About Trade marks IPRs

1. Trade MarksTrade Marks
Prof. Puttu Guru PrasadProf. Puttu Guru Prasad
VVITVVIT

2. Trade MarksTrade Marks
Any word , name , symbol or device or any
combination thereof, used or intended to be
used , by a person to identify and distinguish
goods from those manufactured or sold by
other.
There fore , a mark can be anything. A mark
does not have any limit. Trade marks are
usually used to distinguish the products or
services of one entity from other.

3. Purpose and function ofPurpose and function of
trade marktrade mark
Giving a guarantee that the products
maintain a level and consistency
Helping the consumers in deciding
which product they have to purchase.
Trade marks ensure healthy
competition in the market.
The value of a business entity developed
by providing quality products and
services to the consumers under a mark
is known as goodwill.

4. Various types of TradeVarious types of Trade
marksmarks
Names, words, numbers, domain names.
Logos, symbols, and devices,
Colors and Scents, Multiple marks.
Characters, certificate marks.
Service marks, collective marks
Any marks joined with the goods or
products.

5. Various attributes of TMVarious attributes of TM
Slogans, letters, Numbers
Trade dress, domain names., names of
the artists
Foreign terms, Literary Title.
Logos and symbols
Designs and ornamentation
Shapes and containers
Fragrances, sounds, Moving Images.

6. Various attributes that are excluded fromVarious attributes that are excluded from
Trade marksTrade marks
Generic terms
Functional features
Descriptive marks
Disparaging or falsely suggestive marks.
Mere Surnames
Deceptive Matter
Insignia, name sand portieres of living persons
Immoral or scandalous matters

7. Tm registration processTm registration process
Application process
Preparing the application
Filling the application
Examination by PTO
Post examination Procedure
Publication in the official gazette
Opposition proceedings
Intent and statement of use , Abandonment
and Revival of Application.

8. Benefits of RegistrationBenefits of Registration
Right to use ‘O’ symbol
Right sue in the courts
Right to claim damages
Prima facie evidence
Constructive notice of date of first use
Constructive notice of ownership claim

9. Benefits of RegistrationBenefits of Registration
Criminal penalties
Right to stop important of infringement
marks
Incontestability
Basis for foreign application
Limited ground for attacking trademark
after 5 years.

10. Bases for tm applicationBases for tm application
Use in commerce
Bonafide intention to use the mark
Bonafide intention to use the mark along
with importance as a foreign application
Bonafide intention to use the mark along
with acquisition of certificate or copy of
foreign registration.

11. Tm infringementTm infringement
Trade mark infringement is a violation of
exclusive rights of a trademark.
Various factors determining the
infringement of Trademark
Strength of the TM
Similarity of the TM
Similarity of the product, or goods
Similarity in the channels of trade
Evidence of actual confusion
Defendant's intent in selecting the TM

12. Remedies for TM InfringementRemedies for TM Infringement
Injunctions
Temporary restraining order
Preliminary injunctions
Permanent injunctions
Damages
Impoundment and destruction of the
articles
Fraudulent representation in TM
registrations

13. Two types of symbolsTwo types of symbols
‘TM’ indicates that a trademark
application has been filed for that
particular mark, but trademark is not yet
granted.,
@ indicates that the trademark is
registered .
It creates owner ship
Prevent unlawful use
Crete brand value, or intellectual wealth

14. Various defences to tmVarious defences to tm
infringementinfringement
Generic Terms
Abandonment
Lack of Secondary meaning
Fraud
Estoppel
Unclean hands
Laches
Acquiescence , functional, fair use,
free speech.

15. Resolve the infringement litigationResolve the infringement litigation
The Infringement litigation can be
resolved in the following manner.
The cease and desist letter
Alternative dispute resolution
Settlement

16. Dilution of TmDilution of Tm
Dilution is nothing but an authorized act
to Blur the distinctiveness of a famous
trade mark. The best example for dilution
is the user of TIFFANY mark by a jewelry
store in New York, which made
consumers believe that it was founded by
the TIFFANY Restaurant owners.
Types of Dilution: 1. Blurring and 2.
Tarnishment

17. Types of dilutionTypes of dilution
Blurring :- this refers to the dilution which
effects or impact on the sale of the popular
trademark products and services. This is
usually done by using the mark upon
dissimilar products. For example, using Cello
juice, Nokia clothing.
Tarnishment:- when the trade mark is
diluted and affixed on products with low
quality or used in embarrassing context or
being displayed in a wrongful manner it is
known as Tarnishment. Example, obscenity,
sexual activity or illegal activity.

18. Likelihood of confusionLikelihood of confusion
Registration, inter parties proceedings
and infringement litigations are the three
ways in which issues of likelihood of
confusion occurs.
In every case, the standards are same-
under each situation it is expected that
consumers of related goods will get
confused, because of related goods, Using
the almost same type of trademarks.

19. Strength of TMStrength of TM
 A trade mark is said to be weak when it is
descriptive and lacks appropriate secondary
meaning. Likewise it is said to be strong if it is
arbitrary, fanciful or suggestive and has appropriate
secondary meaning.
 The weak trade mark owners find it difficult to
prove likelihood of confusion. For example, the
American trade mark “Maid in America” for
cleaning services was found to be descriptive. The
owner of this TM failed to demonstrate advertising
or sales to prove secondary meaning.

20. Similarity of TMSimilarity of TM
 In general, add prefix or suffix, change letters or
using clarifying information cannot prevent the
claim of similarity of the trademark. Example:-
Platinum puff Vs Platinum Plus
Magnavox Vs Multivox,
Bata Vs Beta
Lexus Vs Lexis
Honda Vs Hyundai
Samsung Vs Sansui

21. International Tm LawsInternational Tm Laws
 TRIPS- Trade related Aspects of Intellectual
Property Rights
 Multilateral Intellectual Property Agreement by
WTO
 Enforcement of IPR by WTO
 Paris Convention
 Trademark Law Treaty,1994, Geneva.
 Madrid Protocol
 NAFTA, WIPO, INTA

22. Thanking youThanking you
Professor & LawyerProfessor & Lawyer
Puttu Guru PrasadPuttu Guru Prasad
M.B.A., M.Com., M.Phil., PGDFTM., APSET., DFTM.,
PhD at JNTUK.,
pgpjntuk@gmail.com., puttuvvit@gmail.com., pgp4149@gmail.com
9394969898, 7674060336, 9059457336, 9059714336,
9885192716
VVIT, Nambur, A.P