TRADEMARK
Intellectual Property Rights
Name- Reshabh
Roll No. - 3312
Submitted to :
Dr.Shweta Rastogi
WHAT IS TRADEMARK ?
• A special symbol,design or name that a company puts on its products and that cannot be used by any
other company.Something that a person or company has or does that makes them easy to notice or
recognize
• A trademark can be composed of logos,images,words,short phrases,colours or even a compound of all
of these. The most commonly used are words and pictures however,other distinguishable marks may also
be used if they are capable of graphical representation.For instance Louis Vuitton,the famous luxury brand
has obtained a trademark for its check pattern which is known as the Damier Pattern,the infamous
confectionery brand Cadbury has the colour purple trademarked for its chocolates even though trademark
for a single colour is very hard to obtain. And Coca-Cola has a trademark for its bottle's design.Some more
examples of trademarks are DETTOL,ROLEX,NESTLE,SUN PHARMA,THEOBROMA,MONT BLANC
etc.
EXAMPLES
• 1.The McDonald's® golden arches design is an
example of a registered trademark in special form
format.
• 2.The company Nike registered this trademark
in special form format,combining the stylized
word Nike® with their swoosh logo.
HISTORY
OF TM
The first legislative act concerning trademarks was passed in 1266 under
the reign of Henry III, requiring all bakers to use a distinctive mark for
the bread they sold. The first modern trademark laws emerged in the late
19th century. In France, the first comprehensive trademark system in the
world was passed into law in 1857.The Trade Marks Act 1938 of the
United Kingdom changed the system, permitting registration based on
"intent-to-use", creating an examination based process, and creating an
application publication system. The 1938 Act, which served as a model
for similar legislation elsewhere, contained other novel concepts such as
"associated trademarks", a consent to use the system, a defensive mark
system, and a non-claiming right system.
The symbols ™ (the trademark symbol) and ® (the registered trademark
symbol) can be used to indicate trademarks; the latter is only for use by
the owner of a trademark that has been registered.
India borrowed the British Trademark Act, 1938 and prepared the first
Act on the subject as Trademark Act of 1940.Independent India molded
the Trade & Merchandise Mark Act, 1958.The Act is now operative as
Trademark Act, 1999 which came into force with effect from 30th day of
December 1999.
TRADEMARK 4
FIRST TRADEMARK
A design mark with an eagle and a ribbon and the
words "Economical, Beautiful, and Durable" was the
first registered trademark, filed by the Averill Chemical
Paint Company on 30 August 1870 under the
Trademark Act of 1870.
TRADEMARK 5
ACTS AND LAWS RELEVANT TO TM
ACT NO. 43 OF 1958 [ 17th October,58.] An Act provide for the registration and better protection of
trademarks and for the prevention of the use of fraudulent marks on merchandise.
The Trade Marks Act, 1999 [ Enforced on 15-09-2003]
An Act to amend and consolidate the law relating to trade marks, to provide for registration and better
protection of trade marks for goods and services and for the prevention of the use of fraudulent marks.
Section 9 of Trademark Act
Provided that a trade mark shall not be refused registration if before the date of application for registration
it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.
CATEGORIES OF
TRADEMARK
1. Arbitrary and Fanciful
Trademarks
2. Suggestive Trademarks
3.Descriptive Trademarks
ARBITRARY AND FANCIFUL TRADEMARKS
The strongest trademarks are those that are not in any way connected
to the products they’re used on. While arbitrary marks fall beneath
fanciful ones on the distinctiveness spectrum, the difference is, for all
intent and purposes, cosmetic. Fanciful trademarks are usually terms
specifically coined for the purpose of creating a trademark, such as
Kodak. Arbitrary marks are existing words or designs used out of
context to represent a certain brand,service or item, such as Apple
(electronics and software) or Shell (oil industry). The former are
usually treated as stronger than the latter, but remain comparable.
SUGGESTIVE TRADEMARKS
A step below arbitrary and fanciful, suggestive trademarks are
designed to stimulate the imagination of the consumer and assign a
particular characteristic to the product. For example, Jaguar and
Greyhound are both brands related to automobiles, designed to
impart the characteristics of the animals onto the product. Suggestive
marks are less distinctive, but can still be registered, though with a
lesser enforceability of trademark rights. Since nearly any two terms
can be combined, this category offers plenty of examples to answer
the question “What is a trademark?”
