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!