Intracies and importance of trade marks

1. TRADEMARKS
Rajesh Karunakaran Company Secretary Pune

2. INTRODUCTION:
Intellectual property is an intangible property that is the result of creativity
such as patents, copyrights, etc. it is a product of human creations.
TYPES:
There are four types of intellectual property. They are as follows:
INTELLECTUAL PROPERTY
Trade secrets Trade Marks Copyrights Patents

3. TRADEMARKS
Rajesh Karunakaran Company Secretary Pune

4. Rajesh Karunakaran Company
Secretary Pune
TRADEMARKS:
A trademark is a word, phrase, symbol or design or a combination of these that
identifies and distinguishes the source of goods of one party from those of others .
The registration of a trademark confers upon the owner the exclusive right to the
use the trademark in relation to the goods or services in respect of which the mark
is registered and to indicate so by using the symbol ®, and seek the relief of
infringement in appropriate courts in the country. A sign which in the process of
getting a trademark is denoted as ™. A trademark registered in one country be not
be legally recognized in another country unless it has been registered in that
country as well. The validity of a trademark is ten years from the date of
application.

5. BENEFITS OF A TRADEMARK:
1) Confers upon the owner the exclusive right to the use the trademark in
relation to the goods or services in respect of which the mark is registered.
2) Protects the goodwill of a registered proprietor’s products or services, and
can stop other traders from unlawfully using the trademark.
3) Sue for damages and secure destruction of infringing goods and or labels.

6. Rajesh Karunakaran Company
Secretary Pune
 FUNCTIONS OF A TRADEMARK:
 It identifies the goods / or services and its origin.
 It guarantees its unchanged quality
 It advertises the goods/services
 It creates an image for the goods/ services.

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Secretary Pune
EXAMPLES OF TRADEMARK:

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Secretary Pune
TYPES OF TRADEMARKS:
There are two types of trademarks:
1)Wordmark
2) Device

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Secretary Pune
WORDMARK:
Word marks may be words letters or numerals. A word mark gives the
proprietor a right only in the word , letter or numerical. No right is sought
with respect to the representation of the mark.

10. Rajesh Karunakaran Company
Secretary Pune
DEVICE:
Where the trademark lies in the unique representation of a word, letter or
numerical, it is called as a device mark.

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Secretary Pune
 PROCEDURE FOR REGISTRATION OF A
TRADEMARK:
1) FILING OF AN APPLICATION:
One needs to file an application either online or at trademark registration office.
2) ALLOCATION OF APPLICATION NO:
Once an application is filed, an application number is allotted within one or two
working days. Once an application number is allotted, then one can use the
™ sign for their product.
3) SCANNING AND VIENNA CODIFICATION :
According to the product for which the registration is applied, the product is
granted Vienna code.

12. Rajesh Karunakaran Company
Secretary Pune
3) EXAMINATION REPORT:
The application is examined by an trademark officer. At this step it is determined
whether the trademark needs to be allotted or not. The trademark officer can
either accept the application or object the application.
EXAMINATION REPORT
ACCEPTED OBJECTED.
a) Accepted:
Once the application has been accepted by the trademark officer, the trademark is
published in the journal. A period of four months is granted for opposition
by any third party. If no objection is raised, then the trademark is granted to
the party. .

13. Rajesh Karunakaran Company
Secretary Pune
However, in case a third party wishes to object, then he can file an opposition.
The concerned party needs to submit a counter . If needed, then the concerned
party can also submit evidences. Then there will be hearing for the same.
After which the trademark may or may not be granted. If the application is
rejected then the concerned party can either file a review petition or appeal to
the IPAB (Intellectual Property Appellate Board).
b) Objected:
If the trademark is objected by the trademark officer, then the parties need to file
a show cause hearing where the parties would address their objections and
after the hearing the officer may or may not accept the application. Even after
the show cause notice, the officer refuses to grant the traademark , then the
parties can appeal against the officer’s decision before the IPAB.

