its about trademark and related case study in india

1. PRESENTED BY:
RAHUL
M.SC. (BT) 197801

2. SUBMITTED TO:
DR. HEMANT SOOD
JUIT,
WAKNAGHAT, SOLAN,
HIMACHAL PRADESH

3. TRADEMARK
• Trademark is an intellectual property , it is a typically name , word , phrase , logo ,
design , symbol, image, sound and what not.
• They appear on the product or its packaging. Anything that specifically helps in
identification of a company can be a trademark. It can be for goods or services.
• They are important for business as they allow the companies to establish the
reputation of the products which they produce.

4. A TRADEMARK MAY BE DESIGNATED BY THE FOLLOWING SYMBOLS:
• For an Unregistered Trademark, that is, a mark used to promote or brand
goods
• For an unregistered Service mark, that is, a mark used to promote or
brand services.
• For a registered trademark

5. SYMBOL SHOWS
QUALITY/BRAND
MC DONALD’S
KFC
WOODLAND
REEBOK

6. TRADEMARK LAW TREATY
(TLT) (1994)
• The aim of the Trademark Law Treaty (TLT) is to standardize and streamline
national and regional trademark registration procedures.
• The great majority of the provisions of the TLT concern the procedure before a
trademark office which can be divided into three main phases:
1. Application for registration ,
2. Changes after registration , and
3. Renewal.

7. APPLICATION FOR
REGISTRATION UNDER TLT
• The Contracting Parties to the TLT may require, as a maximum, the following
indications: a request, the name and address and other indications concerning the
applicant and the representative; various indications concerning the mark, including a
certain number of representations of the mark; the goods and services for which
registration is sought classified in the relevant class of the Nice Classification and,
where applicable, a declaration of intention to use the mark.
• NICE CLASSIFICATION : established under the Nice Agreement Concerning the
International Classification of Goods and Services for the Purposes of the Registration
of Marks (1957)
• 45 different classes for Goods and Services.

8. PRODUCTS
(UNDER NICE CLASSIFICATION)
• Class 1 (Chemicals)
• Class 2 (Paints)
• Class 3 (Cosmetics and Cleaning
Preparations)
• Class 4 (Lubricants and Fuels)
• Class 5 (Pharmaceuticals)
• Class 6 (Metal Goods)
• Class 7 (Machinery)
• Class 8 (Hand Tools)
• Class 9 (Electrical and Scientific Apparatus)
• Class 10 (Medical Apparatus)
• Class 11 (Environmental Control Apparatus)
• Class 12 (Vehicles)
• Class 13 (Firearms)
• Class 14 (Jewelry)
• Class 15 (Musical Instruments)
• Class 16 (Paper Goods and Printed Matter)
• Class 17 (Rubber Goods)
• Class 18 (Leather Goods)
• Class 19 (Non-metallic Building Materials)
• Class 20 (Furniture and Articles Not
Otherwise Classified)
• Class 21 (Housewares and Glass)
• Class 22 (Cordage and Fibers)
• Class 23 (Yarns and Threads)
• Class 24 (Fabrics)
• Class 25 (Clothing)
• Class 26 (Fancy Goods)
• Class 27 (Floor Coverings)
• Class 28 (Toys and Sporting Goods)
• Class 29 (Meats and Processed Foods)
• Class 30 (Staple Foods)
• Class 31 (Natural Agricultural Products)
• Class 32 (Light Beverages)
• Class 33 (Wines and Spirits)
• Class 34 (Smokers' Articles)

9. SERVICES
(UNDER NICE CLASSIFICATION)
• Class 35 (Advertising and Business)
• Class 36 (Insurance and Financial)
• Class 37 (Building, Construction and
Repair)
• Class 38 (Telecommunication)
• Class 39 (Transportation and Storage)
• Class 40 (Treatment of Materials)
• Class 41 (Education and Entertainment)
• Class 42 (Computer, Scientific and
Legal)
• Class 43 (Hotels and Restaurants)
• Class 44 (Medical, Beauty, and
Agricultural)
• Class 45 (Personal and Social Services)

10. CHANGES AFTER REGISTRATION
• The trademark procedure covered by the TLT concerns changes in names or addresses
and changes in the ownership of the registration.
RENEWAL
• Renewal, the TLT standardizes the duration of the initial period of registration and the
duration of each renewal to 10 years each.

11. LICENSING OF TRADE MARKS IN INDIA
• The term “Licensing of trademark” has not been defined or rendered specific
mention in the Trademark Act, 1999. However, the law pertaining to the Licensing
of Trademarks is enshrined under Section 48 of Trademark Act, 1999 which
provides for “Registered Users”.
Section 48 of Trademark Act
• It stipulates that a person other than the registered proprietor of trademark may
be registered as a registered user.

