Brands & patents june 12, 2010


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Evening talk on "Brands & Patents"by Mr Pranit Nanavati ,Patent & Trade Mark Attorney Organised by Brand Klub Ahmedabad

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Brands & patents june 12, 2010

  1. 1. Applications Brands & Patents Brand Klub June 12, 2010 Pranit K. Nanavati Partner, Nanavati Associates 2 Pranit K. Nanavati +91-9879106229 Registration/Grant Functions of a Trade Mark • Commercial Source Identification • Indicates quality • Instrument for promotion • Allows licensing and franchising 3 4 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Trade Mark Requirements Types of Trade Marks High Distinctiveness/Value/Protection • It must be capable of being represented graphically • It must be capable of distinguishing the goods or services of one person from those of others Low Generic Descriptive Suggestive Arbitrary Coined/Invented 5 6 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 1
  2. 2. Marketing Ease Distinctiveness High High Distinctiveness Marketing Ease Low Low Low High Low High Descriptiveness of Brand Descriptiveness of Brand 7 8 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Trade Mark includes Word Marks Names • Word • Heading NIRMA FORD • Name • Ticket SONY AVERY KODAK CADBURY • Label • Signature HYUNDAI KIRLOSKAR • Device • Shape of goods TATA TATA • Letter • Packaging MAHINDRA RELIANCE • Numeral • Colour combination •Any combination of the above 9 10 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Examples of Labels Examples of Device Marks • Refers to any pictorial representation that does not fall under any other category of Trade Marks • Examples of Device Marks: 11 12 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 2
  3. 3. Letter Marks Numeral Marks Service Mark GM 426 • Can be registered under Trade Marks Act, 1999 IBM 555 • Used to distinguish services of one person from IFB those of others GACL • Applicable to banking, communication, GSFC education, financing, insurance, real estate, transport, storage, boarding, lodging, entertainment, construction, repair, conveying of news or information, advertising, etc. 13 14 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Examples of Service Marks Well-known Mark STANDARD CHARTERED DRS REAL ESTATES • Very popular mark • Enhanced protection irrespective of goods or services • Well-known for some goods or services, but use for other goods or services would indicate connection between the proprietor of the well- known mark and the other goods or services – Recognition in the relevant sections of public – Heavily promoted – May not be used or registered in India 15 16 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 TM or R ? Rights to a Trade Mark • Pending Application not necessary to write TM • Use of R next to your Trade Mark indicates that the • Common Law Rights acquired by Prior Use trade mark is registered in India • Statutory Rights for 10 years (renewable every • Use of R without registration is an offence under S. 10 years) only if Registered 107 of the Trade Marks Act, 1999. Punishment shall be imprisonment up to three years or fine or both. 17 18 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 3
  4. 4. Rights by Registration Registration not mandatory • No, but recommended • Exclusive right to use the trade mark for the goods or services on Certificate • Required for maintaining Infringement • Relief against infringement 19 20 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Use First, Register Later Search Steps • Search for a Distinctive Trade Mark • Internet • Use it • Market Search • Apply for Registration • Online Search of the Register • Official Search of the Register 21 22 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Official Search Stay away from • Official Fees for Form TM-54: Rs. 500 • Popular trade marks for any goods or • TM-54 Search Results can take up to one services month • Describing characteristics of goods or • Official Fees for Form TM-71: Rs. 2,500 services • TM-71 Search Results can take up to a • Trade Marks used for identical or similar week goods or services • Laudatory expressions 23 24 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 4
  5. 5. What to avoid What to avoid (Cont’d) • Avoid a Trade Mark that is identical to or • Avoid a mark/indication exclusively deceptively similar to any Trade Mark on the designating kind, quality, quantity, intended Preliminary Search Report purpose, values, geographical origin or the • Avoid a Trade Mark without any distinctive time of production of goods or rendering of the character services or other characteristics of goods or – YOU’VE GOT MAIL for e-mail service services – Gl@ss for glass – DAY BY DAY for milk products daily delivered – HEALTH for confectionery 25 26 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 What to avoid (Cont’d) What to avoid (Cont’d) • Avoid a mark/indication that has become customary in the current language or in the • Avoid a Trade Mark that can confuse or bona fide and established practices of trade deceive public – EZZYWEAR and EASY WARE for clothing – GEL for pharmaceuticals – Use of the word COW or a device in – NETWORK 90 for telephones respect of margarine – Striped Toothpaste picture on Toothpaste packaging 27 28 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Confusion Deception • May be caused without telling a lie at all, and • When you deceive a man, you tell him a without making any false representation lie • The truth, the whole truth and nothing but the • You make false representation to him truth may still cause confusion • You thereby cause him to believe a thing • The person getting confused may not have to be true which is false the knowledge or ability to distinguish it from the other pieces of truth known to him or • You may not do it knowingly or because he may not even take the trouble to intentionally, or but you still do it, and so do so you deceive him 29 30 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 5
