Types of Intellectual PropertyßCopyrightsßTrademarksßPatentsßIndustrial Design RightsßTrade SecretsßGeographical IndicationsßSemiconductor Integrated Circuits LayoutßPlant variety rights
INTELLECTUAL PROPERTYß COPYRIGHT - relate to literary or creative works.ß TRADEMARKS - relate to product names or symbols.ß PATENTS - relate to inventions.ß TRADE SECRETS-Any confidential business information that provides an competitive edge.ß GEOGRAPHICAL INDICATIONS- name or sign used on products which belongs to specific geographical location or origin.ß SEMICONDUCTOR INTEGRATED CIRCUITS LAYOUT - provides for protection of Semiconductor Integrated Circuits Layout Design and for matters connected therewith.ß PLANT VARIETY RIGHTS- Granted to the breeder of a new variety of plant that gives exclusive control over the materials seed, cuttings, divisions, tissue culture.
CD PLAYER Music played on the CD player isIndustrial protected bydesign copyrightprotection for3D shape VariousBrand technical partsname-name- & mechanismsregistered are subjectunder mater oftrademark protection under Patents
What is Trademarkß A trade mark is a distinctive sign or indicator used by an individual, business or other legal entity to identify for consumers that the products or services on or with which the trademark appears originate from a unique source, designated for a specific market and to distinguish its products or services from those of other entities.ß Section 2(1) (m) of TM Act, 1999 defines ‘Mark’ as “Mark includes a – Device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packing or combination of colours or any combination thereof.” Example ‘M’ – written in a particular style with yellow colour for MacDonalds’; 555/777 numerical used for detergent soaps; ‘signature’ used as a mark for alcohol etc. Trademark may also be three-dimensional (e.g. neck of bottle).
Registration contents in Trade Marks Name Logotype Symbol Slogan Shape Color
Objects of Trademark Registrationß It deal with the precise nature of the rights, which a person can a acquire in respect of a Trade Mark.ß The mode of acquisition of such rights.ß The method of transfer of those rights to others.ß the precise nature of infringement of such rights and the remedies available in respect thereof.ß A person who sells his goods under a particular trade mark acquires limited exclusive right to use of the mark in relation to those goods.ß A trade mark may be registered or unregistered. An unregistered trade mark is called common law mark.ß A trade mark when registered gets a stable existence. A registered trade mark can be in relation not only to its existing use but also for a proposed use.
TRADE MARKS CAN BE REGISTERED IFA trade mark which consists of at least one of the following essential characteristics can be registered.a)The name of a company, individual or firm represented in a particular or special manner;b) The signature of the applicant for registration;c) One or more invented words;d) One or more words having no direct reference to the character or quality of the goods except the exceptions listed in the next section;e) Any other distinctive trade mark; andf) A trade mark which has acquired distinctiveness by use over a prolonged period of time.
Functions of a Trade Markß It identifies source of the goods / manufacturers.ß To signify that all goods bearing the same trade mark have a single source.ß It acts as prime instrument in advertising and selling the goods for creating an image for products.ß A registered trademark gives the right to exclusive use of the mark.ß A registered trademark serves as a proof of certificate in court proceedings.ß It has acquired importance over the years, viz. to protect the trade and business interests of the owner of the brand, as also the goodwill associated with the brand, in case of infringement of trade mark.
Rights of registered markß Certain rights are attach to a registered mark, such exclusive rights can be enforced by way of an action for trademark infringement by owner of a registered trademark to prevent unauthorized use of that trademark and may initiate legal proceedings for trademark infringement.ß while un-registered trademark rights may be enforced pursuant to the common law tort of in the nature of “passing off”.ß It should be noted that trademark rights generally arise out of the use of, or to maintain exclusive rights over, that sign in relation to certain products or services.
Benefits of Registrationß The fundamental benefits of a trademark is to exclusively identify the commercial source or origin of products or services, so a trademark, properly called, indicates source or serves as a badge of origin. Trademarks must be clear and distinct from each other.ß Trademark is a symbol that indicates, who is responsible for the goods placed in the market.ß Trademarks help to distinguish between the goods of competing traders.ß Trademark helps a customer to buy goods of a certain quality (e.g. color, size, weight, fragrance, taste.)
