Trademark Introduction, filling, case study

1. T R A D E M A R K
© 2020 BHAGYASHRI KESARWANI

2. © 2020 BHAGYASHRI KESARWANI
Intellectual Property
Intellectual property (IP) refers to
creations of the mind, such as inventions;
literary and artistic works; designs; and
symbols, names and images used in
commerce.
The concept of IP relates to the fact that
certain products of human intellect should
be afforded the same protective rights that
apply to physical property.
IPR grants exclusive rights to an author
for utilising and benefiting from their
creation.
TYPES OF
SECRETS
GEOGRAPHICAL
INDICATIONS
PLANT
VARIETIES
INDUSTRIAL
DESIGNS
TRADEMARKS
PATENTS
COPYRIGHTS
2

3. A Trademark is a type of Intellectual property that has any distinctive sign or indicator, used by an individual,
business organisation or other legal entity to uniquely identify its products and/or services to consumers, and to
distinguish its products or services from those of other entities.
Trademark can take almost any form, as long as it is capable of identifying and distinguishing speci c goods or
services like, any distinctive word, combination of words, slogans, numerals, pictures, shapes, colours, etc.
© 2020 BHAGYASHRI KESARWANI

4. PURUS QUAM
Sound Mark
Four-note bell sound
of Britannia Industries,
Default ring-tone of a
Nokia mobile phone,
Sound of the lion's
roar at the beginning
of an MGM-produced
fi
lm Corporation
Motion Mark
Holograms
Smell Mark
Glaxo Group's
hologram trademark
that appear on their
packaging of goods
like toothpaste, dental
fl
oss, and mouth
wash, American
Express' hologram
trademark on its credit
card.
Bubble Gum Scent for
Sandals, Pina Colada
Scent to coat
Ukuleles, Strawberry
Toothbrushes, Minty
Pain-Relief Patches,
Rose Scented
Marketing Products.
Nokia phone’s
opening screen
display, Microsoft
Windows logo
appearing while
turning on, the
lightning e
ff
ects which
rotate around the
microphone of Apple’s
SIRI. © 2020 BHAGYASHRI KESARWANI
A trademark is typically a visible sign (e.g. words, colours, shapes) but it can also be non-conventional (non-traditional
trademark) too, i.e. non-visible signs (e.g. sounds, scents, tastes, textures, holograms).

5. Marks under which the Licensed
Product is Commercialised
Example: Chocos is a product mark
used for a particular breakfast cereal
that is sold under the Kellogg’s house
mark.
PRODUCT MARK
01 02 SERVICE MARKS 03 COLLECTIVE MARKS
TYPES OF TRADEMARKS THAT CAN BE REGISTERED
WELL-KNOWN MARKS
CERTIFICATION MARK
04
05
06
Distinguishes the services of
one company from those of
another provider.
To distinguish goods or services
produced or provided by members
of an association.
The name of a business i.e.
Brand Name.
Used to de
fi
ne the standard of the
product.
Example: Food products, Cosmetics,
Electrical goods, etc. have such
marking that speci
fi
es the safety and
the quality of the product.
Famous or well known mark, in view
of its widespread reputation or
recognition, may enjoy broader
protection than an ordinary mark.
© 2020 BHAGYASHRI KESARWANI
5
TRADE NAME
07 TRADE DRESS
It is a design or packaging of a
product that makes the source or
origin of the product immediately
recognisable. To register:
•Distinctive enough
•Non-functional

6. TRADEMARK CLASSIFICATION IN INDIA
Trademark in India is classi
fi
ed in 45 different
categories which includes chemical substances,
medical and surgical instruments, stationary,
household, furniture, textiles, games, beverages,
building material, sanitary material, and other scienti
fi
c
and educational products
.
These classes are further sub-divided
.
Objective: to group together similar nature of goods
and services
.
© 2020 BHAGYASHRI KESARWANI

7. I N D I A N T R A D E M A R K L A W
•Indian Trademark
law was enforced
in 1940.
•It was replaced
with the
Trademark and
Merchandise
Act,1958.
•Presently Indian
Trademark Law
provides protection
to trademarks under
Trademarks Act,
1999 & also under
the common law of
Passing Off.
© 2020 BHAGYASHRI KESARWANI
The person whose application of Trademark registration is pending can
also stop the use of similar or identical marks by the Law of Passing O
of Trademark.
1. File trademark application in each country you are seeking protection.
2. File trademark application through WIPO’s Madrid System.
It deals with the mechanism of registration, protection of trademark and
prevention of fraudulent trademark.
At the national/regional level, trademark protection can be obtained
through registration, by
fi
ling an application for registration with the
national/regional trademark o
ffi
ce and paying the required fees.
At International level: 2 options
Madrid Protocol is an international convenient and cost-effective solution for registering and managing trademarks
worldwide. Using this process, registrants are able to complete a single application, in their home language, along with one set
of fees, that can then be applied for protection in all 123 member countries
fi
nitely on payment of additional
fees

8. T R A D E M A R K R E G I S T R A T I O N P R O C E S S I N I N D I A
WHY REGISTER ?
Registration will confer an exclusive right to the use of the registered trademark.
This implies that the trademark can exclusively used by its owner, or licensed to another party for use in return for payment.
It provides legal certainty and reinforces the position of the right holder, for example, in case of litigation.
REGISTRATION STEPS ?
Trademark Search Trademark Renewal
Registration
Certi
fi
cation
TM Publication
TM Examination
Filing Trademark
Application
#1 #6
#5
#4
#3
#2
CERTIFICATE !!
Having a registered certi
fi
cate makes it much easier, quicker and cheaper to prevent others traders from using
con
fl
icting trademarks. Holding a registered trademark signi
fi
cantly increases the value of your brand to potential
purchasers.
© 2020 BHAGYASHRI KESARWANI

9. CASE STUDY: LOUIS VUITTON V/S LOUIS VUITON DAK
This case of Louis Vuitton v/s Louis Vuiton Dak is an example of Trademark
infringement. The Louis Vuiton Dak is a South Korean fried chicken restaurant
that lost the battle against the clothing designer Louis Vuitton. The court
ruled the case in designer’s favor, concluding that a restaurant’s
name – Louis Vuiton Dak is too similar to the brand name Louis
Vuitton. Also, the logo and packaging of the restaurant
were resembling very much to the designer’s iconic
imagery.
The restaurant then changed its name
to LOUISVUI TONDAK for which
it was again
fi
ned with
another $14.5 million
fi
ne for non-
compliance.
© 2020 BHAGYASHRI KESARWANI

10. © 2020 BHAGYASHRI KESARWANI
THANK YOU!