14.  RELEVANT LAWS AND TREATIES
RELATED TO TRADEMARKS:
1) The Paris Convention:
It was adopted in 1883 at Paris. Ensures that the citizens of any signatory
country provided with certain protection of their rights in all other
signatory countries. The rights include protection of well-known marks
and protection of trade names deriving from unfair competition.
2) Trademark act 1999.
Governs trademark related laws in India.
1) Rajesh Karunakaran Company Secretary Pune

15. 3) Madrid Protocol for the International Registration of Marks:
 Madrid protocol is based on trademark and administered by the World Intellectual Property
Organization (WIPO). According to this protocol, an owner of a trademark can protect the
trademark in 118 countries along with the European Union by filing a single application, in a
single language (English, French or Spanish), with a common set of fees, in only one
currency (Swiss Francs). If an applicant wishes to use the Madrid system, then he must apply
for the trademark first in the national or regional trademark office before thinking of
obtaining an international protection. International registration made by utilizing the Madrid
system produces the same benefits as in each contracting parties designated by the applicant.
Rajesh Karunakaran Company Secretary Pune
 Rajesh Karunakaran Company Secretary Pune
 Rajesh Karunakaran Company Secretary Pune

16.  CASE LAWS:
1) M/s. Nandini Deluxe v/s M/s. Karnataka Cooperative Milk producers federation
ltd. :
 Karnataka Co-Operative Milk Producers Federation Ltd., which has been
producing and selling milk and milk products, since 1985, obtained
registration for their mark ‘NANDINI’. M/S. Nandhini Deluxe, who is in the
business of running restaurants since 1989 under the name ‘NANDHINI’,
applied for registration of their Mark “NANDHINI”.
 In short, Deputy Registrar of Trade Marks accepted their application for
registration, the Intellectual Property Appellate Board set aside Deputy
Registrar’s Rajesh Karunakaran Company Secretary Pune
 order, and the High Court agreed with IPAB reasons.

17.  The bench of Justice AK Sikri and Justice Ashok Bhushan compared the marks and
observed that they are not are deceptively similar. It said: “Though there is a
phonetic similarity insofar as the words NANDHINI/NANDINI are concerned, the
trade mark with logo adopted by the two parties are altogether different. The
manner in which the appellant has written NANDHINI as its mark is totally
different from the style adopted by the respondent for its mark ‘NANDINI’.
 The Supreme Court in M/S. Nandhini Deluxe vs. Karnataka Co-Operative Milk
Producers Federation Ltd., has held that the proprietor of a trade mark cannot enjoy
monopoly over the entire class of goods particularly when he is not using the said
trade mark in respect of certain goods falling under the same class.

18. 2) Joy creators pvt. Ltd. v/s Nature’s essence pvt. Ltd.
The Plaintiff is a manufacturer and trader of a large range of cosmetic
and personal care products. The Plaintiff began marketing a range
of products under the name/expression `Honey & Almonds’ and a
distinctive logo ‘Poshan wala lotion’ was also adopted. Various
trade mark applications were filed for the various derivative marks
consisting of the expression `Honey and Almonds'.
In September 2013, the Plaintiff came to know of the Defendant's
manufacturing and marketing activities of lotions and creams under
the mark/name 'Nature's Essence Almond & Honey Body Lotion'.
Rajesh Karunakaran Company Secretary Pune

19.  The plaintiff filed a permanent injunction, for passing off, infringement of
trademark, etc. against the said product using the words Almond & Honey. The
primary grievance of the Plaintiff is in respect of the shape of the bottle, colour
scheme, get up, the use of the expression 'Sampoorna Poshan Wala Lotion' of the
Plaintiff and the description 'Almond and Honey'.
 The Defendant was injuncted from using the shape of the impugned bottle and also
injuncted from using the expression 'Sampoorna Poshan Wala Lotion'. Insofar as
the expression 'Almond and Honey' is concerned, the Defendant was permitted to
use it as a description of their product. The expression 'Almond and Honey' would
however be in lesser prominence than 'Nature's' and in any case cannot be larger
than 75% of the font of the word 'Nature's' forming part of `Nature's Essence' and
75% of the space occupiedRajesh Karunakaran Company Secretary Pune
 by `Nature's Essence'.