12. SECTION 47 OF TRADEMARK ACT, 1999
• It provides for removal of trademark from register on grounds of non-use of the
mark. It provides that a registered trademark may be taken off the register in
respect of goods or services in respect of which it is registered on application
made in the prescribed manner. According to the statutory provision, any
person who is aggrieved that a registered trademark has not been used for a
continuous period of 5 years and 3 months from the date of which the mark
was actually entered in the register of trademarks then he can make an
application for removal of the trademark from the Register.

13. SECTION 49 OF THE TRADEMARK ACT
• It enumerates the process for registration as a registered user. The essentials for
licensing of trademark or registration as registered user are:
The registered proprietor and the registered user shall jointly apply in writing i.e.
Trademark License Agreement, to the Registrar of Trademark in the following
manner:-
The agreement shall be in writing with respect to permitted use of the
trademark.

14. https://youtu.be/J-PYuZOPrzI

15. CASE STUDY OF
TRADEMARK
INFRINGEMENT

16. • It is established in August 2010 by founder Mr. Vijay Shekhar
Sharma , Noida.
• It started off as a mobile recharge, DTH recharge, bill payment,
etc.
• Money transaction starts since 2013.
• By January 2014, the company launched the Paytm Wallet, and
the Indian Railways and Uber added it as a payment option.It
launched into e-commerce with online deals and bus ticketing. In
2015, it unveiled more use-cases like education fees, metro
recharges, electricity, gas, and water bill payments. It also started
powering the payment gateway for Indian Railways.

17. • PayPal was established in December 1998
as Confinity,in San Jose, California, United States
, a company that developed security software for
handheld devices. PayPal was founded by six
persons: Max Levchin, Peter Thiel, Luke
Nosek, Ken Howery, Yu Pan and Russel Simmons.
• PayPal was developed and launched as a money
transfer service at Confinity in 1999, funded by
John Malloy from BlueRun Ventures.

18. CONT.
• On November 18, 2016, Paypal Inc. filed an objection at the Indian
Trademark Office accusing Paytm, an Indian mobile wallet company, of
trademark infringement.
• Rapid growth in that short a time earns Paytm not only great profits and
valuation, but also the attention of global competitors like PayPal. In its
complaint, PayPal accused Paytm of having “slavishly adopted the two-
tone blue color scheme” of PayPal’s own logo in entirety, and especially
where “The first syllable in each mark is in dark blue color and the second
syllable in a light blue color”.
• PayPal also noted that “both marks begin with the term ‘PAY’ which
consumers tend to remember more than the second syllable, with the marks
being of similar length.”

19. CONT.
• Paytm applied for a trademark registration on July 18, 2016 – which means
its four month window expired on November 18, 2016.
• PayPal’s last-day complaint has thus raised many an eyebrow on why a
company like PayPal – with ample legal resources at hand – would wait
right until the end of the window to file the complaint. Needless to say, it
was only after the demonetization that PayPal felt threatened (read jealous)
by the rise of Paytm in a market that until now has been ignored,
underserved and/or underperformed by PayPal.
• PayPal had not registered its own trademark in India until after the
demonetization – a fact that Paytm’s lawyer will undoubtedly cite at trial.

20. IS PAYTM AND PAYPAL BRANDING SIMILAR?
• The names PayPal and Paytm are similar to the extent both start with the world
“Pay” – however given that both companies operate in the electronic transactions
space, PayPal would have a tough time winning the argument based on just the
word “Pay” in the name.
• precedent strongly in favour of Paytm here. In Micro nix India vs Mr. J.R.
Kapoor, for example, the Supreme Court observed that micro-chip technology
being the basis of many of the electronic products, the word “micro” has much
relevance in describing the products and therefore no one can claim monopoly
over the use of the said word.
• Applying the same logic in this case, the word “Pay” has little distinctive
relevance in the market to which PayPal and Paytm cater.

21. CAN COLORS OR COLOR
COMBINATIONS BE TRADEMARKED
IN INDIA?
• The color tones while not identical – are undoubtedly similar – the first syllable is
a darker shade of blue while the second syllable is light blue.
• The Paytm logo uses color codes #042e6f (dark blue) and #00baf2 (light blue)
while PayPal uses #002d8b (dark blue) and #009be1 (light blue) – so one could
argue that the colors are not exactly identical.
• The Indian Trademark Law does protect colors to the extent the colors or
combination of colors confer a distinctive characteristic to a product or service.
Schedule 10 of the Trade Marks Act, 1999, pertains specifically to use of colors.