WHO GETS TRADE MARK PROTECTIONß A trade mark is granted protection specifically to the applicant on the basis of :ß First Adoptionß First Userß First Inventorß In case of the plaintiff is having adoption and later use but claimed prior registration of the trademark than the defendant, who is first Inventor / Adaptor and having prior Use, hence, first Invention / Adaption and having prior User of the mark, which will be superior then the registration granted to plaintiff.
A trademark may be designated by the following symbolsß™ (for an unregistered trade mark ) that is, a mark used to promote or brand goods)ß℠ (for an unregistered service mark, that is, a mark used to promote or brand services)ß®(for a registered trademark)ßA trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
ORIGIN & HISTORY OF TRADE MARKSß In trademark history, it is usually reported that blacksmiths, who made swords in the Roman Empire are thought of as being the first users of trademarks.ß BAKERS LAW PRECEDENT The Anglo Indian trademark law had its origin dating back to 1266. It was also called as the Bakers Marking Law. As the name says the law required bakers to place a mark on the loaves of bread that they sold, identifying the baker.28 Any bread offered for sale unstamped was at once confiscated by the “officer of abundance” and the offending bake was mulcted in heavy damages.ß One of the important acts in the history of trademarks is the law of bread and beer assizes.
ß BAKERS LAW-ß The statute laid down a uniform acceptable standard of measurement, it defined the statute by declaring that ,by the consent of the whole realm of England, the measure of the king was made that is to say that an English penny, called a sterling round and without any clipping shall weigh thirty two wheat corns in the midst of the ear, and twenty pence do make and twelve ounces one pound and eight pounds do make a gallon of wine ,and eight gallons of wine do make a London bushel, which is the eighth part of a quarter.ß Section 38 of the Usages of Winchester, which probably antedate 1275 requires every baker to put 1275, his recognised stamp (sun sel sunu) upon his bread.ß Marks were registered with the local officer and were made with wood or metal and simple flower techniques and designs.
ß Other notable trademarks that have been used for a long time include ”Löwenbräu”, which claims use of its lion mark since 1383, Registered trademarks involve registering the trademark with the government. The oldest registered trademarks in various countries include:ß United States Oldest trademark : Samson (a rope- making company), featuring a depiction of the Biblical figure Samson wrestling a lion, was the first to be trademarked in the United States in 1884, and is still used by that company today.ß Bass Brewerys logo became the first image Brewerysß to be registered as a trademark, in 1875ß United Kingdom Oldest trademark: 1876 – The Bass Brewerys Red Triangle for ale was the first trademark to be registered under the Trade Mark Registration Act 1875.
TRADEMARK LAWS IN INDIAß While some form of proprietary protection for marks in India dates back several millennia, India’s statutory Trademarks Law dates back to 1860. Prior to 1940 there was no official trademark Law in India.ß Numerous problems arouse on infringement, law of passing off etc and these were solved by application of section 54 of the specific relief act 1877 and the registration was obviously adjudicated by obtaining a declaration as to the ownership of a trademark under Indian Registration Act 1908.ß To overcome the aforesaid difficulties the Indian Trademarks Act was passed in 1940, this corresponded with the English Trademarks Act.ß India’s Oldest trademark :M/s. James Buchanan & Company UK has filed trademark Application no. 10 on 1/6/1942 for the mark BLACK and WHITE (scotch whisky) which is still registered up till 2016
ß After this there was an increasing need for more protection of Trademarks as there was a major growth in Trade and Commerce.ß The replacement to this act was the Trademark and Merchandise Act 1958.This Act was to provide for registration and better protection of Trademarks and for prevention of the use of fraudulent marks on merchandise. The objective of this act was easy registration and better protection of trademarks and to prevent fraud.ß The re-appellation of the Trademarks and Merchandise Act 1999; was done by the Government of India, in compliance with the TRIPS obligation on the recommendation of the World Trade Organisation.
ß The object of the 1999 Act is to confer the protection to the user of the trademark on his goods and prescribe conditions on acquisition, and legal remedies for enforcement of trademark rightsß It will for the first time protect service marks and give provision of registration for collective marks, it will also differentiate between well known trademarks and trademarks in general, and also special treatment and rights are envisaged for well known trademarks. The act of 1999 also gives police the right to arrest in case of infringement.ß There are definitions of terms frequently used, enhanced punishment for offenders, increased the period of registration, registration of non- traditional trademarks.