DESCRIPTIVE TRADEMARKS
At the bottom of the trademark food chain dangle descriptive
trademarks. These directly describe the goods and services, and are
generally considered as ineligible for trademarking. The reason is
simple. A Candy Coated Apples trademark could be used against
competitors offering candy coated apples, greatly limiting the
competition. An exception can be granted if the trademark ceased to
be associated with a particular product and became associated with
the company that produces the product. In effect, it then becomes a
suggestive or arbitrary trademark.
TYPES OF TRADEMARK
A TRADEMARK MAY BE DIVIDED INTO THE FOLLOWING CATEGORIES:
TRADEMARK 11
Word marks: They may be words, letters or numerals. Eg: COCO CHANEL and APPLE
Device marks: These marks consist of exclusive representation of a word, letter or numerical. Eg: The way in
which AMAZON is written or EBAY is written.
Figurative marks / logos: They consist of a figure or a logo. Eg: The YELLOW M of Mc Donlads or the
SWOOSH sign of Nike.
Service Marks: A service mark basically differentiatesthe services (and not goods) of one person from that of
another.Eg: The name UNITED AIRLINES, the FLY THE FRIENDLY SKIES tagline, and the logo of a world
map are service marks. This is because United provides a service: airline flights around the world.
.
• Collective Marks: Marks being used by a group of companies. The owner of such marks may be an
association or public institution or cooperative.Eg: CA used by the Institute of Chartered Accountants and
the mark CPA, to indicate members of the Society of Certified Public Accountants.
• Certification Marks: Certification marks are used to define standards. They assure the consumers that the
product meets certain prescribed standards. Eg: ISI mark and FSSAI mark.
• Well-known marks: When a mark is easily recognised among a large percentage of the population it
achieves the status of a well-known mark. Example: ROLEX, CARTIER, FERRARI.
• Unconventional Trademarks: Unconventional trademarks are those trademarks which get recognition for
their inherently distinctive feature:
• Colour Trademark: Purple colour trademark of Cadbury Chocolates
• Sound Marks: A well-known sound trademark is the Hemglass ice cream van jingle.
• Shape Marks (3D marks): The coca cola bottle.
• Smell Marks: Brazilian footwear company Grendene successfully trademarked their line of bubble gum-
scented jelly sandals in June,2015
TRADEMARK 12
DESIGNATION OF TM SYMBOLS
• TM stands for trademark. The TM symbol (often seen in superscript like this: TM) is usually
used in connection with an unregistered mark—a term, slogan, logo, or other indicator—to
provide notice to potential infringers that common law rights in the mark are claimed.
• SM stands for service mark (often seen in superscript like this: SM). It functions similarly to
the TM symbol, in that it is used to provide notice of a claim of common law rights in a
mark, but it is used in connection with a service. A service mark covers services, such as
banking or legal services, rather than tangible goods
• The symbol ® is a notice of registered trademark ownership. It is used to advise the public
that a trademark or service mark is registered, providing notice of the legal ownership status
of the mark with which it is used. The ® symbol should be used only in connection with
registered trademarks or service marks.
Presentation title 13
REGISTRATION OF TRADEMARK
• On filing a Trademark application, the registry issues an official receipt that has the filing date
and application number.Then the Indian TrademarksOffice examines the application, as to
ensure it can be registered under the Trademarks Act and if any objection to registration is raised,
registry issues an examination report to the applicant. The applicant is then required to file a
written response or is required to give evidence of acquired distinctiveness and thereafter a
hearing with the examiner is posted.
• If post examination and hearing,the registrar is of the view that the trademark can be allowed,
Letter of Acceptance is issued to the applicant after which the trademark is published in the
Trademark Journal. Post publication, it is open for opposition for 4 months from date of
publication. If no objection is raised in these 4 months, certificate is issued and in case of
objection, both parties are given opportunities to be heard.
