INTER REGIONAL FORUM on ROLE OF IP IN INNOVATIVE ECONOMY
organized by
DIPP, Govt. of India
and WIPO in association with FICII
THE USE OF DISTINCTIVE SIGNS TO ENHANCE COMPETITIVENESS AND MARKET ACCESS
PRESENTATION BY
V.RAVI, CGPDTM
BRAND BUILDING
• In a free market goods /services are partitioned amongst competitors • Sustainable brands target market based on many business variables • Examples: Product innovation, Quality parameters, Influx of new entrants, Growth prospects, Supply/demands situation, Pricing strategy etc
• Involves adoption and use of good Trade Marks
Role of TM in Brand Building
• The term , ”Mark” is defined in TM Act, 1999 in Section 2(1) (m ) to include : Any name , Device, Word, letter, Numeral, Shape of Goods, Packaging, Colour combination etc. • Trade Mark is defined in Section 2 (1) (z) (b) to means a Mark :
- Used or proposed to be used in the course of trade - which is capable of being represented graphically - AND is capable of distinguishing goods/ services of one entity from other undertaking
Essential Functions of TM
• Serves as a badge of origin
• Advertisement function – promotes sale
• Consistency in Quality to guarantee repeat orders
• To distinguish Goods and Services from competitors
• To create goodwill and brand reputation
Registration of TM
• Not compulsory • However, if registered, it confers exclusive rights to the use of the Trade Mark • No infringement action without registration
• To qualify for registration the TM should have a capacity to distinguish and be free from conflicting marks already on the register • Public Policy : Not to register certain prohibited marks
Distinctiveness
• TM Act prohibits registration of trade Marks that are devoid of Distinctive Character
• Distinctiveness means - capacity to communicate that the Goods/ Services originate from a particular source
• Substantial portion of relevant section of public associates the particular Mark as originating from a particular source • Distinctiveness is with reference to use of the Mark in India
Spectrum of Distinctiveness
• Fanciful/ Invented words : for example, KODAK • Arbitrary Marks – Common words adopted in a meaningless context Example: APPLE for Computers • Suggestive Marks: Do not describe Goods but invokes consumers’ perspective imagination • Descriptive Marks: These are Dictionary Words describing the quality or other characteristics of the goods : FRAGRANCE for Agarbatti • Generic Marks: These are common names of the products; Ex - Salt for Sodium Chloride, Ghee for Butter • Laudatory Marks: Super , Best, Perfect etc
ASSESSING DISTINCTIVENESS
• Suggestive Marks may be registrable on evidence of use • Descriptive Marks are difficult to secure registration unless it has acquired secondary meaning through extensive use • Generic words are unregistrable . Example- Aspirin etc. • In USA, if the Mark is used for 5 years, the registration becomes incontestable • In India Mark can be registered both as proposed to be used and with prior use;
MARKET ACCESS
India - Vibrant and growing market Brand strategy has profound implications Workout a package with local preferences Over time safeguards Shareholders’ interests • Make effective exit strategy when the brands fail • Keep finding new markets through product innovation • For peace of mind adopt sensible IP- brand Policy • • • •
KEY ELEMENTS
to Enhance
COMPETITIVENESS • Adopt good trade marks with proper legal advice • Get official search report or search on-line • Apply for registration of TM • After registration use the Mark in the market • Explore licensing and franchising options • Issue periodical Caution Notice • Make periodical on line search and apply for caveat on form TM-58 in case same or similar marks is applied for by competitors;
THANKS!