ß some points of changes that are present between the 1958 act and 1999 act, it can be said that the 1999 act is a modification of the 1958 act, it has provided exhaustive rules. The rules of this act are called as Trademark Rules 2002.ß Both the Act and its set of rules came to effect on September 15th 2003. The trademark act 1999 and its trademark rules 2002 presently govern Indian Trademark Laws in India. Laws of trademarks are based on distinctiveness and deceptive similarity. If distinct signs are freely used the brand equity created by one person will be freely used by another. The value of distinctive sign depends on sales volume and public association of sign with quality.
INDIAN TRADE MARK ACT, 1999 SALIENT FEATURESß Some major changes brought about in the law of trade marks in India by the Trade Marks Act, 1999 are summarised as under:ß Inclusion of trade mark for services in the definition of trade mark;ß A new provision for registration of Collective Marks;ß Prohibition of registration of certain marks which are mere reproductions of or imitations of well known marks;ß Provision for filing a single application for registration in more than one class of goods and/or services;ß Increasing the term of registration of a trade marks from 7 to 10 years and providing a grace period of six months for payment of renewal fees;
ß Amplification of circumstances in which validity of registration can be contested;ß Vesting the final authority in the Registrar for disposing of application for registration of Certification Trade Marks;ß Harmonizing penal provisions of the Trade Marks Law with The Copyright Law;ß Provision for establishment of an Appellate Board.ß The use of a trademark in this way is known as trademark use.ß Different goods and services classified by the NICE Classification 45 trademark classes (1 to 34 cover goods, and 35 to 45 services) to unify classification systems around the world.
Procedure for Registrationa) Filing of TM applicationb) Examinationc) Acceptance and publicationd) Opposition, if anye) Registration
TM Registration Process
The Trademarks Act 1999ß Chapter 2 - The Register and Conditions for Registrationß (Covers section 3 to section 17)ß Chapter 3 - Procedure for and Duration of Registrationß (Covers section 18 to section 26)ß Chapter 4 - Effect of Registrationß (Covers section 27 to section 36)ß Chapter 5 - Assignment and Transmission.ß (Covers section 37 to section 45)ß Chapter 6 - Use of Trade Marks and Registered Usersß (Covers section 46 to section 56)ß Chapter 7 - Rectification and Correction of the Register.ß (Covers section 57 to section 60)ß Chapter 8 - Collective Marks.ß (Covers section 61 to section 68)ß Chapter 9-Certification Trade Marks. 9-ß (Covers section 69 to section 78)
ß Chapter 10 - Special Provisions for Textile Goods.ß (Covers section 79 to section 82)ß Chapter 11-Appellate Board. 11-ß (Covers section 83 to section 100)ß Chapter 12 - Offences, Penalties and Procedure.ß (Covers section 101 to section 121)ß Chapter 13 – Miscellaneous.ß (Covers section 122 to section 159)
TYPES OF TRADEMARKSßThere are basically four types of trademarks they areß Service MarkßCollective MarkßCertification MarkßWell known trademarksßAll these types of Trademarks are equally important and promote activity as well as maintain the distinctiveness of the product.
SERVICE MARKSß A service Mark is any word, name, symbol, device, or any combination used or intended to be used in commerce to identify and distinguish the services of one provider by others and to indicate the source of services , it may be called “service mark”.ß Section 2 (1) (z) of TM Act of 1999. 1999.ß It means service of any description that is made available to any potential users and includes the provision of service in connection with business of any industrial or commercial matters such as banking, communications, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, loading’ entertainment’ amusement, construction, repair, conveying of news or information and advertising.
ß It is basically useful in distinguishing one service provider from the other. Service Marks do not cover physical goods but only the provision of services. Service marks are used to identify a service. some examples of them are:-ß Management and investment servicesß housing development servicesß Advertising, sponsorship, Promotional services. services.ß all types of consultancy & Professional services. services.ß Hotel and motel services .ß Entertainment services rendered by individual , group or theatre.ß That it can play a crucial role in marketing, promoting and sales of a product or service, it also plays the role of referring to a particular quality or standard for which the service mark is used.
Collective Markß Section 2(1) (g) of TM Act of 1999ß “A Trade mark distinguishing the goods or services of members of an association of persons not being partnership firm from those of others”ß A collective mark is utilised for goods and services with same characteristics which are to be traded by one or more person acting jointly or legal entity for differentiation with other goods or services of same kind. Examples of collective trade marks includeß The "CA" device used by the Institute of CA" Chartered Accountants.ß The mark "CPA", used to indicate members of the Society of Certified Public Accountants.
