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TRADEMARKS
in
Business Enterprises
__
Dr. Dinesh Kumar. M.Sc., B.Ed., PhD., MBA
Dy. General Manager, Rights & Marks, Chennai-01
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• Late 18th & Early 19th Century – we had the Industrial
Revolution
• 20th Century- could be called as the Electric & Electronics age
• Late 20th Century- we hit the IT & Biotech bandwagons which
still have an unimaginable potential for transforming human
life.
• 21st Century- leadership of the world will be in the hands of
those who create and harness Knowledge
INTRODUCTION
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Old Vs. New Economy
• Industrial economy – focus on physical goods.
Dependent on natural resources (finite)
• New economy – Greater reliance on know-
how, knowledge, human creativity and
innovation (infinite)
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New Economy in Business
World
• Global market place
• More demanding and fickle consumers
• Shorter product cycles
• Working through relationships and networks
• Differentiating products
• Selling an image, concept, idea
• Out sourcing
• Efficient use of resources resulting in lower cost
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Example
• A pair of jeans bought in a street market may cost
Rs.500 while the same pair of jeans bought in a high
end boutique will cost Rs.2000.
• The difference accounted for in the intangible
components in the latter.
• It is likely that the same (outsourced) manufacturer
produced both.
• Globalization and trade liberalization has made it
crucial for SMEs to become internationally
competitive even when competing exclusively in
domestic markets
• Application of knowledge, creativity and innovation
key in competitiveness
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Competitiveness of SMEs
• To be competitive SMEs need to constantly improve
their efficiency, reduce production costs and
enhance the reputation of their products and
services by:
– Investing in research and development
– Acquiring new technology
– Improving management practices
– Developing creative and appealing designs
– Effectively marketing their products and services
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Property [ Earlier concept ]
Movable Immovable
Tangible property
Fetched maximum
value
Solely responsible for
growth
Property
-Present
Concept
Movable
Immovable
Intangible assets
[IPRs]
Acquired more
importance
Responsible for
Industrial ,economical &
cultural growth
IPR - an Asset
-many things common
with Real forms of
property
IPR gives exclusive
Right to the owner
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What is Intellectual Property
 “Intellectual Property or IP is the term that describes the
ideas, inventions, technologies, artwork, music, literature
that are intangible when created but become valuable in
tangible form as products”.
-World Intellectual Property Organization
 Components of IP – Patents, Trademarks, Designs, Copyrights
& Other evolving forms
Creation of Human Intellect
Important in Today’s Knowledge-Based Economy
IPR- A Key component for
success in Business
INTELLECTUAL PROPERTY
IPRs - “New wealth of
Nations
An infinite renewable resource
Knowledge is an capital –we are knowledge
capitalist
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Every Business has Intellectual Creation
Need & Importance of IPR to Business
• Product or service
• Technology or process
• Shape or look of product
• Brand or Logo
• Customers List
• Product Literature
• Website & Software Requirements
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Property Created through
Intellectual Creation is
Afforded monopoly for
Limited or Perpetual
period under the Statutes
or Equity
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The IP System
• Provides SMEs exclusivity over the exploitation of
their innovative products and services, creative
designs and brands
• Thus creating an appropriate incentive for
investing in improving their competitiveness
• Ensures a competitive market place, honest trade
practices and overall national development
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SMEs and IP
• Enterprises worldwide largely under-utilize the
intellectual property system due to
– Perceived lack of relevance of the IP system
– Perceived high costs and complexity of IP system
– Limited awareness of the IP system and its
usefulness
– Lack of qualified human resources to use the IP
system
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National Laws
• The IPR regime in India is regulated through the following acts
and laws:
– The Patents Act 1970 (as amended)
– The Copyright Act 1957 (as amended)
– The Trade Marks Act 1999
– The Designs Act 2001
– The Geographical Indications of Goods (Registrations and
Protection) Act, 1999
– The Semiconductor Integrated circuit Layout-Design Act 2000
– The Protection of Plant Varieties and Farmers Rights Act 2001
– The Biological Diversity Act 2002
INTELLECTUAL PROPERTY RIGHTS
(IPR)
IPR
Patents
Industrial Design
Trademarks
Works of Art
Literature
Music
Broadcasting
Dramatics Works
Sound Recording
Computer ProgramsGeographical
Indications
Industrial Property Rights
Copyright
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Forms of Intellectual Properties
 Trademarks: Brands
 Patents: Inventions
 Industrial Designs: Aesthetics of Products
 Copyright: Art, Books, Software, Music
 Geographical Indications: Origin of the product
 Trade Secrets: Formulae, Know-How’s
 Confidential Information: Data such as client list
 Domain Name: Website
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Intangible to Tangible
• By providing the protection, the IP system gives the owner of
those intangibles a right of exclusivity, the right to prevent
others from using them.
• Bringing intangible rights closer to tangible property
 Innovative products or processes
 Cultural artistic and literary works
 Creative designs
 Distinctive signs
 Microchips
 Denominations of goods
attributable to a geographical
origin
 Confidential business information
 Patents or utility models
 Copyright and related rights
 Industrial design rights
 Trademark
 Layout-designs or integrated
circuits.
 Geographical indications
 Trade secrets
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Essential Panchasheel
Innovation
Creativity
Entrepreneurship
IPR
Invention
Success
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IPRS ARE NECESSARY NO MATTER WHICH SIDE OF
THE WALL YOU ARE ON!!
Protect your
own IPs
Let others
know your
boundaries
Modify
others’ ideas
legitimately
Don’t
become a
trespasser
TRADEMARKS TM/
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Any word, name, symbol, or
device, or any combination, used,
or intended to be used, in
commerce/business to identify
and distinguish the goods or
services
Protects
All of the logos, banner, sound, smell,
etc.
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Trademark Protection
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Functions of a Trade Mark
• Identifies the goods/services and its origin
• Guarantees its unchanged quality
• Advertises the goods/services
• Creates an image for the goods/services
in the minds of people
•Value of product includes intangible but
substantial value due to Trade Mark
•Significant in JV / mergers / technology
transfer agreements / licensing issues
•Attracts customers and acquires their
goodwill
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Forms of Trademark
 Word mark – Eg. TEXAS UNIVERSITY
 Logo – Eg. Jawaharlal Nehru University
 Packaging of goods/ Trade dress – Eg. Colgate pack
 Certification mark – Eg. Wool mark, Silk Mark
 Service Mark - Ex : RBI, UTI, LIC, ICICI, HUDCO, DTC etc
 Sound mark- Eg. Roar of the MGM lion
 Smell mark - smell of fresh cut grass used over tennis balls is registered TM in
EU
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Benefits of trademark Registration
• Nationwide protection from the date of application
• Exclude others from using the mark or its varieties.
• Stop infringing goods at the dock
• Mark is presumed valid during litigation.
• Enhanced Damages.
