Brands & patents june 12, 2010

Applications

Brands & Patents

Brand Klub
June 12, 2010
Pranit K. Nanavati
Partner, Nanavati Associates

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Pranit K. Nanavati +91-9879106229 pranit@nanavatiassociates.com

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@nanavatiassociates.com Pranit K. Nanavati +91-9879106229 pranit@nanavatiassociates.com

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

1

Marketing Ease Distinctiveness
High

High
Distinctiveness
Marketing Ease
Low

Low
Low High Low High
Descriptiveness of Brand Descriptiveness of Brand
7 8

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

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

2

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

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

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

3

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

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

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

4

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

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

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

5

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


• 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


• 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

6

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

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

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

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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

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

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

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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

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

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

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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

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

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

10

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

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

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

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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

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

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

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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

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

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

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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

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

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

14

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

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

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

15

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

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Brands & patents june 12, 2010

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