CERTIFICATION MARKß Section 2 (1) (e) of TM Act of 1999. There is a 1999. species of trade mark called as Certification Trade mark. Its function is to indicate that the proprietor of the mark has certified the goods bearing the mark as to certain characteristics of the goods. A certification mark indicates that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, and mode of manufacture of goods or performance of services, quality, accuracy, or other characteristics. An important requirement for registration of certification mark is that entity which applies for registration is “competent to certify” the products concerned. Thus owner of certification mark must be representative of products to which certification mark. e.g. Geographical origin, ingredients and so on such as ISI, AGMARK, FPO
WELL KNOWN TRADE MARKSß Section 2(1) (zg) of TM Act of 1999. (zg) Well known trade mark in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services. Example: TATA, Coco Cola, Frooti, Bata enjoys an Frooti, unparalleled reputation and goodwill and has acquired the status of a "well known" trademark.
Few Trademarks & Service Marks
GROUNDS OF REFUSALß Sections 9- 17 of Trademark Act of 1999, deal with the conditions, under which a Trade Mark can be refused registration.ß If an application for the registration of a Trade Mark denotes any of the characteristics, mentioned under the following categories, it will not be registered as a Trade Mark. These are the most important sections, which need to be considered for registering a mark.ß The Absolute Grounds (section 9)ß The Relative Grounds (section 11).ß Based on an understanding of these grounds, the following marks may not be able to get registration under the Trade Marks Act:ß A Mark which is devoid of any distinctive character ( which is incapable of distinguishing the goods or services of one person from that of another),
ß A Mark which is likely to deceive or cause confusion,ß A Mark which is contrary to any law for the time being in force,ß A Mark which is phonetically similar to any existing registered mark,ß A Mark which is deceptively similar to any existing registered mark,ß A Mark which is identical to any existing registered mark,ß A Mark which contains scandalous /obscene matter,ß A Mark which is likely to hurt the religious sentiments of a particular class of the society,ß A Mark which is disentitled to protection in court, andß A Mark whose use is prohibited under the Emblems and names (Prevention of Improper Use) Act, 1950.
PROCEDURE FOR AND DURATION OF REGISTRATIONß Section 18 -Application for registration.ß Every application under sub-section (1) shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India of the applicant whose name is first mentioned in the application as having a place of business in India, is situate.ß 19. Withdrawal of acceptanceß Where, after the acceptance of an application for registration of a trade mark but beforeß its registration, the Registrar is satisfied –ß (a) that the application has been accepted in error; or
ß (b) that in the circumstances of the case the trade mark should not be registered. Or should be registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted, the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted.]ß 20. Advertisement of applicationß (1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted together with the conditions or limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner:
Section 21. Opposition to registration(1) Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration. (2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed counterstatement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.
Section 25. Duration, renewal, removal and restoration of registrationß (1) The registration of a trade mark, after the commencement of this Act, shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.ß (2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last registration).
Section 25. Duration, renewal, removal and restoration of registrationß Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration of the last registration.