• Get to use of the symbol ®
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Importance of Trademark for Business
Enterprises
 Exclusive legal right on your business name
 Protects your business name and gives remedy in
the court in case of any infringement
 A sound name in the market in the eye of a general
public
 Creates a face value among competitors
 Gives a legal recognition to your business
 ‘Monopoly’ for business name or brand name
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Trademark : Relevance to Business
• Distinguishes SOURCE
• Image and Reputation
• Trust – Loyal Customers - Goodwill
• Marketing Tool
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Practical Aspects
• Selecting a trademark
• Protecting a trademark through
registration
• Using and maintaining a trademark
• Enforcing a trademark
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What to Remember when
selecting Trademark?
• Inherently distinctive
– Coined or fanciful words: “Kodak”
– Arbitrary marks: “apple” for computers
– Suggestive marks: SUNNY for heaters
• Easy to memorize and pronounce
• Fits product or image of the business
• Has no legal restrictions
– Reasons for rejection
– TM search>not identical or confusingly similar to existing TM
• Has a positive connotation
• Suitable for export markets
• Corresponding domain name available
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 Non-descriptive
 Ex: “Duke” for university (not descriptive)
 Ex: “E-Book” for educational institution(descriptive)
 Non-generic
 Ex: “NALSAR” for a university(not generic)
 Ex: “New York” for a university (generic)
 Not identical or similar to existing marks
 Ex: “Oxford” “Auxford”
 Ex: “Michigan” “Mirchigon”
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Protecting a TM through
registration
• The applicant
– Application form, contact details, graphic illustration of
mark, description of goods, fees
• The trademark office
– Formal examination
– Substantive examination
– Publication and opposition
– Registration certificate valid for 10 years
– Renewal
TRADEMARKREGISTRATIONPROCESSININDIA
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Keep in Mind
• The time it takes to register a TM
• The costs associated with TM protection
• The need for a trademark search
• A trademark agent may be required
• Protecting at home and abroad
• Renewing your registration
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“Making a Mark”: The Role of
Trademarks in Branding
• Branding allows a company to differentiate its
products and services from the competition
by creating a bond with its customers in order
to create customer loyalty.
• This way, a company can have a position in
the marketplace that is much more difficult for
the competition to poach.
• A satisfied customer may leave. But a loyal
customer is more likely to stay.
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Concept of Branding
• A company image as seen by the customer
• Good branding = getting people to recognize
you first
• Having an effective logo with which customers
can identify you
• A brand is what differentiates you from your
competitors
• Good advertising and how it attracts customers
• A compelling customer experience
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Branding matters
“Consumers are starved for time and
overwhelmed by the choices available to
them. They want strong brands that
simplify their decision making and reduce
their risks.”
Kevin Lane Keller, Tuck School of Business
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The Nike’s case
• Reflects the popularity of a well-known TM
• The “Swoosh” is the well known symbol of Nike
• Originally Nike’s logo included also the shoemaker’s
name
• At the end of the nineties, the Nike’s name disappeared
• The swoosh remained as the main identification
symbol of the shoemaker
• Today there is no need to include the brand into this
logo since the recognition of a simple swoosh
automatically brings our attention to Nike
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The “Swoosh”
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For Consumer –
Brands Helps Choice in a Crowded
Market Place
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For Business –
Trademarks Helps Positioning, Reach, Identity &
Range of Products and Services
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Film company Metro-Goldwyn-Mayer
Studios to file a trademark application for
its well-known lion’s roar after 20 years of
extensions
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Trade marks may be registered or unregistered
Unregistered trade mark is called
common law mark.
The proprietor of unregistered trademark
is not entitled to take any action regarding infringement
of trademark
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Enforcing Trademarks
• Responsibility on TM owner to identify infringement
and decide on measures
• “ Cease and desist letter” to alleged infringer
• Search and seize order
• Cooperation with customs authorities to prevent
counterfeit trademark goods
• Arbitration and mediation (preserve business
relations)
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Trademarks Depiction
ENFORCEMENT – TM INFRINGEMENT
Action against copycats
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ENFORCEMENT – TM INFRINGEMENT
Action against copycats
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ENFORCEMENT – TM INFRINGEMENT
Action against copycats
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– Criminal offence
• Use of identical or similar mark on goods or services
or package containing goods;
• Cognizable offence with imprisonment for a term not
less than 6 months but may extend to 3 years AND
• Fine not less than Rs. 50,000/- (1000 US$) but may
extend to Rs. 200,000/- (4000 US$);
• On second and every subsequent offence
infringement not less than 1 year but may extend to 3
years AND
• Fine not less than Rs. 100,000/- (2000 US$) but may
extend to Rs. 200,000/- (4000 US$).
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Key Challenge
Voice of Industry Can Stop this Menace
•Enforcement agencies – No
•Judiciary - No
•Legislation - No
But
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The Value of a Trademark
• A marketing tool
• Source of revenue through licensing
• Crucial component of franchising
agreements
• May be useful for obtaining finance
• A valuable business asset
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Interbrand 2015 Annual Survey of the
world’s most valuable global brands
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Interbrand 2015 Annual Survey of the
world’s most valuable Indian brands
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Using a Trademark as a business
asset
• Merchandising : owner retains ownership and agrees to the use of
the TM by other company in exchange for royalties > licensing
agreement (business expansion/diversification)
• Franchising: licensing of a TM central to franchising agreement.
The franchiser allows franchisee to use his way of doing business
(TM, know-how, customer service, s/w, shop decoration. etc)
• Selling/assigning TM to another company (merger &
acquisitions/raising of cash)
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Franchise
• A specialized license where the
franchisee is allowed by the franchisor
in return for a fee to use a particular
business model and is licensed a
bundle of IP rights (TM, service marks,
patents, trade secrets, copyrighted
works…) and supported by training,
technical support and mentoring
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Merchandising
• The licensing of trademarks, designs,
artworks as well as fictional characters
(protected by these rights) and real
personalities are broadly referred to as
merchandising.
• For the licensor
– Extend into new products
– Increases exposure, strengthens image (could also
damage)
– Revenue
– Relatively risk free
• For the licensee
– Increase appeal of its products
– Relatively low cost way of gaining market share
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FORM TM-1
Application for Registration of a trade mark
(Section 18(1), Rule 25)
• Application is hereby made for registration in the register
of the accompanying trade mark in class ................. in
respect of ........ in the name of(s) whose address is ......
who claim(s) to be proprietor(s) thereof and whom the
said mark is proposed to be used or by whom and his
(their) predecessors in title the said mark has been
continuously used since ............. in respect of the said
goods.
• Date:
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SCHEDULE IV
Total classes: 45. (1-34 goods and 35-45 services)
• Class 25: Clothing including boots, shoes and slippers.
• Class 29: Meat, fish poultry and game, meat extracts, preserved, dried
and cooked fruits and vegetables; jellies, jams, eggs; milk and other
dairy products; edible oils and fats; preserves, pickles.
• Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee
substitutes; flour and preparations made from cereals; bread, biscuits,
cakes, pastry and confectionery; honey, treacle; yeast, baking-powder,
salt, mustard; pepper, vinegar, sauces, spices; ice.