  6. 6. Fools or Idiots not protected What to avoid (Cont’d) • The trade mark law does not provide for protection of unusually stupid people, • Avoid a Trade Mark that is likely to hurt "fools or idiots", who may be deceived religious feelings of anybody – Ganesh logo on shoes • The point of view of a man of average • Avoid a Trade Mark that comprises intelligence and of imperfect recollection is scandalous or obscene matter considered – Indecent depiction of women – Something that is likely to corrupt public morality 31 32 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 What to avoid (Cont’d) What to avoid (Cont’d) • Avoid a Trade Mark that is prohibited under • Avoid a Trade Mark that consists exclusively the Emblems and Names (Prevention of of the shape of goods which results from the Improper Use) Act, 1950 nature of the goods themselves – UNO – Shape of Banana for fruits – WHO – Shape of Egg tray for eggs – Logo of Indian Flag, Ashok or Dharma Chakra – Any Government Symbol such as Three Lions – Official seal of Government, President, PM, CM, etc. 33 34 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 What to avoid (Cont’d) What to avoid (Cont’d) • Avoid a Trade Mark that consists exclusively • Avoid a Trade Mark that consists exclusively of the shape of goods which is necessary to of the shape which gives substantial value to obtain a technical result the goods – Shape of a square pinned plug – Shape not being functional or natural to the goods, – Pictorial representation of building bricks for toys but with good eye appeal or games – Three headed rotary shaver 35 36 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 6
  7. 7. Drug Brands Risk in a Descriptive Trade Mark • Common practice to name the drug by the • A generic, descriptive, laudatory or name of the organ or ailment which it common word will not be accorded treats or the main ingredient of the drug exclusivity • Passing off may still be maintainable in • Name of an organ, ailment or ingredient which the Court would look at the rival being publici juris or generic, cannot be marks to determine likelihood of confusion claimed by anyone exclusively for use as a or deception trade mark 37 38 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Acquired Distinctiveness Advice of Registrar • By developing a secondary meaning after widespread use • Advice on prima facie distinctiveness of a • A secondary meaning results when, "in the trade mark can be sought from the minds of the public, the primary Registrar significance of a [mark] is to identify the source of the product rather than the product itself." 39 40 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Portmanteau Words Publici Juris • Basic test to find out whether the mark has come • Smog (Smoke + Fog) to be so public because of its universal use that • Brunch (Breakfast + Lunch) it does not confuse or deceive, by the use of it • Common in Pharmaceutical Business • TEMOZOLOMIDE is a generic word and is publici juris and nobody can claim exclusivity in • TEMOGET (Temozolomide + Getwell) respect of the same. Consequently, the clipped expression 'TEMO' derived from clipping word TEMOZOLOMIDE would also be publici juris over which no person could claim exclusive proprietorship. 41 42 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 7
  8. 8. Bona fide Use Use of Generic Name • Bona fide use by a person of his own • Merely because a molecule may have name or that of his place of business or been patented and commercially the use by any person of any bona fide pioneered by someone, after the term of description of the character or quality of the patent, others cannot be prevented his goods or services cannot be interfered from calling, what the molecule is, by its with even by a registered proprietor generic name, and such other names which are 'publicly' known to describe and denote it 43 44 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Infringement Infringement: Dissimilar Goods • Mark used must be identical with or • Infringement action can be maintained for deceptively similar to the registered Trade dissimilar goods not covered by registration Mark where: – the trade mark is registered for some goods • The goods or services must be covered by – the registered trade mark has reputation in India registration – the defendant uses such or similar trade mark without • Mark must be used as a Trade Mark in permission – the use by the defendant is without due cause course of trade in areas covered by – the unauthorized use takes unfair advantage of or is registration detrimental to the distinctive character or repute of the • Section 29 trade mark 45 46 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Passing-off Deceptive similarity factors • Based on Common Law • The nature of the marks i.e. whether the marks • Modern Tort are word marks or label marks or composite – a misrepresentation marks i.e. both words and label works – made by a trader in the course of trade • The degree of resembleness between the – to prospective customers of his or ultimate consumers marks, phonetically similar and hence similar in of goods or services supplied by him – calculated to injure the business or goodwill of idea another trade • The nature of the goods in respect of which they – causes actual damage to a business or goodwill are used as trade marks • Limitation Act does not strictly apply • The similarity in the nature, character and • Uncommon field of activity not relevant performance of the goods of the rival traders 47 48 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 8
