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04 trademarks
04 trademarks
04 trademarks
04 trademarks
04 trademarks
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04 trademarks

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  • 1. © Brain League IP Services Private Limited - 2011 1 TRADEMARKS rademarks are one’s identity in the market and represent the quality, efficiency and good will associated with the trade. Protecting trademark is the first step in establishing that identity in the market and in building an IP portfolio. The Trademark Act, 1999 provides for the registration of trademarks in relation to goods and services in India. These rights are effective throughout the territory of India.1 A trademark2 may be a device, brand, heading, label, name, signature, word, letter, numeral, shape of goods, packaging, combination of colours or a combination of the above mentioned. A trademark distinguishes one source of goods or products from other sources. A service mark is similar to a trademark and is used to distinguish the source of a service from other services. Requirements There are certain requirements that a mark should fulfil in order to be registrable. These requirements include: Distinctiveness A mark should be distinctive. It should be capable of distinguishing the goods of one person from that of another person. No indication as to the characteristics of the goods or services. A mark should not indicate kind, quality, quantity, intended purpose, values, geographical origin, and time of production of the goods or service or any other characteristic of the goods or services. E.g. Cold Ice-creams cannot be registered because it indicates ice-cream as being cold. 1 The Trade Marks Act, 1999, Section 1: Short title, extent and commencement. 2 The Trade Marks Act, 1999, Section 2(1)(m) T
  • 2. © Brain League IP Services Private Limited - 2011 2 A mark should not be customary in the current language or in the bona fide and established practices of the trade. E.g. Fridge is customary word for cold storage devices and hence is not registerable. A mark should not deceive or cause confusion to the public E.g. Parel G is likely to be confused for Parle G and is therefore not registrable. A mark should not hurt the religious susceptibilities of any class or section of the citizens of India E.g. Laxmi beedis would hurt the religious sentiments of Hindus and hence is not registrable. A mark should not be scandalous or obscene E.g. Instant Death Pills as trademark for medical pills is not registrable as it is scandalous. A mark should not be prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 E.g. Mahatma Gandhi being the name of the Father of the Nation would not be registrable as a trademark. A mark should not consist of shape due to nature of the good or to obtain technical result or to give essential value to the goods. E.g. The shape of an electric shaver which is the outcome of the technology involved will not be registrable as trademark. A mark should not be identical or similar to a registered trademark so as likely to cause confusion in the minds of the consumers. E.g. Coco cola Bicycles is likely to cause confusion in the minds of the consumers because they would associate this mark with the soft drink company Coca cola. Protection Ladder Registration may be seen as a ladder with stronger protection for marks falling at the upper level. These levels are:
  • 3. © Brain League IP Services Private Limited - 2011 3 Fanciful Fanciful marks are coined marks and are easily registrable. These words usually have no dictionary meaning. They are totally invented by the trademark proprietor and are fanciful. E.g. Kodak Arbitrary These are marks which are used for goods or services unrelated to the mark. These usually have a dictionary meaning but not in connection to the goods or services for which they are used as trademark. E.g. Apple Computers; the word apple has no connection with computers or software. Suggestive Suggestive marks indicate the nature, quality, or a characteristic of the products or services in relation to which it is used. It does not describe the characteristic and requires the consumer to use his imagination to identify it. E.g. Infosys suggests that the business relates to information systems. Descriptive These marks relate to the goods or services in relation to which they are used. They describe the goods or services for which they are used. E.g. Café Coffee Day describes that the business relates to coffee products and coffee houses. Generic These are marks which have become customary to the goods or services in relation to which they are used. These marks over the years become synonyms to the service or good in relation to which they are used. E.g. Xerox, though initially a trademark has now become synonym for photocopying.
  • 4. © Brain League IP Services Private Limited - 2011 4 Rights3 Registration of a trademark is not compulsory. However, registration offers better protection against infringement. Registration gives the trade mark proprietor the exclusive right to the trademark. This right is in relation to the goods or services for which the trademark is registered. Term4 The term of a trademark is ten years from the date of its registration. It can be renewed time to time for a period of ten years. Protection Process Trademark Search A search is conducted before applying for a trademark in order to ensure that the intended mark is not similar to an existing mark or falls under the group of prohibited marks. Filing An application is made in the prescribed manner with the requisite fee. Application may be made at any one of the Trademark Registry located at Delhi, Mumbai, Kolkata, Chennai and Ahmadabad depending on the place of residence or the principle place of business of the applicant. Examination Once an application is filed it is examined to ascertain that the intended mark is distinctive, not similar to any existing or applied mark and that it fulfils all the requirements. The examiner then issues an examination report. Advertisement It the mark is acceptable then it is advertised in the Trademarks Journal. It is open for any one to oppose the registration of the mark. 3 The Trade Marks Act, 1999, Section 28: Rights conferred by registration. 4 The Trade Mark Act, 1999, Section 25: Duration, renewal, removal and restoration of Registration.
  • 5. © Brain League IP Services Private Limited - 2011 5 Registration Once the applicant complies with the objections of the Trademark Registration and in case if there is no opposition or the opposition is in favour of the applicant the mark will be registered. A certificate for the same will be issued. Infringement/Passing off and Defences Infringement is a statutory action while passing off is a common law action. An action for infringement is available to a registered mark and an action for passing off is available to unregistered mark. To succeed in an infringement action it has to be proved that the infringing mark is identical or deceptively similar to the registered mark. In the case of an action for passing off it has to be proved the mark is likely to cause confusion in the minds of the consumers and that the use of the deceptively similar mark is likely to cause damage or injury to the goodwill of the proprietor of the trademark. Some of the defences that may be used include: The registered mark is not registrable The accused mark was used prior to the registered mark Concurrent use of the accused mark with the registered mark The accused mark is a well known mark Suggested Further Reading Basics of Trademark law History and evolution of Trademark system Trademark registration in India International Trademark Protection and Management Choosing right Trademark Should distinctiveness have anything to do with dilution?

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