• Class 31: Agricultural, horticultural and forestry products and grains not
included in other classes, living animals, fresh fruits and vegetables;
seeds; live plants and flowers; foodstuffs for animals; malt.
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Contd…
Services
• 35. Advertising, business management, business administration, office
functions
• 36. Insurance, financial affairs, monetary affairs, real estate affairs
• 37. Building construction; repair; installation services
• 38. Telecommunications
• 39. Transport; packaging and storage o goods; travel arrangement
• 40. Treatment of materials
• 41. Education; providing training; entertainment; sporting and cultural
activities
• 42. Providing food and drink, temporary accommodation; medical, hygienic
and beauty care; veterinary and agriculture services, legal services, scientific
and industrial research, computer programming; services that cannot be
classified in other classes.
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MARKS WHICH CANNOT BE REGISTERED
• Use of which is contrary to law
(Emblems and Names (Prevention of Improper Use), Act, 1950
• Use of which is likely to hurt religious susceptibilities of
any class or section of the citizens of India
WORDS WHICH ORDINARILY CANNOT BE REGISTERED
• Words having direct reference to the character or
quality of goods
• Geographical name
• Surname
• Sect caste or tribe
(Distinctiveness to be established)
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NO REGISTRATION OF MARKS LIKELY
TO DECEIVE OR CAUSE CONFUSION
• Similar, Identical, Deceptively similar,
causes confusion
• Degree of resemblance (phonetic,
visual as well as similarities in ideas)
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Cases
• Elora clocks as opposed to Ellora time pieces
• Pearl and Pearle appliances
• Surya as opposed to Suryan trademark for soaps
• Ponas as opposed to Ponds
• Fieldmarshal Diesel pumps as opposed to Sonamarshal
Diesel pumps
• Amritdhara and Lakshmandhara were the two
medicine.
• Peacock brand plastic wares and opposed to Mayur
plastic wares
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Cases
• Surya with a half rising sun and Bhaskar with a full
rising sun for tube lights
• Robin with a device of a bird sitting on a twig; Bul Bul
with two birds-one partially hiding the other for blue
• MERCEDES BENZ" cars with the symbol of a 'THREE
POINTED STAR'. VIP Benz vests with a star symbol.
• Rediff v/s Radiff
• Yahoo v/s YahooIndia
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Case Study
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Case Study
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Case Study
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Case Study
• Vijay Mallya, chairman of UB group convinced State Bank of India (SBI) to
accept Kingfisher Airline brand as collateral to raise Rs. 2000 crore in debt.
• Globally, many companies have used their brands value to open lines of
credit.
• The most famous example being Walt Disney, which raised about USD 725
million from Industrial Bank of Japan in 1988 through issuance of bonds
against future earnings of the park for the next 20 years.
• The deal was structured in such a way that the investors had to bare any
shortfall in the revenues and Disney continued to get its royalties without
losing any money. It was the Walt Disney brand in which investors showed
interest, faith and responded positively in the market.
COPYRIGHT
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 Relates to Original
 Literary, dramatic or musical work
 Artistic creations(paintings,photographs
 Cinematographic films & Sound Recording
 Software programme
 It is a Proprietary Right
 Comes into existence as soon as the work is created
 Extends to many countries
 Term varies according to the nature of the work
(70 years plus the life time of the author in case of literary,
dramatic, musical or artistic work & 60 years after publication of
a photograph, film or sound recording)
C
Conditions for protection
 Work must be original.
 Work must be fixed or presented in tangible form such as writing,
recording, film or photography.
 Protects the skill & labor employed by the Author in production of his
work
 It is immaterial whether the work is wise, foolish, accurate or
inaccurate or whether it has or has not any literary merit
What are not protected
 Not given for just idea, but Copyright exists only in the material form
to which the ideas are translated or expressed
 Works that are not fixed in a tangible form
 Non original works; universal facts, works consisting of information
commonly available.
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Case Study
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Intellectual Property (IP) Valuation
 Market Value of a Enterprises is increased by
protecting its Intellectual Property (IP), IP Watch and
its Valuation.
(It should be noted that licensing, Selling and
Commercialization of IP products or services guarantee
Huge Capital for the business enterprises in the long run).
 Investors and Financial Institutions keep their eyes
peeled on IP Products and Services
 IP Products and Services eventually increase the
IP Portfolio and are sold at higher valuation
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IP Assets Valuation
IP Valuation
Funding
Buying/
Selling
Licensing
Pro- M&A
Enforcement
Litigation
Damages
Financial
Reporting
(Post M&A)
Transfer
Pricing
Bankruptcy
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Geographical Indications:
Introduction
DEFINITION
• An indication which identifies goods as
agricultural, natural or manufactured.
• Originating or manufactured in the territory of a
country or a region or locality
• Where a given quality, reputation or other
characteristic of such goods is essentially
attributable to its Geographical origin.
- Section 2(i) (e) of G.I. Act 1999.
GEOGRAPHICAL INDICATIONS
INDICATION
• Includes
• Any name
• Geographical or Figurative representation
(or)
• Any combination of them
• Conveying or suggesting the Geographical
Origin
- Section (2) (i) (g) of G.I. Act 1999.
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GIs – the concept
• GIs are essentially the DNA of Nature
impregnated into the Mother Earth – difficult
to clone and beyond scientific calculation.
• GIs are about culture, geography, traditions,
heritage and traditional practices of people
and countries.
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Indian GI Act Framework
• GIs can be granted to an individual, a family, a partnership, a corporation,
a voluntary association etc or any organization or authority established by
or under any law for the time being in force representing the interest of
the producers of the concerned goods.
• GIs protect and reward traditions while allowing for products to evolve
over time
• GIs can be protected over long periods as long as the collective tradition is
maintained –
– Indian Act protects GIs for an initial period of 10 years, which can be
renewed after the expiry of the initial period of protection for another
10 years
– GIs would cease to be on the register if not renewed six months after
the expiration of the last registration
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GIs and Developing Countries
• Instrument of Rural Development - promotion of products having certain
characteristics could be of considerable benefit to the rural economy, in
particular to less-favored or remote areas, by improving the incomes of
farmers and by retaining the rural population in these areas (EC Regulation
2081/92) – e.g. Italian Tuscan Olive Oil sold at premium ever since its
registration in 1998.
• Differentiation of products can lead to:
– Increase in prices of the protected products
– Allows genuine producers to capture the rents, entry barriers for “fakes”
• More Antiguan Coffee and Darjeeling Tea sold than produced - shows large
market for genuine products.
• Issue is whether the framework is appropriate for developing countries.