Removal of trademark section 25(3) ß (3) At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade mark from the register:
PROPERTY MARKSß Section 479 of Indian Penal Code, 1860 provides that “A mark used for denoting that moveable property belongs to a particular person is called a property mark.” mark.ß The distinction between ‘trade mark’ and ‘property mark’ is not recognized in English Law. Law.ß However in India, the distinction between a ‘trade mark’ and a ‘property mark’ is as follows: follows:
Distinction between property mark and Trademark Trade Mark Property MarkIt denotes manufacture It denotes the ownershipor quality of the goods to of themwhich it is attachedIt concerns the goods It concerns thethemselves proprietor of the goods
Distinctive Mark Distinctive (unique) and not descriptive for the type of product or service being registered but if descriptive, it can be registered only if sufficient evidence of use is presented - acquired distinctiveness¡ Distinctive marks identify goods or services as originating from a particular company, and consequently distinguish those goods or services from competitors’ goods or services.¡ Have little or no descriptive function; Operate primarily to identify a product source.¡ Inherently distinctive: Marks that are unique (made up) or very original.¡ Secondary Meaning: Marks that become distinctive due to TM owner’s efforts to create distinctiveness (long-term use & public recognition)
DESCRIPTIVENESS DISTINCTIVENESSCHEESE FROM DENMARK TENNISSHOES ADIDAS TENNISSHOES
Distinctive Yes Noß Word SUPPER Superß Logoß Word/Logo
Descriptive Trade MarksThe trademark, which consist exclusively of signs orindications which may serve, in trade, to designate thekind, quality, intended purpose, value, geographicalorigin, the time of production of goods or of renderingof services, or other characteristics of goods or servicesIt Describe some quality or characteristic of goods orservices in descriptive terms like:¡ SWEET to sell chocolates.¡ “Apple” brand apple juice¡ “ORWOOLA” or “Pure whool” for 100% for wool materials.¡ “The Band” Not protected unless “secondary meaning” acquired
DESCRIPTIVENESS DISTINCTIVENESSCHEESE FROM DENMARK TENNISSHOES ADIDAS TENNISSHOES
TYPES OF TRADEMARKSß Coined or Invented Trademarks:ß These Trademarks are meaningless trademarks which enjoys highest amount of legal protection e.g. KODAK, RANBAXY, DABUR.ß These marks also includes common words but arbitrary in connection with the products or services e.g. TORTOISE for Mosquito coil, CAMEL for Cigarettes, APPLE for Computers, OMEGA for watch.ß Suggestive or Semi-descriptive Trademarks: These Trademarks are always preferred by Marketing people as it creates association with the product without being descriptive. These Trademarks are easily remembered and easy to promote than coined or invented marks. Suggestive marks also includes plain dictionary words e.g. SWATCH, TITAN, RELIANCE, INFO GATE, CYBERSURFER, HEAD & SHOULDER
ß Descriptive Trademarks:ß Marketing people are mostly keen on finding the name, which communicates product associations to consumers. But no or minimal protection is granted by the law to such trademarks unless it is being used extensively and continuously for many years with huge sale and advertising to popularize the same. Examples of Descriptive marks are RAPID RICE, SWISS CHOCOLATE, LITE FOR BEER, EASY CASH, ANY TIME MONEY, HAIR & CARE, FAIR & LOVELY,ß House Marks:ß A Trade Name or House mark is a mark to identify a Company or a business and serves as the name of the Company or a business. Many times, a Group of Companies use its house mark on its products or services along with or without any other Trademark e.g . GODREJ’s JUMPIN and GODREJ STOREWELL, TATA TEA, TATA SALT, TATA PRESS, NESTLE’s NESTEA, NESTLE’s MILO, BAJAJ SCOOTER, BAJAJ MAJESTIC for Toaster, BIRLA WHITE Cement, BRITANNIA GOODDAY, BRITANNIA CREAM TREAT, AMUL CHEESE, DABUR HONEY.
ß Figurative Trademarks:ß Each of the above mark may be combined with figurative elements or marks. It is also possible to use a figurative mark in isolation. Such figurative elements are added or used exclusively for different markets where there is communication problem i.e different languages are used in different markets.ß The Figurative marks can also be like word marks of following types:ß Meaningless, fancy or pure fantasy marksß Arbitrary or marks without any relevance with the product (half bitten apple for APPLE Computers, ARROW for Shirts)ß Suggestive (Cow for MILKMAID), TWO ELEPHANTS pulling a chain in opposite side joined with FEVICOL)ß Descriptive (device or picture of Wheat for Bread, device of hand showing No. 1 for McDowell’s No. 1 Whisky, Running Deer through letter “S” for Savani Transports)ß For its distinctiveness full legal protection is granted to such figurative marks.
A generic Trademarkß Brand names become generic when they are so commonly used that people associate the brand name for every product of that type regardless of who manufacturers it, or who trademarked the name. The trademark becomes synonymous with a product. And while you would want your product to become that well known, a trademark can lose the right to registration and protection if it becomes generic. Did you that in Austria Sony lost its trademark registration for the walkman? Here are a few examples of genericized trademarks.ß Through this PPT we’ve included images of once trademarked brand names that have become generic, either officially or in practice. Did you recognize them? The Yo-Yo, the Escalator, the Zipper, the Band-Aid and the Kleenex have all gone the way of the generic.