22. WOULD AN ORDINARY CONSUMER INTENDING TO
USE PAYPAL BE CONFUSED INTO USING PAYTM
INSTEAD?
• PayPal’s foray into India has been limited largely to eBay shoppers, freelancers
and IT software developers that are exposed to global economy much more than
the ordinary consumer – which means that if PayPal and/or Paytm were to
conduct a survey, it would likely result strongly in favor of Paytm.
• PayPal chosen to file a trademark infringement lawsuit before the demonetization
move was announced (or perhaps anytime in 2011-2014) when Paytm had not yet
established its household name status, it would have been a much easier battle
(albeit also bearing much less rewards).
• PayPal would however be much better placed to win this dispute in virtually any
other country (if and when Paytm expands its operations in those countries) –
where PayPal still is recognized as a global payments leader.

23. CONCLUSION OF LAST VERDICT IN THIS CASE
• Paytm did not copying trademark of paypal.
• Court last verdict was that paytm did not infringement of paypal
logo.
• The was closed for that verdict.

24. CASE NAME: MUNISH KUMAR SINGLA TRADING AS
CHAKSHU FOOD PRODUCTS V. JOLLIBEE FOODS
CORPORATION
• Delhi HC: MNC’s can’t claim right on Trademark if they don’t use it in India under
Section 47 of Trademark Act, 1999 provides for removal of trademark from register on
grounds of non-use of the mark.
• In this recent case, the Supreme Court was confronted with non-use of the impugned
trademark and made a scathing attack on grant of injunction by the Trial Court in the
case on the very first day of decreeing the suit itself.
• In this context, Delhi High Court made reference to Supreme Court’s verdict in the case
of Milmet Oftho Industries and Others vs. Allergan Inc. , wherein it was held
that multinational companies have no right to claim exclusivity of the trademark if
they do not enter or intend in a reasonable time to enter into business in India and
which observations squarely apply in the facts of this case where in spite of
registration since the year 2005 till today in the year 2017 the respondent has not
commenced his business in India.

25. https://www.youtube.com/watch?v=2aHcfcadJW4&t=1s

26. REFERENCES
• Internet Photos,
https://www.google.com/search?biw=1522&bih=714&tbm=isch&sa=1&ei=NbKMXdT2BNXB3LUPiPaE6Ac&q=kfc+logo&oq=kfc+l&gs_l=img.3.0
0i67l10.15546.15876..19083...0.0..0.957.1468.5-1j1......0....1..gws-wiz-img.bP7dNO-HSGQ#imgrc=Yp5rHPuPGojphM: ,
• https://www.google.com/search?biw=1522&bih=714&tbm=isch&sa=1&ei=UbKMXevEEe_hz7sPtbOlgAU&q=mc+d+logo&oq=mc+d+logo&gs_l
=img.3...28496.31856..32346...0.0..1.2044.4082.6-1j1j0j1......0....1..gws-wiz-
img.B6gNX5KlgsA&ved=0ahUKEwirsaPfwe7kAhXv8HMBHbVZCVAQ4dUDCAc&uact=5#imgrc=wDLRjKTIP_KLhM: .
• Case study , https://www.ipwatchdog.com/2017/01/02/paypal-accuses-paytm-trademark-infringement-india/id=75995/ ,
https://www.biswajitsarkar.com/blog/case-studies/145.html , https://vakilsearch.com/advice/trademark-infringement-india/
• Wikipedia , https://en.wikipedia.org/wiki/PayPal , https://en.wikipedia.org/wiki/Paytm etc
• Videos :https://youtu.be/J-PYuZOPrzI, https://www.youtube.com/watch?v=2aHcfcadJW4&t=1s , Lex Animata.
• Photos https://www.google.com/search?q=Vijay+Shekhar+Sharma&sa=X&stick=H4sIAAAAAAAAAOPgE-
LWz9U3MDQ2NMo2K1KCcowtc9PMtdSzk630k0qLM_NSi4vhjPj8gtSixJLM_DyrtPzSvJTUokWsImGZWYmVCsEZqdkZiUVAOrEoNxEAZ4py8FwAAA
biw=1522&bih=714&tbm=isch&source=iu&ictx=1&fir=ci3aGhyhcB_FiM%253A%252CHWgAGSVdzf300M%252C%252Fm%252F01339mf7&vet=1
&usg=AI4_-kSi1mn0hvT6lTvjJNZonJzEUG1AAA&ved=2ahUKEwjr2-Cvv-
7kAhWNd94KHVHRCMEQ_B0wIXoECAoQAw#imgrc=ci3aGhyhcB_FiM:&vet=1
• https://en.wikipedia.org/wiki/PayPal#/media/File:PayPal_San_Jose_Headquarters.jpg

27. THANKYOU