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India’s famous GIs
• Banarasi silks
• Paschmina shawls
• Kashmir carpets
• Basmati rice
• Darjeeling tea
• Assam tea
• Bengal Cotton
• Alphonso Mangoes
• Pochampalli silk
• Chanderi silk
• Hyderabad pearls
• Kerala Nendran bananas
• Jaipur silver jewellery
• Nilgiri tea
• Coorg coffee
• Mysore sandal products
• Mysore silk
• Malabar pepper
• Kancheepuram silks
• Lonawala chikis (food stuff)
• Nilgiri tea
• Coir products from Kerala
• Cardamom from Kerala
• Aranmula mirrors
• Nagpur oranges
• Phulkari embroidery work
2/21/2017
© Copyright 2015, Rights & Marks,
Chennai
8080
Geographical Indication Product State Date
of
Registration
Darjeeling Tea Tea West Bengal 29.10.04
Pochampally Ikat Textile Andhra Pradesh 31.12.04
Chanderi saree Textile Guna, 28.01.05
Madhya Pradesh
Kotpad Handloom fabric Textile Koraput, Orissa 02.06.05
Kota Doria Textiles Kota, Rajasthan 05.07.05
Kancheepuram silk Textiles Tamil Nadu 02.06.05
Bhavani Jamakkalam Textile, carpets Erode,Tamil Nadu 05.07.05
Mysore Agarbathi Incense sticks Mysore, Karnataka 02.06.05
Aranmula Kannadi Metal Mirror Kerala 19.09.05
Salem Fabric Textiles Tamil Nadu 19.09.05
Solapur Chaddar Textiles Maharashtra 19.09.05
Solapur Terry Towel Textiles Maharashtra 19.09.05
Mysore Silk Textiles Karnataka 28.11.05
Kullu Shawl Textiles Himachal Pradesh 12.12.05
Madurai Sungudi Textiles Tamil Nadu 12.12.05
Kangra Tea Tea Himachal Pradesh 12.12.05
2/21/2017
© Copyright 2015, Rights & Marks,
Chennai
8181
Geographical Indication Product State Date
of
Registration
Coorg Orange Horticulture
Product
Karnataka 30.01.2006
Mysore Betel Leaf Horticulture
Product
Karnataka 30.01.2006
Nanjanagud Banana Horticulture
Product
Karnataka 30.01.2006
Mysore Sandalwood Oil Essential Oil Karnataka 30.01.2006
Mysore Sandal Soap Soap Karnataka 30.01.2006
Bidriware Handicrafts Karnataka 30.01.2006
Channapatna Toys and Dolls Handicrafts Karnataka 30.01.2006
Coimbatore Wet Grinder Wet Grinder Tamil Nadu 30.01.2006
Mysore Rosewood Inlay Handicrafts Karnataka 30.01.2006
Kasuti Embroidery Embroidery
(Textiles)
Karnataka 30.01.2006
Mysore Traditional Paintings Paintings Karnataka 30.01.2006
GOODS
• Agricultural
• Natural
• Manufactured goods
• Goods of Handicrafts
• (or)
• Industry
• Food Stuffs
- Section (2) (1) (f) of G.I. Act 1999.
Goods
I. Agricultural
Tea : Darjeeling, Assam, Nilgiri &
Kangra
Coffee : Monsooned Coffee
Rice : Basmati, Nellore, Sona masuri.
Wheat : Punjab, Madhya pradesh.
Fruits : Alphonso, Banganapalli.
Vegetable: Bangalore Brinjals.
Spice : Malabar Pepper.
Goods
II. Natural
Kolar gold
Illmanite and Monosite of Kerala
Goa Iron ore
Kota Stone
Cuddappa Stone
Neyveli Lignite
III. Manufactured Goods
III(a). Textiles
Pochampally Ikat, Kasuti Embroidery,
Mysore Silk, Bhavani Jamakalam,
Kanchipuram Silk, Kota Doria, Chanderi
Saree, Solapur Chaddar, Solapur Terry
Towel, Kullu Shawl, Kotpad Handloom
Fabric, Madurai Sungudi, Phulkari
Embroidery
III(b). Handicrafts
• Aranmula Kannadi.
• Bidari Ware.
• Chanapattna Toys.
• Malabar Hukka
• Tanjore Dolls
• Tanjore Plates
• Tanjore Paintings
• Tanjore Veena
Food Stuffs
• Bikaneri Bhujiya.
• Andhra Pickles.
• Calicut Halwa.
• Tirunelveli Halwa.
• Agra Peta.
• Kolkatta Rasagulla
Why the need for an International
registration of GIs
• Legal certainty for producers
• Protection of consumers against misleading advertising
But also…
• … protection of traditional knowledge and local
know-how
• … protection of a key development tool
2/21/2017
© Copyright 2015, Rights & Marks,
Chennai
89
Case of Basmati Rice
• Bas – Aroma, Basmati – Aromatic Rice
• Production area – belt on Northern India and
adjacent part of Pakistan
• Unique Characteristics – long grain (increases
substantially on cooking), distinctive aroma and
taste.
• Efforts to usurp the GI
• Case for joint registration – India and Pakistan.
Who Can Register?
Any association of persons or producers or
any organization or authority established
by or under law representing the interest
of producers of the concerned goods
BENEFITS OF GEOGRAPHICAL INDICATION
• It confers legal protection to geographical
indications in India.
• It prevents unauthorised use of a registered
geographical indication by others.
• It boosts exports of Indian geographical
indications by providing legal protection.
• It promotes economic prosperity of producers.
• It enables seeking legal protection in other
WTO member countries.
2/21/2017
© Copyright 2015, Rights & Marks,
Chennai
92
Conclusion
• New (knowledge) Economy rewards those
enterprises that are creative, innovative and
understand the importance of the market for ideas
• The IP system provides the formal framework for
protecting their knowledge, creativity & innovation
• To maximize the potential provided the IP system
one has to think beyond exclusive rights to IP
assets
• IP offices, Chambers and other support institutions
have an important role to assist
Rights & Marks -
Services & Expertise at glance
We offer the complete gamut of legal services with five branch offices in prime
cities of India having its head office located in Chennai and as well branches at
overseas in UK, UAE and USA.
As a full-service law firm, we have significant award-winning practices
in services of
Trademarks and Brand Protection & Creation
Copyrights
Patents
Industrial Designs
IP valuation & IP Audit and IP Watch
IP Enforcement & Technology Transfer Agreements
Other law services viz., Franchise & Joint venture Agreements,
Contract Drafting and Reviewing services, Corporate Law, Litigation and
Arbitration, Mergers and Acquisitions, Leveraged and Acquisition Finance,
Securities Enforcement and Tax, Banking and Financial Institutions, Private
Equity, Real Estate, Insurance and Litigation.2/21/2017
© Copyright 2015, Rights & Marks,
Chennai
93
Rights & Marks – Global Awards
2/21/2017
© Copyright 2015, Rights & Marks,
Chennai
94
Hyderabad
Mr. V.Rajesh
General Manager
Mob : 93477 61242
2/21/2017
© Copyright 2015, Rights & Marks,
Chennai
95
Contact for More Details
Corporate Head Office
Pandu Klix Plaza, Suite no.27 C&D,
No.330/168, Thambu Chetty street,
Chennai-600 001.