ß These are actually not a Trademark but generic, chemical or ingredient’s original name. However, some of the Trademarks which are used generically and hence became generic and not protected as a Trademark.ß ASPIRIN,ß THERMOS,ß KEROSENEß ESCALATOR,ß GRIPE WATER,ß REFRIGERATORß DALDAß were Trademarks but due to its general and descriptive use by all together with improper protection by its owners made them generic words. Today, many companies are facing dilution of their Trademarks due to its general use such as XEROX for photocopies, VELCRO for fasteners etc.
ß sometimes the power of the masses overrules the power of law. Take the word “escalator,” a brand name originally trademarked by the Otis Elevator Company. Soon, people started using the word “escalator” to refer to all moving stairs, not just Escalator-brand moving stairs. This improper usage eventually became so common that the U.S. court declared the term “generic.” Now, any company that produces moving stairs may call their product an “escalator.”
i1 Deceptively Similar / Identical Mark ß If it concerns the same or similar/identical products and services: The name of product / service cannot be similar or identical to a previous mark Meaning the way the mark is: Written, Looks, Phonetic (sounding), Conceptual similarity, however The same similar / identical brand name can be used for different products/services in different classes.
Slide 57i1 First half of slide changed (to make more understandable) ihl, 12/4/2006
Deceptively Similar / Identical - Examplesß Written Cool / Koolß Looksß Sounding Basket / Buskit For You / 4Uß Conceptual Star / Stern
VIVO AND TIVO
The Concept of Unfair Competitionß The law of unfair competition is primarily comprised of torts that cause an economic injury to a business through a deceptive or wrongful business practice. Unfair competition can be broken down into two broad categories. First, the term "unfair competition" is sometimes used to refer only to those torts that are meant to confuse consumers as to the source of the product. The other category, "unfair trade practices", comprises all other forms of unfair competition.ß Unfair competition does not refer to the economic harms involving monopolies and antitrust legislation. What constitutes an "unfair" act varies with the context of the business, the action being examined, and the facts of the individual case.
ß Unfair competition can be broken down into two broad categories. First, the term "unfair competition" is sometimes used to refer only to those torts that are meant to confuse consumers as to the source of the product. The other category, "unfair trade practices", comprises all other forms of unfair competition.ß that fall into the area of unfair competition include: false advertising, "bait and switch" selling tactics, unauthorized substitution of one brand of goods for another, use of confidential information by former employee to solicit customers, theft of trade secrets, breach of a restrictive covenant, trade libel, and false representation of products or services.
Methods of unfair competitionß Our judiciary has continually enlarge the definition of unfair competition and the methods of unfair competition, which are as varied as they are ingenious and are not limited to palming off; it includes not onlyß infringement of trademarks, service marks and trade names,ß simulation of a product or its packaging, palming off by unauthorized substitution, and use of similar titles of artistic works,ß dilution of trade symbols,ß misappropriation of distinctive literary and entertainment characterizations, misappropriation of the right of publicity and other business values, false advertising and other false representations.
Trademark infringementß The trademark infringement case is the likelihood of confusion �that is, the alleged infringer will be prohibited from using a trademark on a competing product if that use causes a likelihood of confusion in the mind of a relevant purchaser.ß The Courts have set forth a number of factors for determining the likelihood of confusion, such as the closeness of the appearance, sound, and meaning of the conflicting marks; the relatedness of the goods on which the marks are used; the channels of commerce in which the marks are sold; and the sophistication of the relevant purchasers of the goods. Thus, in analyzing any trademark infringement situation, all of these factors as well as other relevant factors not mentioned must be considered.
PASSING OFFß Passing off is a wrong, a common law tort which protects the goodwill of a trader from misrepresentation. Misleading the public into believing falsely, that the brand being projected was the same as a well known brand is a wrong and is known as the tort of “passing off” .ß Though the trademark of whirl pool corporation was not registered in India, as it was removed from the trademark register for non use / non renewal.ß As held in the famous case of N. R. Dongre Vs. Whirlpool Corporation “A man may not sell his own goods under the pretence that they are the goods of another man.” Law aims to protect traders from this form of unfair competition.
