Presentation dt 23.11.2017

INTELLECTUAL PROPERTY
SAVITHA KESAV JAGADEESAN
SENIOR PARTNER
KOCHHAR & CO.
© 2017 All Rights Reserved

What is a Trademark ?
 A trademark is a word, sign, symbol which
distinguishes the goods and services of one party
from another.

Examples of a Trademark

WHY TO REGISTER
 Helps to be identified
 Acts as a guarantee for the quality
 Mode of advertisement
 Easy recognition by the consumers

What cannot be registered?
 cause confusion
 Hurt religious beliefs
 Scandalous or obscene
 Prohibited under Emblems and Names Act,1950
 Exclusively of marks that serve in the trade

TYPES OF TRADEMARK

Types of trademarks
 Words, combination of words

Logo/signs/Symbols/Designs

COMPOSITE MARK

 PHRASES
Yeh Dil Maange More!
 SERVICE MARKS
 SHAPE MARKS

 Collective marks
 Well known marks

 SOUND MARKS
Britania
Yahoos’ yodel sound
Intels’ music
Airtel Jingle
 SMELL MARKS
Cookie man/ KFC’s whiff

Characteristics of a Good
Trademark
1. It must be a coined, invented word. For e.g. :- KODAK,
XEROX.
2. Must not be a descriptive, laudatory or a dictionary word.
Eg: -SMART TOWER, BEST BUY
3. Non-deceptive/Non-misleading.

PROCESSTRADEMARK REGISTRATION

Trademark indication symbols

Trademark registration through
Madrid System – How does it work ?
A trademark application vide FORM MM-2 shall be filed at the
office of origin of the Contracting Party
The office of origin verifies the international application.
The International Bureau of the WIPO scrutinizes International
applications

If any irregularity is found, the International Bureau notifies the applicant.
The applicant has to remove discrepancies within three months failing which
the application is abandoned
If no irregularities are found the Bureau WIPO registers the trademarks
and transmits it to the designated party.

Contd..
Designated party makes substantiative examination.
In case provisional refusal is made, applicants will have to engaged local
attorneys to overcome the objections.
Incase of no objections, the mark directly gets published and registered.
All post filing procedures such as oppositions, rectifications take place
directly in the designated party country.

Fees
The following fees shall be payable and shall cover 10 yrs
:
Basic fee
 Handling Fee : 2000 INR
 Where no reproduction of the marks is in colour = 653
CHF = 43028 INR approx
 where any reproduction of the mark is in colour = 903
CHF = 59501 INR approx
Supplementary fee for each class of goods and services
 beyond three classes = 100 CHF = 6589 INR approx

Fees- Contd…
 Complimentary fee –100 CHF = 6589 INR
approx
 Individual fee for each country.
 Fee for subsequent designation – 300 CHF-
19767 INR

SALIENT FEATURES
 Central Attack :
 For a period of five years from the date of an
international registration, if the initial basic national
registration ceases to have effect, the international
registration will no longer be protected.
 the registration resulting from that application ceases to
have effect within that period.
 However international application can be converted
into national/regional application.

If there is no objection received by the applicant from the
member countries within 18 months, it automatically gets
registered in that nation.
Provisional Refusal :

Madrid Protocol : What it does to
India ?
 Now foreign nationals can file a trademark
application in India by designating India as a
country of interest.
 Thereby the Indian Intellectual Property Office is
required to complete the registration process within
a span of 18 months

Advantages
Simplification
 Single application for trademark protect in numerous
Madrid member Countries.
 Applicant can initially file in 2-3 countries and
subsequently designate countries as and when they
become members to the agreement.
 Single fee for trademark application in one language
(English/French/Spanish)
•.© 2017 All Rights Reserved

 There is no waiting time for the grant of mark in each country. If
there is no objection raised within 18 months, the grant is given
 Costs:
• Local attorneys fees will totally be eliminated in case of NIL
objections.
• Increasingly cost effective as more and more countries are
designated.
• Legalization expenses and other documentation expectations can be
avoided.

Contd…
 Simplified subsequent management :
 one renewal, one change of address, assignments,
etc for the designated countries
 International registration becomes independent of
basic registration after 5 years.
 If the international applications lapses, the applicant
can transfer his right into a national application,

Disadvantages :
 Over dependency on home applications :
 The international application is largely dependant on
base application. For eg: same mark, same class.
 Incase the home application is refused the
international registration also ceases to have effect.

Contd…
 Rights of transfer :
The ability to transfer or sell an international
registration is restricted to a certain extent.
 Loss of income for attorneys in case of no provisional
refusals.
 Not all countries are members, at this moment only 94
countries are parties.
 Expensive in case of less number of designated parties.

ALIGNMENT OF IP WITH BUSINESS
STRATEGY
Understanding
the overview of
scope of IP in the
different fields
Determining the
business strategy
Identifying the
required IP for the
business
Plan & research
on the IP
Capturing the
IP

Company
name
Trademark
Domain Copyright
(Artistic
Work)
IDENTIFYING YOUR
INTELLECTUAL PROPERTY

Product/Process/Technology
Design Trade Secret
Business Method/ Advertisement
Strategies/ Distribution Strategies
Copyright
Patent

If not look for monetizing through
licensing, assignment, franchising, etc.
Worth Protecting ?
Post identification of IP

Identification of existing ip through ip
audits
 An IP audit seeks to uncover unused or under‐utilized assets to enable
business managers to devise informed business and IP strategies.
 An IP audit helps a business to make an inventory of its IP assets or
update it and analyse:
 How the IP assets are used or unused.
 Whether the IP assets used by the business are owned by the
company or by others.
 And finally determine, what actions are required to be taken with
respect to each IP asset, or a portfolio of such assets, to serve the
relevant business goals of the company.

MONETIZATION OF IP
 Interlinking and inclusion of IP as part of company/ business
strategy.
 Assignment of your trademark for a good consideration.
 License your trademark absolutely or subject to certain
conditions.
 Authorize an other party to use your Trade name /Trademark
by way of a Franchise agreement.
 Using the Company’s IP Portfolio as a leverage when seeking
financial resources.

BEST PRACTICES
 Conduct an IP Audit to identify potential IP .
 Prosecution of trademarks in India and abroad.
 Monitoringa the market diligently to ensure that the
Company’s IP is not infringed.
 Ensuring trade secrets are kept confidential.
 Execution of non-disclosure, confidentiality
 Agreements with employees.
 Timely renewal of existing IP registrations.

THANK YOU!!
Suite 305, Delta Wing, 3rd Floor
Raheja Towers,177, Anna Salai,
Chennai-600002, INDIA
Tel: +91 44 40405250,Fax: +91 44 40405260
E-mail: trademarks@chennai.kochhar.com

Presentation dt 23.11.2017

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