Phone : (044) 43445353, Mob: 07358044457
Email ID: info@rightsandmarks.org
Web: www.rightsandmarks.org
Bangalore
Ms. Uma
Branch Manager
Mob :9379150966
Franchises in India
Coimbatore
Mr. Jayakumar
Branch Manager
Mob :99444 00083
Overseas Offices
U.K. U.S.A. U.A.E.

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Rights & Marks - Intellectual Property (IP) Trademark | Patent | Copyrights

  • 1. TRADEMARKS in Business Enterprises __ Dr. Dinesh Kumar. M.Sc., B.Ed., PhD., MBA Dy. General Manager, Rights & Marks, Chennai-01 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 1
  • 2. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 2 • Late 18th & Early 19th Century – we had the Industrial Revolution • 20th Century- could be called as the Electric & Electronics age • Late 20th Century- we hit the IT & Biotech bandwagons which still have an unimaginable potential for transforming human life. • 21st Century- leadership of the world will be in the hands of those who create and harness Knowledge INTRODUCTION
  • 3. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 3 Old Vs. New Economy • Industrial economy – focus on physical goods. Dependent on natural resources (finite) • New economy – Greater reliance on know- how, knowledge, human creativity and innovation (infinite)
  • 4. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 4 New Economy in Business World • Global market place • More demanding and fickle consumers • Shorter product cycles • Working through relationships and networks • Differentiating products • Selling an image, concept, idea • Out sourcing • Efficient use of resources resulting in lower cost
  • 5. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 5 Example • A pair of jeans bought in a street market may cost Rs.500 while the same pair of jeans bought in a high end boutique will cost Rs.2000. • The difference accounted for in the intangible components in the latter. • It is likely that the same (outsourced) manufacturer produced both. • Globalization and trade liberalization has made it crucial for SMEs to become internationally competitive even when competing exclusively in domestic markets • Application of knowledge, creativity and innovation key in competitiveness
  • 6. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 6 Competitiveness of SMEs • To be competitive SMEs need to constantly improve their efficiency, reduce production costs and enhance the reputation of their products and services by: – Investing in research and development – Acquiring new technology – Improving management practices – Developing creative and appealing designs – Effectively marketing their products and services
  • 7. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 7 Property [ Earlier concept ] Movable Immovable Tangible property Fetched maximum value Solely responsible for growth
  • 8. Property -Present Concept Movable Immovable Intangible assets [IPRs] Acquired more importance Responsible for Industrial ,economical & cultural growth IPR - an Asset -many things common with Real forms of property IPR gives exclusive Right to the owner
  • 9. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 9 What is Intellectual Property  “Intellectual Property or IP is the term that describes the ideas, inventions, technologies, artwork, music, literature that are intangible when created but become valuable in tangible form as products”. -World Intellectual Property Organization  Components of IP – Patents, Trademarks, Designs, Copyrights & Other evolving forms
  • 10. Creation of Human Intellect Important in Today’s Knowledge-Based Economy IPR- A Key component for success in Business INTELLECTUAL PROPERTY IPRs - “New wealth of Nations An infinite renewable resource Knowledge is an capital –we are knowledge capitalist
  • 11. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 11 Every Business has Intellectual Creation Need & Importance of IPR to Business • Product or service • Technology or process • Shape or look of product • Brand or Logo • Customers List • Product Literature • Website & Software Requirements
  • 12. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 12 Property Created through Intellectual Creation is Afforded monopoly for Limited or Perpetual period under the Statutes or Equity
  • 13. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 13 The IP System • Provides SMEs exclusivity over the exploitation of their innovative products and services, creative designs and brands • Thus creating an appropriate incentive for investing in improving their competitiveness • Ensures a competitive market place, honest trade practices and overall national development
  • 14. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 14 SMEs and IP • Enterprises worldwide largely under-utilize the intellectual property system due to – Perceived lack of relevance of the IP system – Perceived high costs and complexity of IP system – Limited awareness of the IP system and its usefulness – Lack of qualified human resources to use the IP system
  • 15. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 15 National Laws • The IPR regime in India is regulated through the following acts and laws: – The Patents Act 1970 (as amended) – The Copyright Act 1957 (as amended) – The Trade Marks Act 1999 – The Designs Act 2001 – The Geographical Indications of Goods (Registrations and Protection) Act, 1999 – The Semiconductor Integrated circuit Layout-Design Act 2000 – The Protection of Plant Varieties and Farmers Rights Act 2001 – The Biological Diversity Act 2002
  • 16. INTELLECTUAL PROPERTY RIGHTS (IPR) IPR Patents Industrial Design Trademarks Works of Art Literature Music Broadcasting Dramatics Works Sound Recording Computer ProgramsGeographical Indications Industrial Property Rights Copyright 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 16
  • 17. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 17 Forms of Intellectual Properties  Trademarks: Brands  Patents: Inventions  Industrial Designs: Aesthetics of Products  Copyright: Art, Books, Software, Music  Geographical Indications: Origin of the product  Trade Secrets: Formulae, Know-How’s  Confidential Information: Data such as client list  Domain Name: Website
  • 18. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 18 Intangible to Tangible • By providing the protection, the IP system gives the owner of those intangibles a right of exclusivity, the right to prevent others from using them. • Bringing intangible rights closer to tangible property  Innovative products or processes  Cultural artistic and literary works  Creative designs  Distinctive signs  Microchips  Denominations of goods attributable to a geographical origin  Confidential business information  Patents or utility models  Copyright and related rights  Industrial design rights  Trademark  Layout-designs or integrated circuits.  Geographical indications  Trade secrets
  • 19. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 19 Essential Panchasheel Innovation Creativity Entrepreneurship IPR Invention Success
  • 20. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 20 IPRS ARE NECESSARY NO MATTER WHICH SIDE OF THE WALL YOU ARE ON!! Protect your own IPs Let others know your boundaries Modify others’ ideas legitimately Don’t become a trespasser
  • 21. TRADEMARKS TM/ 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 21 Any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce/business to identify and distinguish the goods or services Protects All of the logos, banner, sound, smell, etc.