Civil remedies for Protection of TrademarkIn case of Infringement In case of Passing offStatutory remedy available for a Common law remedy against aregistered proprietor against person of passing off his ownviolation of his exclusive right to goods as those of another & en-use the trade mark; cashing on other’s goodwill;Mere confusion is enough for Actual deception has to begetting interim and final relief. proved for getting any relief.Trade Mark registration is prima Evidence showing longfacie proof of ownership of the continuous use of the brandmark. needs to be led thereby showing prior adoption, use then infringerRegistered owner can initiate Passing Off action can beaction in a Court , where the owner initiated, where the Defendantresides or carries it’s business or carries on its business or wherewhere cause of action arose. cause of action arose.infringement is actionable per se, Owner of the unregistered brandowner need not to prove specific has to prove actual monetarymonetary damage in case of the damages because of its wrongfulinfringement adoption.
Palming offß The Palming off is considered to be a species of unfair trade and competition or of actionable unfair trading by which one person, through deception attempts to obtain an economic benefit of reputation, which another has established, for himself in a particular trade or business, for instance, Warner Ltd. v. Antox India Pvt. Ltd., 1990 Suppl. SCC 727.ß The touchstone in any action of unfair competition in trademarks is the likelihood of confusion about the origin of product.ß Unfair competition when used in connection with palming off, is understood to mean the result of the defendant’s act, i.e. deception of the public, rather than his intent.
Public is considered deceived, when a seller uses a trademark on a competing product and that use causes a likelihood of confusion in the minds of a relevant purchaser. The spectrum of palming off has been consistently broadened and it includes at least three situations; they are(1) substitution of one brand of goods when another brand is ordered;(2)trademark infringement where the infringer intentionally meant to defraud and confuse buyers; and(3)trademark infringement where there is no proof of fraudulent intent, but there is a likelihood of confusion of buyers. palming off essentially requires an intent to deceive and actual fraud
Trademark dilution as unfair competitionß Another main area of unfair competition in trademark infringement is trademark dilution, which can happen either by blurring or tarnishment.ß Blurring of trademark occurs when the trademark is used with a number of goods and service not controlled by original owner, by which it looses its distinctiveness in the market.ß The Tarnishment occurs when the other party attaches the trademark with an activity that brings disrepute to the trademark. For example, using a cold drink trademark for a "playboy" magazine.
Damagesß This damage can occur in two different ways. The first is a blurring of the distinctiveness of the mark. If consumers see the mark being used on a number of different goods and services not controlled by the original owner, the original owner’s mark will lose “cachet” or distinctiveness. In some cases the likelihood of confusion is not present, but there is still damage done to a recognized mark by a second seller’s unfair use of it.ß The second damage to the mark is by tarnishment. In this case, the original mark is used in such a way that the consumer knows, because of the context or the usage, that there is no connection between the owners of the respective marks. However, use of the mark by the other party brings the trademark owner’s mark into disrepute or shows the trademark in a bad light.
Remedies for infringement and unfair competitionß Remedies in the case of trademark infringement and unfair competition include injunction, imprisonment up to three years, fine to a maximum two lakh Indian Rupees, damages, rendition of account of profit and cancellation of registration of trademark.ß Remedy for unfair competition is generally in conjunction with remedy for trademark infringement. However, an order as to non-infringement of trademark does not necessarily mean dismissal of a suit for unfair competition as held in Frito-Lay India v. Guru Pasad Enerprises, 2004(29) PTC 537(Del).ß Seeking a remedy for unfair competition along with remedies for trademark infringement and passing off can certainly strengthen a case.ß
Trade Namesß Trade names are not marks. A trade name is a word, name, term, symbol, or combination of these, used to identify a business and its goodwill. Whereas, a mark identifies the goods or services of a company, a trade name identifies the company itself.ß Trade names and marks are related. For example, if one business adopts a trade name similar to a mark used by another, the trade name of the first business may impede the effectiveness of the mark used by the second in identifying the source or origin of goods or services.ß Consumers may come to believe that the first business makes goods, or provides services, sold by the second. For this reason, conflicts can arise between trade names and marks.
ß Trade names also can function as marks. Many companies use all or part of their business names as marks on their products, or in connection with their services.ß When a trade name is used by a company in this dual fashion, it becomes even more important that competing companies refrain from using a similar trade name or mark.