  9. 9. Deceptive similarity factors Comparison of Marks (Cont’d) • The class of purchasers who are likely to buy the • Take the two words, judge of them, both goods bearing the marks they require, on their by their look and by their sound education and intelligence and a degree of care • Consider the goods to which they are to they are likely to exercise in purchasing and / or using the goods be applied • The mode of purchasing the goods or placing • Consider the nature and kind of customer orders for the goods who would be likely to buy those goods • Any other surrounding circumstances which may be relevant in the extent of dissimilarity between • Consider all the surrounding the competing marks circumstances 49 50 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Civil Remedies Prior Use Most Important • Suit for infringement and/or passing-off • Principal issue determinative of the grant action of temporary injunction • In District court having jurisdiction • Proprietor of a trade mark registered later • Injunction cannot interfere with common law rights of • Plaintiff to choose between damages or an another acquired prior in time account of profits • Manikchand case 51 52 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Temporary Injunction Offences & Penalties • Prima Facie Case, Balance of Convenience, & • Metropolitan Magistrate or Judicial Magistrate First Class Irreparable Injury • Cognizable Offences: – Penalty for applying false trade marks, trade descriptions, etc. • In cases of infringement of Trade Mark normally – Penalty for selling goods or providing services to which false an injunction will follow trade mark or false trade description is applied – 6 months to 3 years of imprisonment and Rs. 50,000 to 2,00,000 • Mere delay in bringing action is not sufficient to • A police officer not below deputy superintendent of defeat grant of injunction in such cases police or equivalent may seize goods without warrant after fulfilling certain formalities • Grant of injunction becomes necessary if it prima • Penalty for falsely representing a trade mark as facie appears that the adoption of the Mark was registered itself dishonest – Up to 3 years of imprisonment and/or fine 53 54 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 9
  10. 10. What is a Patent? Types of Patents • An exclusive right for 20 years granted by the • Product Invention Government • Process Invention • The right is granted to the Inventor or his Assignee 55 56 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Invention Inventive Step • New product or process • A feature of an invention • Involving an inventive step • May involve technical advance relative to • Capable of industrial application existing knowledge or have economic significance • Must make the invention not obvious to a person skilled in the art 57 58 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Industrial Applicability Patentability Requirements Invention X claimed on a Patent Application • Capable of being made or Search for X Yes • Capable of being used in an industry X found? No Search for X-1, X-2, etc. No X-1, X-2 found? Yes Would 1 = X-(X-1), No or 2 = X-(X-2), or (1+2) be non-obvious to a person skilled in the art? Yes No Does X have industrial application? Yes Violates S. 2(1)(j); Grant of patent can’t be patented if other requirements 59 are met 60 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 10
  11. 11. Patent Rights Patents granted with Conditions • Excludes others from making, using, selling, • Patented invention may be used by or on behalf importing the Patented Product of Government • Excludes others from using the Patented • Any person may use Patented inventions for Process to sell or import products obtained experiment or research or to instruct pupils directly by the Process • Government may import a Patented medicine for use in Government hospital or dispensary or medical institution 61 62 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Principles of Patent Principles of Patent (Cont’d) • To encourage inventions • Not impede protection of public health and • To secure that the inventions are worked in India nutrition and act as instrument to promote public on a commercial scale and to the fullest extent interest specially in sectors of vital importance reasonably practicable without undue delay for socio-economic and technological • Patents are not granted merely to enable development of India Patentees to enjoy a monopoly for the • Not in any way prohibit Central Government in importation of the Patented article taking measures to protect public health • To promote technological innovation • Prevent resorting to practices which • To transfer and disseminate technology in a unreasonably restrain trade or adversely affect manner conducive to social and economic the international transfer of technology welfare, and to balance of rights and obligations • Make the benefit of the invention available at reasonably affordable prices to the public 63 64 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 General Precautions Why Search is Important? • The first to file system is employed, in which, • Look before you leap among persons having filed the same invention, • No need to reinvent the wheel first one is granted a patent • A completed invention should be filed promptly • Freedom to operate • Through ignorance, inventors act unknowingly • Validity and jeopardize the chance of obtaining patents • State-of-the art for their inventions by publishing their inventions • Infringement in newspapers or scientific and technical journals, before applying for patents 65 66 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 11