  • 22. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 22 Trademark Protection
  • 23. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 23 Functions of a Trade Mark • Identifies the goods/services and its origin • Guarantees its unchanged quality • Advertises the goods/services • Creates an image for the goods/services in the minds of people •Value of product includes intangible but substantial value due to Trade Mark •Significant in JV / mergers / technology transfer agreements / licensing issues •Attracts customers and acquires their goodwill
  • 24. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 24 Forms of Trademark  Word mark – Eg. TEXAS UNIVERSITY  Logo – Eg. Jawaharlal Nehru University  Packaging of goods/ Trade dress – Eg. Colgate pack  Certification mark – Eg. Wool mark, Silk Mark  Service Mark - Ex : RBI, UTI, LIC, ICICI, HUDCO, DTC etc  Sound mark- Eg. Roar of the MGM lion  Smell mark - smell of fresh cut grass used over tennis balls is registered TM in EU
  • 25. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 25 Benefits of trademark Registration • Nationwide protection from the date of application • Exclude others from using the mark or its varieties. • Stop infringing goods at the dock • Mark is presumed valid during litigation. • Enhanced Damages. • Get to use of the symbol ®
  • 26. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 26 Importance of Trademark for Business Enterprises  Exclusive legal right on your business name  Protects your business name and gives remedy in the court in case of any infringement  A sound name in the market in the eye of a general public  Creates a face value among competitors  Gives a legal recognition to your business  ‘Monopoly’ for business name or brand name
  • 27. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 27 Trademark : Relevance to Business • Distinguishes SOURCE • Image and Reputation • Trust – Loyal Customers - Goodwill • Marketing Tool
  • 28. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 28 Practical Aspects • Selecting a trademark • Protecting a trademark through registration • Using and maintaining a trademark • Enforcing a trademark
  • 29. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 29 What to Remember when selecting Trademark? • Inherently distinctive – Coined or fanciful words: “Kodak” – Arbitrary marks: “apple” for computers – Suggestive marks: SUNNY for heaters • Easy to memorize and pronounce • Fits product or image of the business • Has no legal restrictions – Reasons for rejection – TM search>not identical or confusingly similar to existing TM • Has a positive connotation • Suitable for export markets • Corresponding domain name available
  • 30. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 30  Non-descriptive  Ex: “Duke” for university (not descriptive)  Ex: “E-Book” for educational institution(descriptive)  Non-generic  Ex: “NALSAR” for a university(not generic)  Ex: “New York” for a university (generic)  Not identical or similar to existing marks  Ex: “Oxford” “Auxford”  Ex: “Michigan” “Mirchigon”
  • 31. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 31 Protecting a TM through registration • The applicant – Application form, contact details, graphic illustration of mark, description of goods, fees • The trademark office – Formal examination – Substantive examination – Publication and opposition – Registration certificate valid for 10 years – Renewal
  • 33. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 33 Keep in Mind • The time it takes to register a TM • The costs associated with TM protection • The need for a trademark search • A trademark agent may be required • Protecting at home and abroad • Renewing your registration
  • 34. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 34 “Making a Mark”: The Role of Trademarks in Branding • Branding allows a company to differentiate its products and services from the competition by creating a bond with its customers in order to create customer loyalty. • This way, a company can have a position in the marketplace that is much more difficult for the competition to poach. • A satisfied customer may leave. But a loyal customer is more likely to stay.
  • 35. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 35 Concept of Branding • A company image as seen by the customer • Good branding = getting people to recognize you first • Having an effective logo with which customers can identify you • A brand is what differentiates you from your competitors • Good advertising and how it attracts customers • A compelling customer experience
  • 36. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 36 Branding matters “Consumers are starved for time and overwhelmed by the choices available to them. They want strong brands that simplify their decision making and reduce their risks.” Kevin Lane Keller, Tuck School of Business
  • 37. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 37 The Nike’s case • Reflects the popularity of a well-known TM • The “Swoosh” is the well known symbol of Nike • Originally Nike’s logo included also the shoemaker’s name • At the end of the nineties, the Nike’s name disappeared • The swoosh remained as the main identification symbol of the shoemaker • Today there is no need to include the brand into this logo since the recognition of a simple swoosh automatically brings our attention to Nike
  • 38. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 38 The “Swoosh”
  • 39. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 39 For Consumer – Brands Helps Choice in a Crowded Market Place
  • 40. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 40 For Business – Trademarks Helps Positioning, Reach, Identity & Range of Products and Services
  • 41. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 41 Film company Metro-Goldwyn-Mayer Studios to file a trademark application for its well-known lion’s roar after 20 years of extensions
  • 42. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 42 Trade marks may be registered or unregistered Unregistered trade mark is called common law mark. The proprietor of unregistered trademark is not entitled to take any action regarding infringement of trademark
  • 43. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 43 Enforcing Trademarks • Responsibility on TM owner to identify infringement and decide on measures • “ Cease and desist letter” to alleged infringer • Search and seize order • Cooperation with customs authorities to prevent counterfeit trademark goods • Arbitration and mediation (preserve business relations)
  • 44. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 44 Trademarks Depiction
  • 45. ENFORCEMENT – TM INFRINGEMENT Action against copycats 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 45
  • 46. ENFORCEMENT – TM INFRINGEMENT Action against copycats 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 46
  • 47. ENFORCEMENT – TM INFRINGEMENT Action against copycats 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 47 – Criminal offence • Use of identical or similar mark on goods or services or package containing goods; • Cognizable offence with imprisonment for a term not less than 6 months but may extend to 3 years AND • Fine not less than Rs. 50,000/- (1000 US$) but may extend to Rs. 200,000/- (4000 US$); • On second and every subsequent offence infringement not less than 1 year but may extend to 3 years AND • Fine not less than Rs. 100,000/- (2000 US$) but may extend to Rs. 200,000/- (4000 US$).
  • 48. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 48 Key Challenge Voice of Industry Can Stop this Menace •Enforcement agencies – No •Judiciary - No •Legislation - No But
  • 49. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 49 The Value of a Trademark • A marketing tool • Source of revenue through licensing • Crucial component of franchising agreements • May be useful for obtaining finance • A valuable business asset
  • 50. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 50 Interbrand 2015 Annual Survey of the world’s most valuable global brands
  • 51. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 51 Interbrand 2015 Annual Survey of the world’s most valuable Indian brands
  • 52. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 52 Using a Trademark as a business asset • Merchandising : owner retains ownership and agrees to the use of the TM by other company in exchange for royalties > licensing agreement (business expansion/diversification) • Franchising: licensing of a TM central to franchising agreement. The franchiser allows franchisee to use his way of doing business (TM, know-how, customer service, s/w, shop decoration. etc) • Selling/assigning TM to another company (merger & acquisitions/raising of cash)
  • 53. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 53 Franchise • A specialized license where the franchisee is allowed by the franchisor in return for a fee to use a particular business model and is licensed a bundle of IP rights (TM, service marks, patents, trade secrets, copyrighted works…) and supported by training, technical support and mentoring
  • 54. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 54 Merchandising • The licensing of trademarks, designs, artworks as well as fictional characters (protected by these rights) and real personalities are broadly referred to as merchandising. • For the licensor – Extend into new products – Increases exposure, strengthens image (could also damage) – Revenue – Relatively risk free • For the licensee – Increase appeal of its products – Relatively low cost way of gaining market share
  • 55. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 55
  • 56. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 56
  • 57. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 57 FORM TM-1 Application for Registration of a trade mark (Section 18(1), Rule 25) • Application is hereby made for registration in the register of the accompanying trade mark in class ................. in respect of ........ in the name of(s) whose address is ...... who claim(s) to be proprietor(s) thereof and whom the said mark is proposed to be used or by whom and his (their) predecessors in title the said mark has been continuously used since ............. in respect of the said goods. • Date:
  • 58. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 58 SCHEDULE IV Total classes: 45. (1-34 goods and 35-45 services) • Class 25: Clothing including boots, shoes and slippers. • Class 29: Meat, fish poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables; jellies, jams, eggs; milk and other dairy products; edible oils and fats; preserves, pickles. • Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery; honey, treacle; yeast, baking-powder, salt, mustard; pepper, vinegar, sauces, spices; ice. • Class 31: Agricultural, horticultural and forestry products and grains not included in other classes, living animals, fresh fruits and vegetables; seeds; live plants and flowers; foodstuffs for animals; malt.
