUNFAIR

ADVANTAGE.


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EXCEPTIONS

NOTITLETO SUE

INVALID REGISTRATION OFTRADEMARK

ACTDOES NOTCONSTITUTE INFRINGEMENT CONCURRENT REGISTRATION

PRIORUSER

INNOCENT INFRINGEMENT

LONG DELAY, LACHES AND ACQUIESCENCE


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GENERAL PRINCIPLES - PASSING

OFF MISREPRESENTATION

COURSE OFTRADE

PROSPECTIVE ANDULTIMATE CONSUMERS INJURIOUSTO BUSINESS ORGOODWILL

ACTUAL DAMAGETO BUSINESS OR

GOODWILL


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ELEMENTS OF PASSING OFF

GOODWILL OR REPUTATION

DEPENDS ON NATURE OFGOODS, QUANTUM OFSALES, EXTENTOF ADVERTISEMENT, AREA OFUSAGE

DECEPTION

DEPENDS ON NATURE AND EXTENTOF REPUTATION,FIELDS OF ACTIVITY, SIMILARITY OF MARK,CONSUMERS LIKELYTO RECEIVE

DAMAGETOGOODWILL OR REPUTATION

ACTUAL OR PROBABLE

DIVERSION OF SALES, INJURIOUS ASSOCIATION,MISAPPROPRIATION OF BUSINESS REPUTATION


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HONDA MOTORS V. CHARANJIT

SINGHPLAINTIFF - HONDA FOR MOTORS

DEFENDANT HONDA FOR PRESSURE COOKERS.

PASSINGOFF?

YES

COURTHELD SUCHUSEOFTRADEMARK HONDA IS

CREATINGDECEPTION OR CONFUSION INTHE

MINDS OFTHE PUBLICAT LARGEANDSUCH

CONFUSION IS CAUSINGDAMAGE OR INJURYTO

THE BUSINESS, REPUTATION,GOODWILL AND FAIR

NAMEOFTHE PLAINTIFF.


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MEANS ADOPTED FOR PASSING OFF

DIRECT FALSE REPRESENTATION

ADOPTION OF OR COLORABLE IMITATION OFSAMETRADEMARK

ADOPTION OF COMPLETE OR ESSENTIAL

PARTOF RIVALTRADERS NAME DUNKIN

DONUTV DUNKENTYRE


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IMITATING DESIGN OR SHAPE OF GOODS

COPYING OF GET UP OR COLOUR SCHEME


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EXCEPTIONS

NON DISTINCTIVENESS

DELAY, LACHES, ACQUIESCENCE,

MISREPRESENTATION OF FACTS OR

FRAUDULENTTRADE

GOODS AND BUSINESSESTOTALLY

DIFFERENT

BONAFIDEUSE ISOLATED INSTANCE


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THREAT OF LEGAL POCEEDINGS AND

TRADE LIBEL THREAT

LIBEL

SU

ITMAY BE FILED ONLY FORTHREAT FOR INFRINGEMENTOF

REGISTERED MARK


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REMEDIES

CIVIL INJUNCTION, DAMAGE, PROFIT

CRIMINAL IMPRISONMENT,FINE, BOTH

ADMINISTRATIVE ANTON PILLAR ORDER,

MAREVA INJUNCTION


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OFFENCES

FALSIFYINGTRADEMARK

FALSELY APPLYINGATRADEMARK

MAKINGOR POSSESSING INSTRUMENTS FOR FALSIFYINGTRADEMARK

APPLYING FALSETRADE DESCRIPTION

APPLYING FALSE INDICATION OF COUNTRY OF ORIGIN

TAMPERIN

GWITH AN INDICATION OF ORI

GIN

CAUSINGANY OF ABOVE


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SELLINGGOODS OR POSSESSINGOR EXPOSING FOR

SALE OFGOODS FALSELY MARKED

REMOVING PIECEGOODS

FALSELY REPRESENTINGTRADEMARK ASREGISTERED

IMPROPERLY DESCRIBING PLACE OF BUSINESS AS

CONNECTED WITHTRADEMARK OFFICE

FALSIFICATION OF ENTERIES IN REGISTER


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Future vision of TMR

In due courseTMR intends to eliminate paperbased activities and switch to paperless working.

Accession to InternationalTreaties to which India

is a signatory that would involve data exchangewith International IP offices.

Introduce web conferencing facilities to conducthearing

Introduce Work from Home culture for some

trade marks activities like examination etc Create a knowledge based/digital library forTMR.


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THANK YOU

trademarks & its advantages

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