Comparison of Trade Names & TrademarksLaws Trade Names Trade Marks & service marksProtection Law Commercial Laws Trademark LawFunction To distinguish traders To distinguish goods (companies) and servicesComposition Composition Characters Composition Characters, Name, figures, signs, etc.Protection Indefinite Ten years & renewalsperiodScope of Within the same city, Same right throughoutright town, as designated by India the law
TRADE DRESSß It is pertinent to discuss in brief about the Trade Dress. Trade Dress is the overall appearance of the goods or their packaging or of advertising or the means for delivering goods or services. For Example a restaurant’s name or logo will constitute as a Trademark while its style, furnishing and ornamentation of restaurant premises identify the restaurant’s services, which constitute Trade Dress (e.g. McDONALD’S restaurant chain). Even the shape, size and graphic design of packaging including its internal and external configuration will constitute a Trade Dress (MAGGI in a typical yellow and red colours).ß Trade Dress like a Trademark, is protectable if it is distinctive i.e. it distinguishes the owner’s goods, services or business from those of other. Inventive, arbitrary or suggestive features or combination of any its features will make the Trade Dress distinctive. However, in some cases Trade Dress may be inherently distinctive. Inherently distinctive Trade Dress usually refers to “Product packaging Trade Dress that serves to immediately single out a brand or product source”. Otherwise, the Trade Dress is to be made distinctive by extensive marketing and use.
INTELLECTUAL PROPERTY APPELLATE BOARDß The Intellectual Property Appellate Board was established on 15th September 2003, under the Trade Marks Act 1999 and became functional in December 2003.ß The primary purpose of establishment of the IPAB is to provide an appellate forum to expeditiously adjudicate upon appeals from the orders or decisions passed by the Registrar of Trade marks & Geographical Indications as well as the Controller of Patents.ß The IPAB has also been conferred the original jurisdiction in regard to rectification applications in its original jurisdiction. As of now the IPAB has been hearing appeals from the orders passed by the Registrar of Trade Marks only.
Citationsß The test laid down by the Supreme court is a person of average intelligence with imperfect memory – Amritdhara case AIR 1963 SC 449. This test is followed by the Supreme Court and by various High Courts all over India.ß The test laid down by the SC is overall impression / Comparison of the two marks. A side by side, word, by word comparison is not permitted. In the Parle case AIR 1972 SC 1359 the marks involved were Gluco biscuits wrapper and the defendant using similar wrapper although there were minor differences like the Basket being held differently, the background, etc. Still the court granted injunction in view of the over all similarity of the marks.
ß The Court does not consider / ignores commonly used prefixes or suffixes. The SC held in Ruston & Hornby case – AIR 1970 SC 1649 that the trademarks RUSTON and RUSTOM INDIA are similar. The Court held that the suffix India has no significance.The marks RUSTON and RUSTOM are phonetically and visually similar.ß In Hoffman La Roche case AIR 1970 SC 2062, the Supreme Court held that the suffix VIT means vitamin and held that the suffix is common to Pharmaceutical trade. The plaintiff could prove that there were more than 58 registrations of trademarks in class 5 having the suffix VIT. The court held that the trademarks PROTOVIT and DROPOVIT are not similar.
passing offß In a passing off suit filed by a company having international reputation, the mark being a well-known trademark, injunction has been granted even wherein the goods are different.ß Daimler Benz Vs. Hibo Hindustan AIR 1994 DEL 239 – Injunction was granted in a suit filed by Daimler Benz, manufacturers of famous Benz cars filed a suit against Hindustan Hibo, manufacturers of well known VIP underwear against use of trade mark BENZ and device of a man with folded arms and spread legs which looks like a three pointed star used by Benz. Interim injunction was granted restraining Hindustan Hibo from using the trademark BENZ and device looking like a three-pointed star in respect of undergarments.
Passing offß Where the marks are different, but the colour scheme, get up and layout are identical, injunction has been granted in a suit for passing off.ß Castrol Vs. Pentagon Lubricants – C.S. No. 327 of 1999 – Order of Mr. Justice A. Ramamurthi dated 22.12.1999. The Learned Judge observed that in view of the colour scheme, packing being identical, an ordinary person would assume that the defendants’ goods also emanate from Castrol.
ß Composition of IPAB: Every bench comprises of a Judicial member & a Technical member.ß Appeals to IPAB: An order may be appealed before the IPAB within a period of three months from the date of such order. The law also allows condonation of delay.ß Rules & Procedures: The Code of Civil Procedure is not applicable to the proceedings before IPAB. The IPAB has been vested with the powers to make its own rules for conduct of proceedings.ß The orders, passed by the IPAB, are subject to appeal before the High Court.