  • 59. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 59 Contd… Services • 35. Advertising, business management, business administration, office functions • 36. Insurance, financial affairs, monetary affairs, real estate affairs • 37. Building construction; repair; installation services • 38. Telecommunications • 39. Transport; packaging and storage o goods; travel arrangement • 40. Treatment of materials • 41. Education; providing training; entertainment; sporting and cultural activities • 42. Providing food and drink, temporary accommodation; medical, hygienic and beauty care; veterinary and agriculture services, legal services, scientific and industrial research, computer programming; services that cannot be classified in other classes.
  • 60. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 60 MARKS WHICH CANNOT BE REGISTERED • Use of which is contrary to law (Emblems and Names (Prevention of Improper Use), Act, 1950 • Use of which is likely to hurt religious susceptibilities of any class or section of the citizens of India WORDS WHICH ORDINARILY CANNOT BE REGISTERED • Words having direct reference to the character or quality of goods • Geographical name • Surname • Sect caste or tribe (Distinctiveness to be established)
  • 61. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 61 NO REGISTRATION OF MARKS LIKELY TO DECEIVE OR CAUSE CONFUSION • Similar, Identical, Deceptively similar, causes confusion • Degree of resemblance (phonetic, visual as well as similarities in ideas)
  • 62. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 62 Cases • Elora clocks as opposed to Ellora time pieces • Pearl and Pearle appliances • Surya as opposed to Suryan trademark for soaps • Ponas as opposed to Ponds • Fieldmarshal Diesel pumps as opposed to Sonamarshal Diesel pumps • Amritdhara and Lakshmandhara were the two medicine. • Peacock brand plastic wares and opposed to Mayur plastic wares
  • 63. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 63 Cases • Surya with a half rising sun and Bhaskar with a full rising sun for tube lights • Robin with a device of a bird sitting on a twig; Bul Bul with two birds-one partially hiding the other for blue • MERCEDES BENZ" cars with the symbol of a 'THREE POINTED STAR'. VIP Benz vests with a star symbol. • Rediff v/s Radiff • Yahoo v/s YahooIndia
  • 64. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 64 Case Study
  • 65. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 65 Case Study
  • 66. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 66 Case Study
  • 67. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 67 Case Study • Vijay Mallya, chairman of UB group convinced State Bank of India (SBI) to accept Kingfisher Airline brand as collateral to raise Rs. 2000 crore in debt. • Globally, many companies have used their brands value to open lines of credit. • The most famous example being Walt Disney, which raised about USD 725 million from Industrial Bank of Japan in 1988 through issuance of bonds against future earnings of the park for the next 20 years. • The deal was structured in such a way that the investors had to bare any shortfall in the revenues and Disney continued to get its royalties without losing any money. It was the Walt Disney brand in which investors showed interest, faith and responded positively in the market.
  • 68. COPYRIGHT 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 68  Relates to Original  Literary, dramatic or musical work  Artistic creations(paintings,photographs  Cinematographic films & Sound Recording  Software programme  It is a Proprietary Right  Comes into existence as soon as the work is created  Extends to many countries  Term varies according to the nature of the work (70 years plus the life time of the author in case of literary, dramatic, musical or artistic work & 60 years after publication of a photograph, film or sound recording) C
  • 69. Conditions for protection  Work must be original.  Work must be fixed or presented in tangible form such as writing, recording, film or photography.  Protects the skill & labor employed by the Author in production of his work  It is immaterial whether the work is wise, foolish, accurate or inaccurate or whether it has or has not any literary merit What are not protected  Not given for just idea, but Copyright exists only in the material form to which the ideas are translated or expressed  Works that are not fixed in a tangible form  Non original works; universal facts, works consisting of information commonly available. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 69
  • 70. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 70 Case Study
  • 71. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 71 Intellectual Property (IP) Valuation  Market Value of a Enterprises is increased by protecting its Intellectual Property (IP), IP Watch and its Valuation. (It should be noted that licensing, Selling and Commercialization of IP products or services guarantee Huge Capital for the business enterprises in the long run).  Investors and Financial Institutions keep their eyes peeled on IP Products and Services  IP Products and Services eventually increase the IP Portfolio and are sold at higher valuation
  • 72. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 72 IP Assets Valuation IP Valuation Funding Buying/ Selling Licensing Pro- M&A Enforcement Litigation Damages Financial Reporting (Post M&A) Transfer Pricing Bankruptcy
  • 73. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 73 Geographical Indications: Introduction
  • 74. DEFINITION • An indication which identifies goods as agricultural, natural or manufactured. • Originating or manufactured in the territory of a country or a region or locality • Where a given quality, reputation or other characteristic of such goods is essentially attributable to its Geographical origin. - Section 2(i) (e) of G.I. Act 1999. GEOGRAPHICAL INDICATIONS
  • 75. INDICATION • Includes • Any name • Geographical or Figurative representation (or) • Any combination of them • Conveying or suggesting the Geographical Origin - Section (2) (i) (g) of G.I. Act 1999.
  • 76. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 76 GIs – the concept • GIs are essentially the DNA of Nature impregnated into the Mother Earth – difficult to clone and beyond scientific calculation. • GIs are about culture, geography, traditions, heritage and traditional practices of people and countries.
  • 77. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 77 Indian GI Act Framework • GIs can be granted to an individual, a family, a partnership, a corporation, a voluntary association etc or any organization or authority established by or under any law for the time being in force representing the interest of the producers of the concerned goods. • GIs protect and reward traditions while allowing for products to evolve over time • GIs can be protected over long periods as long as the collective tradition is maintained – – Indian Act protects GIs for an initial period of 10 years, which can be renewed after the expiry of the initial period of protection for another 10 years – GIs would cease to be on the register if not renewed six months after the expiration of the last registration
  • 78. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 78 GIs and Developing Countries • Instrument of Rural Development - promotion of products having certain characteristics could be of considerable benefit to the rural economy, in particular to less-favored or remote areas, by improving the incomes of farmers and by retaining the rural population in these areas (EC Regulation 2081/92) – e.g. Italian Tuscan Olive Oil sold at premium ever since its registration in 1998. • Differentiation of products can lead to: – Increase in prices of the protected products – Allows genuine producers to capture the rents, entry barriers for “fakes” • More Antiguan Coffee and Darjeeling Tea sold than produced - shows large market for genuine products. • Issue is whether the framework is appropriate for developing countries.