• Trademark Registration is a tedious process and it usually takes around 18-24 months to acquire
registration in cases with no objections or oppositions.
• Once the trademark is registered, it is valid for a period of 10 years from the date of application.
The registration can then be renewed indefinitely as long as the renewal fees are paid every 10
years.
TRADEMARK 14
ELIGIBILITY
Who is eligible to apply for trademark registration?
Any individual or organization can apply for trademark to protect their
product or service. The application has to be filed mentioning the
trademark, name and address of the applicant along with the agent and
Power of Attorney.
TRADEMARK 15
FOLLOWING ENTITIES IN INDIA ARE APPLICABLE TO DO A
TRADEMARK REGISTRATION:
TRADEMARK
1.Joint owners:
The Joint owners of a company together can file for a trademark and both their names have to be mentioned
in the application.
2.Proprietorship firm:
One of the simplest business forms with respect to cost, level of maintenance and set up,a sole proprietorship
firm is not a separate legal entity and the person who runs the business is solely responsible for its debts.
Hence,a proprietorship company can file a trademark application under the name of its proprietor but
not under the business name and proprietorshipname.If a proprietorship name and business name are
included in the application,then those details will be considered separately.
3.Partnership firm:
Governed by the Indian Partnership Act,a partnership firm is formed when two or more individuals run a
business together as partners with the aim of gaining profits which are equally shared or as mentioned in
their agreements.While registering for a trademark,a partnership company has to mention all the names
of the partners in the application,with the maximum number being 10.If there is a minor partner,then
the name of the minor’s guardian has to be mentioned.
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4. Limited Liability Partnership or LLP:
As LLP companies are incorporated on their own identities,this type of companies can file
for trademark registration under the respectiveLLP’s name. However,the partners
themselves cannot be applicants.
5. Indian company:
For any Indian company whether private limited or limited or any other type,the trademark
application has to be made in the company’s name. It is to be noted that any incorporated
entity has its own identity due to which a director of a company cannot be a trademark
applicant.
6. Society or trust:
Organizations that are created with the aim of social service rather than profits fall under
Trust or Society.It is called a Trust if it is formed based on a legal agreement in which a
beneficiaryholds the property and nominates trustees to control the assets and
operations.It may be registered as a Society if there more persons coming together to
fulfil a particular purpose.
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TRADEMARK
Both Trust and Society can do trademark registration, provided it is done on
behalf of the Trust or Society and the names of Chairman, Managing
Trustee and Secretary are mentioned in the application.
7. An individual or a person:
Any individual who wants to register their unique words or symbols are
eligible to file for trademark registration under their own names. However,
it is not necessary that they have to do business.
Only the entities who have their trademarks registered can create, establish
and protect their goods, services and products thereby stopping other
unlawful use of their mark.
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THE CENTRAL RATIONALE FOR TRADEMARK PROTECTION IS AND OUGHT TO BE THE
NEED OF BUSINESSES TO PROTECT THEIR BRAND VALUE RATHER THAN THE PUBLIC
INTEREST.
TRADEMARK
It has been misunderstood for years that trademark law was intended to protect the interests of
consumers and improve the quality of information available at the marketplace.However, since the
time of its inception, trademarks served the only purpose of indicating the commercial origin of
services or goods at any given place (McKenna 2007). Public interest always played only a secondary
role, even in traditional trademark law as can be seen from the numerousjudgments where the courts
denied relief though there was clear evidence that consumers were not likely to be deceived
(McKenna 2007).
With the functionality of innovation comes the reason to safeguard such innovation and this is the
objective that drives business organizations to register their trademarks.In the following sections the
importance of brand merchandise and the various reasons that drive businesses to protect their
trademark is established and reviewed in detail. It is also established that businesses through centuries
have always wanted to protect their brand image and with advancement in technology there has been
no subversion of public interests, which always played a secondary role. This paper looks into the
various aspects of trademark law that have been established over the years and asserts the importance
of brand value protection that has turned into the core functionality of trademark law. Finally this
paper concludes by establishing the various economic implications of trademark protection and how
the current law is shaping through legislations and judgments around the world.
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WHO GIVES TM IN INDIA?
