Trademarks (DOC download)

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					TRADEMARKS

A trademark is a visual symbol in the form of a word, device, or a label applied to articles
of commerce with a view to indicate to the purchasing public that they are the goods
manufactured or otherwise dealt in by a particular person as distinguished from similar
goods manufactured or dealt in by other persons.

Statutory definition of trade mark:

   Trademark must be a mark, which includes a device, brand, heading, label, ticket,
    name, signature, word, letter, numeral, shape of goods, packaging or combination of
    colors or any combination thereof.
   The mark must be capable of being represented graphically
   It must be capable of distinguishing the goods and services of one person from those
    of others
   It may include shape of goods, their packaging and combination of colors
   It must be used or proposed to be used in relation to goods or services
   The use must be for the purpose of indicating a connection in the course of trade btw
    the goods or services and some persons having the right as proprietor to use the mark
   The right t o proprietorship of a trademark maybe acquired by registration under the
    act or by used in relation to particular goods or services
   The right of proprietorship acquired by registration is a statutory right, which requires
    no actual user but only an intention to use the mark. On the other hand the right
    acquired by actual user in relation to particular goods or services is a common law
    right which is attached to the goodwill of the business concerned

Function of a Trade mark:

    1.   Identifies the product and its origin
    2.   It guarantees its unchanged quality
    3.   It advertises the product
    4.   It creates an image of the product

Object of Trade mark Law:

    1. To deal with the precise nature of rights which a person can acquire in respect of
       trademarks
    2. The mode of acquisition of such rights
    3. The method of transfer of those rights to others
    4. The precise nature of infringement of such rights
    5. Remedies available in case of infringement




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What is a good trade mark?

   1. Easy to pronounce and remember (if it is a word)
   2. (In case of device mark) the device should be capable of being described by a
      single word
   3. easy to spell correctly and write legibly
   4. should not be descriptive but may be suggestive of the quality of the goods
   5. it should be short
   6. appeal to eye as well as ear
   7. should satisfy the requirements of registration
   8. Should not belong to the class of marks prohibited for registration

Different forms of protecting trade marks and goodwill:

   1. Registration (best way to protect – infringement can be easily established)
   2. (in case of unregistered marks or marks which are not registrable) the only way
      they can be protected is by passing off

An unregistered Trademark called a common law TM can be kept alive and protected for
as long as it continues to be used provided the owner of the mark takes appropriate action
against infringers.

Trademarks becoming generic words:

- value of trademark can be maintained only if proprietor uses it constantly and takes
prompt action against infringers

- if infringement is not prevented the mark is likely to become a generic word of
common use in the trade

- XEROX, aspirin, kerosene, gramophone, nylon, gripe water are well-known examples
of trademarks becoming generic words

Service Marks

trademarks are for manufactured goods, similarly service marks are for services –
hospitality, entertainment, education etc.

Licensing of Trademarks

- for patents and copyrights, licensing of the rights is a very obvious option, for
commercial exploitation

- but for trademarks? Can a company licence it?




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- the function of a TM is to indicate origin of the product, so licensing may be considered
deceptive

- it is against public interest

- however, development of modern industry and commerce has necessitated the licensing
of trademarks (especially registered), under suitable conditions and safeguards

- statute provides for licensing of registered trademarks as registered users

- licensing by any other way (except under provision), though not prohibited, is not
recognized by law.

Certification Trademark

This is a type of mark whose function is not to indicate trade origin (like an ordinary tm
does) but to indicate that the goods bearing the mark have been certified by the proprietor
as to certain characteristics of the goods like geographical origin, ingredient etc.
Eg. Cholestrol free, made from Egyptian cotton, ISI

Collective trademark

A TM distinguishing the goods or services of members of an association form those of
others. Propreitor of the mark is the association. Eg. Darjeeling tea association

Service mark

For services, like TM for manufactured goods. Service Mark distinguishes the service
rendered by one person from those of others.

Appellate board

There is an Appelate Board to hear and decide all appeals regarding TMs (from the
decision of the registrar)

Trademark Registry

-An office called the trademark registry has been established for the purpose of
registration of trademarks and maintenance of the register.

-Head office of the Registry is at Mumbai.

-Branch offices at: Kolkata, Delhi, Chennai, Ahmedabad.

- the Trademark Registry has a seal and is under a charge of the Registrar of Trademarks
who is also the controller-general of patents and designs.



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- Apart from the register of trademarks, the Registry maintains an index of
         registered trademarks
         applications for registration
         names of proprietors of trademarks
         the names of registered users

- The branch offices keep a copy of the register and copies of indexes.

- Under the new trademarks act 1999, the register may be maintained in computer
floppies or diskettes.

Registrar as a Tribunal (Tribunal = Court of Justice)

The registrar of TM is a tribunal and has the vast discretionary powers in regard to
matters pertaining to registration of the trademarks and the functions related to it.

He has the power of a civil court in issues related to trademark.

The Registrar also has the power to review his own decision.

However, the decisions of the registrar are appealable to the Appellate Board.

Juris diction of the Trade mark Offices

The jurisdiction of the head office and the branch offices are territorially demarcated on
the zonal basis.

Applications for registration should be filed in the office within whose territorial
jurisdiction the applicant’s principal base of business is located.

All applications for registration of trademarks are examined and processed in the head
office.

Hearing in respect of the applications are held at the appropriate office where the
applications were filed.