  • 79. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 79 India’s famous GIs • Banarasi silks • Paschmina shawls • Kashmir carpets • Basmati rice • Darjeeling tea • Assam tea • Bengal Cotton • Alphonso Mangoes • Pochampalli silk • Chanderi silk • Hyderabad pearls • Kerala Nendran bananas • Jaipur silver jewellery • Nilgiri tea • Coorg coffee • Mysore sandal products • Mysore silk • Malabar pepper • Kancheepuram silks • Lonawala chikis (food stuff) • Nilgiri tea • Coir products from Kerala • Cardamom from Kerala • Aranmula mirrors • Nagpur oranges • Phulkari embroidery work
  • 80. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 8080 Geographical Indication Product State Date of Registration Darjeeling Tea Tea West Bengal 29.10.04 Pochampally Ikat Textile Andhra Pradesh 31.12.04 Chanderi saree Textile Guna, 28.01.05 Madhya Pradesh Kotpad Handloom fabric Textile Koraput, Orissa 02.06.05 Kota Doria Textiles Kota, Rajasthan 05.07.05 Kancheepuram silk Textiles Tamil Nadu 02.06.05 Bhavani Jamakkalam Textile, carpets Erode,Tamil Nadu 05.07.05 Mysore Agarbathi Incense sticks Mysore, Karnataka 02.06.05 Aranmula Kannadi Metal Mirror Kerala 19.09.05 Salem Fabric Textiles Tamil Nadu 19.09.05 Solapur Chaddar Textiles Maharashtra 19.09.05 Solapur Terry Towel Textiles Maharashtra 19.09.05 Mysore Silk Textiles Karnataka 28.11.05 Kullu Shawl Textiles Himachal Pradesh 12.12.05 Madurai Sungudi Textiles Tamil Nadu 12.12.05 Kangra Tea Tea Himachal Pradesh 12.12.05
  • 81. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 8181 Geographical Indication Product State Date of Registration Coorg Orange Horticulture Product Karnataka 30.01.2006 Mysore Betel Leaf Horticulture Product Karnataka 30.01.2006 Nanjanagud Banana Horticulture Product Karnataka 30.01.2006 Mysore Sandalwood Oil Essential Oil Karnataka 30.01.2006 Mysore Sandal Soap Soap Karnataka 30.01.2006 Bidriware Handicrafts Karnataka 30.01.2006 Channapatna Toys and Dolls Handicrafts Karnataka 30.01.2006 Coimbatore Wet Grinder Wet Grinder Tamil Nadu 30.01.2006 Mysore Rosewood Inlay Handicrafts Karnataka 30.01.2006 Kasuti Embroidery Embroidery (Textiles) Karnataka 30.01.2006 Mysore Traditional Paintings Paintings Karnataka 30.01.2006
  • 82. GOODS • Agricultural • Natural • Manufactured goods • Goods of Handicrafts • (or) • Industry • Food Stuffs - Section (2) (1) (f) of G.I. Act 1999.
  • 83. Goods I. Agricultural Tea : Darjeeling, Assam, Nilgiri & Kangra Coffee : Monsooned Coffee Rice : Basmati, Nellore, Sona masuri. Wheat : Punjab, Madhya pradesh. Fruits : Alphonso, Banganapalli. Vegetable: Bangalore Brinjals. Spice : Malabar Pepper.
  • 84. Goods II. Natural Kolar gold Illmanite and Monosite of Kerala Goa Iron ore Kota Stone Cuddappa Stone Neyveli Lignite
  • 85. III. Manufactured Goods III(a). Textiles Pochampally Ikat, Kasuti Embroidery, Mysore Silk, Bhavani Jamakalam, Kanchipuram Silk, Kota Doria, Chanderi Saree, Solapur Chaddar, Solapur Terry Towel, Kullu Shawl, Kotpad Handloom Fabric, Madurai Sungudi, Phulkari Embroidery
  • 86. III(b). Handicrafts • Aranmula Kannadi. • Bidari Ware. • Chanapattna Toys. • Malabar Hukka • Tanjore Dolls • Tanjore Plates • Tanjore Paintings • Tanjore Veena
  • 87. Food Stuffs • Bikaneri Bhujiya. • Andhra Pickles. • Calicut Halwa. • Tirunelveli Halwa. • Agra Peta. • Kolkatta Rasagulla
  • 88. Why the need for an International registration of GIs • Legal certainty for producers • Protection of consumers against misleading advertising But also… • … protection of traditional knowledge and local know-how • … protection of a key development tool
  • 89. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 89 Case of Basmati Rice • Bas – Aroma, Basmati – Aromatic Rice • Production area – belt on Northern India and adjacent part of Pakistan • Unique Characteristics – long grain (increases substantially on cooking), distinctive aroma and taste. • Efforts to usurp the GI • Case for joint registration – India and Pakistan.
  • 90. Who Can Register? Any association of persons or producers or any organization or authority established by or under law representing the interest of producers of the concerned goods
  • 91. BENEFITS OF GEOGRAPHICAL INDICATION • It confers legal protection to geographical indications in India. • It prevents unauthorised use of a registered geographical indication by others. • It boosts exports of Indian geographical indications by providing legal protection. • It promotes economic prosperity of producers. • It enables seeking legal protection in other WTO member countries.
  • 92. 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 92 Conclusion • New (knowledge) Economy rewards those enterprises that are creative, innovative and understand the importance of the market for ideas • The IP system provides the formal framework for protecting their knowledge, creativity & innovation • To maximize the potential provided the IP system one has to think beyond exclusive rights to IP assets • IP offices, Chambers and other support institutions have an important role to assist
  • 93. Rights & Marks - Services & Expertise at glance We offer the complete gamut of legal services with five branch offices in prime cities of India having its head office located in Chennai and as well branches at overseas in UK, UAE and USA. As a full-service law firm, we have significant award-winning practices in services of Trademarks and Brand Protection & Creation Copyrights Patents Industrial Designs IP valuation & IP Audit and IP Watch IP Enforcement & Technology Transfer Agreements Other law services viz., Franchise & Joint venture Agreements, Contract Drafting and Reviewing services, Corporate Law, Litigation and Arbitration, Mergers and Acquisitions, Leveraged and Acquisition Finance, Securities Enforcement and Tax, Banking and Financial Institutions, Private Equity, Real Estate, Insurance and Litigation.2/21/2017 © Copyright 2015, Rights & Marks, Chennai 93
  • 94. Rights & Marks – Global Awards 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 94
  • 95. Hyderabad Mr. V.Rajesh General Manager Mob : 93477 61242 2/21/2017 © Copyright 2015, Rights & Marks, Chennai 95 Contact for More Details Corporate Head Office Pandu Klix Plaza, Suite no.27 C&D, No.330/168, Thambu Chetty street, Chennai-600 001. Phone : (044) 43445353, Mob: 07358044457 Email ID: info@rightsandmarks.org Web: www.rightsandmarks.org Bangalore Ms. Uma Branch Manager Mob :9379150966 Franchises in India Coimbatore Mr. Jayakumar Branch Manager Mob :99444 00083 Overseas Offices U.K. U.S.A. U.A.E.