  12. 12. Types of Search Patentability Search • Patentability • Not required for filing • Validity • Prior to filing of Application • Infringement • Relevant prior art • Clearance • Identifies duplicate inventions • State-of-the art • Novelty • Landscape • Inventive step • Helps decide if Patent should be pursued 67 68 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Validity Search Infringement Search • Often called invalidity search • Conducted before making, using, or selling a • Determines absolute novelty product • Checks if a concept will infringe a Patent • Exhaustive: Patent & non-Patent literature • Focused on claims of valid Patents • Validates or invalidates claims • Expired Patents are excluded • Locates evidence of error in grant or • Non-Patent literature is excluded concealment of prior art • Patents not in force excluded • Used in a suit for infringement • Helps draft claims 69 70 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Clearance Search State-of-the Art Search • To study what exists in public domain • Comprehensive Patent and non-Patent literature • Conducted before marketing • Focused on a definite technical field • Right to use • Generates numerous references • Freedom to operate • Determines direction of R&D • Helps assess Patent portfolio importance • Clearance when no Patents are infringed or Patents are expired • Included expired Patents • Not specific to any country 71 72 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 12
  13. 13. Landscape Search Who can apply for a Patent? • Very comprehensive state-of-the art search • The true and first inventor • Deeper analysis of Patent and non-Patent • Assignee of such inventor having a right to apply literature • Legal representative of a deceased person who, • Conducted to determine literature before immediately before the death was entitled to choosing a specific research area apply • Improves ability to make business decisions • Identifies markets of interest • Helps understand competition 73 74 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Contents of Provisional Provisional Specification Specification • Discloses only the nature of the invention • Introduction • Helps establish the identity of the invention • Prior art brief description • Does not confer any legal rights except the • Objectives of the invention earliest authorship of the invention • Summary describing nature of the invention • Need not include claims or drawings • Brief description of the invention • May subsequently determine priority of claims • Working examples to illustrate the nature of the • Allows 12 months to develop the invention invention • The inventor may be able to assess success of • Advantages of the invention the invention 75 76 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Complete Specification Contents of Complete Specification • Discloses full and complete details of the • Title invention • Field of Invention • Discloses the manner in which the invention is to • Prior Art and Problem to be solved be performed • Objects of Invention (may be more than one) • Must have claims • General statement of invention • Must have an abstract • Detailed Description of Invention[ with reference. • If provisional specification was filed, must be to drawings , if any) filed within 12 months • Best method/example of working of the invention • Does not replace provisional specification • Statement of claims • Drawings 77 • Abstract 78 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 13
  14. 14. Claims Claims (Cont’d) High Enforcement/Low Patentability Enforcement High Wider Desirable Zone Claims Narrower Low Patentability Narrow Wide Low Enforcement/High Patentability Claims 79 80 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Publication of Patents Revocation • 18 months after the earlier date of filing or • Any granted Patent may be revoked priority date • Any person or Central Government may initiate • Early publication possible upon payment of fees revocation proceedings • From the date of publication, the applicant shall • May be initiated in a counter-claim in have like privileges & rights as is the Patent is granted infringement suit • Does not give right to sue for infringement • Grounds • No suit or other proceeding can be commenced – Lack of novelty for an infringement committed before publication – Patentee was not entitled to apply – Wrongfully obtained in contravention of someone’s rights 81 82 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Revocation (Cont’d) Revocation (Cont’d) – Subject of any claim not an invention – Leave to amend specification was obtained by fraud – Lack of inventive step – Wrong source mentioned for biological material – Invention is not useful – Anticipated due to oral or otherwise knowledge of – Insufficient disclosure local or indigenous community anywhere – Patent obtained by false suggestion or representation – Subject of any claim not Patentable – Invention was secretly used in India before filing – Applicant failed to provide undertaking about any foreign filing – Secrecy directions contravened 83 84 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 14
  15. 15. Secrecy Directions Compulsory Licensing • Controller may prohibit or restrict publication of • Any person may apply after 3 years from the information related to an invention if it is relevant date of grant – Public requirement not satisfied for defense purposes – Invention not available at affordable price • Controller will consult Central Government – Invention not worked in India • Central Government may pay the applicant a • Even a licensee can apply solatium 85 86 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Compulsory Licensing by Compulsory Licensing for Government Export of Pharmaceuticals • National Emergency • For manufacture and export to any country • Extreme Urgency having insufficient or no manufacturing capacity • Public Non-commercial Use to address public health problems 87 88 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 Acquisition by Government Suit for Infringement • Rights in a Patent can be acquired by central • District Court government for a public purpose • If counter-claim for revocation filed by defendant, • Patentee will be compensated for such an suit from District Court shall be transferred to acquisition High Court 89 90 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 15
  16. 16. Certain Acts Not Infringing • Making, constructing, using, selling, or importing for development and submission of information required by law in force in India or elsewhere • Importing Patented products form a person who can legally produce, sell, or distribute THANKS 91 92 Pranit K. Nanavati +91-9879106229 Pranit K. Nanavati +91-9879106229 16