Applications for rectification and oppositions to applications are filed and dealt with in
the respective offices where the applications for registration of the marks were filed.

The law of trademarks is based largely on two concepts:

       1. distinctiveness

   -   a mark has to be distinct in order that the purchaser is able to clearly differentiate
       the product from other similar products


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   -   distinctive vs non-distinctive marks

       distinctive (fancy names, invented words, lesser heard words, words unrelated to
       trade): pepsi, coke, EXXON, WINDOWS, MICROSOFT

       non-distinctive (descriptive word, surname, geographical name): Bajaj, Usha,
       Kentucky Fried chichen

       2. deceptive similarity

       ‘competition success review’ vs competition
       time vs samay (time in hindi – very recent case)
       ellora clocks vs elora time pieces
       pearl appliances-pearle appliances
       peacock brand plastic wares – mayur plastic wares
       rediff vs radiff
       yahoo vs yahooindia
       tata tea vs tatara tea

Property in a trademark
(by what ways can property vest in the owner of TM right)

   -   under common law a trader acquires a right of property in a distinctive trade
       merely by using it (irrespective of the length of use or size of business)

   -   as for 2 persons each desirous of adopting the same mark, it is entirely a question
       of who gets there first!

   -   There is no right to the exclusive ownership of a trademark apart from its use in
       connection with some vendible commodity. [property in a TM does not exist in
       vacuo]

   -   Property in a non-distinctive trademark can be acquired by extensive use of the
       mark in relation to some goods which has resulted the mark becoming distinctive

   -   Property in a TM can be lost in many ways:
              In case of registered TMs by non-payment of renewal fee
              For common law TM by non- use for a length of
              time or by unrestricted piracy

What marks are registrable

The trademarks law does not define any categories of marks registrable.

But basic qualification for registrability may be seen from the statutory defn.:



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   a) capable of graphical representation
   b) capable of distinguishing goods or services of one person from others


It only defines 2 categories of marks that are not registrable :

   -    absolute grounds of refusal
   -    relative grounds of refusal

absolute grounds of refusal

   a) devoid of any distinctive character (not capable of distinguishing goods or
      services of one person from others) [.]dot, [___]line

   b) which indicates quality or other descriptive character of the goods or services
      {sweet chocolate}, {fast/reliable computers} {best cellphones}

   c) which have become customary in current language – sweet sweets, computer
      computers or generic names kerosene, aspirin, gripe water, XEROX, currently
      ‘Windows’ is having problem in registering


marks not registrable

   -    a mark that will deceive or cause confusion
   -    hurt religious sentiments ..eg nike sole, picture of goddess Meenakshi for
        fertilizers
   -    scandalous or obscene matter
   -    emblems, flags, names prevented under ‘Emblems and Names (Prevention of
        Improper use) Act 1950’
   -    when shape of goods is purely functional

   relative grounds of refusal

   a)    a mark which is identical or similar to an earlier trademark and the respective
         goods n services are similar (anyone starts making computers and wants Compaq
         or HCL as trademark)

   b)    a mark which is identical or similar to an earlier trademark but the goods n
         services are similar
         eg Mercedes Benz –VIP Benz , Kodak Cycles

--- these marks may be registrable if the proprietor of the earlier TM consents
--- or by ‘honest concurrent use’




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In considering 2nd category of marks (same mark, different goods), factors to be
considered are:

- Extent to which the earlier TM is a well-known tm in India

- Whether use of the applicants mark would take unfair advantage of the earlier tm

- Whether use of the applicant’s mark would be detrimental to the distinctive character or
repute of the earlier mark

Good Trademarks:

- Distinctive device or word, invented words, non-descriptive words

- For pharmaceutical products, word marks are indispensable

- Device marks have one advantage over other marks, is that if the device is original, it
can be considered an artistic work and protected under copyright law (double protection)

Procedure for registration

Who may apply?
Any person claiming to be the proprietor of the trademark used or proposed to be used by
him can apply.
Application may be made in the name of an individual, partners of a firm, a Corporation,
any Government department, a trust or joint applicants.

Preliminary advise and search
Before applying for registration, applicant may apply for a report from the registrar, and
his opinion on distinctiveness of the mark

Examination and objections

Registrar will examine the application and give his report and opinion.

The applicant can then put forward his application.
If application is accepted, it will be advertised in the Trademarks Journal.

If refused, applicant may go on appeal to the appellate board. This may not be very
worthwhile.

If cause is lack of distinctive character, use it for some years and then go back

If cause is similarity with earlier, better go for fresh trademark.




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Duration and rene wal of registration

If the decision for registration is in favor of the applicant, the mark will be registered as
of the date of application for registration.

First registration is for 10 years which can be renewed from time to time by paying a
renewal fee.


Certification trade mark

A class of marks the purpose of which is to indicate that the goods on which it is
impressed have been certified by some competent person in respect of some characteristic
of the goods like origin, composition, quality etc.
ISI, Agmark, Bromark, Star Alliance



Concurre nt registration

Of same mark by 2 persons, honestly and independently, without knowledge of each
other’s marks, in different regions, with minimum or no confusion.

In order to entitle a person for Concurrent Registration, the following facts must be
established:

           1.   adoption n use must be honest
           2.   quantum is commercially significant
           3.   degree of confusion likely to follow should be minimal
           4.   if reg. not granted, how much hardship will be caused to applicant, if reg.
                is granted, how much inconvenience will be caused to public




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