• The Trade Marks Registry was established in India in 1940 and presently it administers the
Trade Marks Act, 1999 and the rules made thereunder. It acts as a resource and information
Centre and is a facilitator in matters relating to trademarks in the country.
• The objective of the Trade Marks Act, 1999 is to register trademarks applied for in the
country and to provide for better protection of trademark for goods and services and also to
prevent fraudulent use of the mark.
• The main function of the Registry is to register trademarks which qualify for registration as
per provisions of the Trade Marks Act and Rules, and to maintain the Register of
trademarks.
• After accession to the Madrid Protocol, a treaty under the Madrid System for international
registration of trademarks, the Trade Marks Registry also functions as an office of origin in
respect of applications made by Indian entrepreneurs for international registration of their
trademarks and as an office of the designated Contracting party in respect of international
registrations in which India has been designated for protection of the relevant trademarks.
TRADEMARK 20
.
• The Head Office of the Trade Marks Registry is at Mumbai and branch offices are at
Ahmedabad,Chennai,Delhi and Kolkata.For the purposes functions related to
internationalapplicationsand registrations under the Madrid Protocol,an
International Registrationwing is set up in the Head Officeof the Trade Marks
Registry at Mumbai.
• The Controller General of Patents,Designs and Trade Marks heads the TRADE
MARKS Registryoffices and functions as the Registrarof TRADE MARKS.He, from
time to time, assigns functionsof the Registrarto other officers appointed by the
Central Government and such officers also function as Registrarin respect of matters
assigned to them.
• Presently all the functions of the Trade Marks Registryare performed through an
automated Trade Marks System.The Central Server of TMR is at Intellectual Property
Office(IPO) Building in Delhi and DisasterRecovery server is at IPO,Mumbai.All
branches of the Trade Marks Registryare connected to the main server in Delhi with
Virtual PrivateNetwork (VPN).All the actions done by the officestaffs through the
TMS are recorded in the central server on real time basis.
TRADEMARK 21
BENEFITS OF TM
TRADEMARK
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Exclusive Rights: Registered trademark owners enjoy exclusive rights over the trademark. The owner can use the same for
all the products falling under the class(es) applied. Further, the owner can enjoy exclusive ownership of the Trademark.
A registered trademark gives you an exclusive right to take legal action against a party who attempts to violate your right by
making unauthorized use of your trademark.
Builds Trust and Goodwill: Other benefits of having a trademark are that it helps in the establishment of trust and
goodwill in a brand. The established quality of your product and services is known by everyone through the trademark.
The trust and goodwill in a brand increase when it becomes popular among consumers. It helps in creating permanent
customers who are loyal and always opt for the same brand.
Differentiates Product: The purpose of a trademark is to have a distinguished brand identity. This is also one of the benefits
of a trademark. This means, that a unique brand identity creates a brand appeal and attracts relevant consumer markets
to buy a product. It gets easier to market or commercialize a product with a unique brand identity which is in line with
the market requirements. It creates a unique identity for you among the competitors. The brand identity lets you
communicate your vision, quality and various other features of your product as well as the business enterprise.
TRADEMARK
Recognitionto Product’s Quality: It gives recognitionto the quality of the product.
Customers attach the product’s quality with the brand name and this image is created in
the market about the quality of a particularbrand which helps in attracting new
customers as they can differentiatethe quality of a product by the logo/brand name.
Creation of Asset: Trademark is intellectual property.Having a trademark is an asset.A
registered trademark is a right created which can be sold,assigned,franchised or
commercially contracted.
Use of ® Symbol: Once the trademark is registered you can use the ® symbol on your logo
stating that it is a registered trademark and no one can use the same trademark.If a third
party violates your registered trademark then you have a right to bring legal action against
the infringer.
Protection For 10 Years at Low Cost: OnlineTrademark registration is done at a very low
maintainabilitycost.Once you registerthe trademark you have to just pay the renewal cost
and the same is to be paid every ten years of registeringthe trademark.It is cost-efficient
and helps your company create a unique image.
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STATISTICS
Trademark statistics from
January 1st,2021 to December
30th,2021
TRADEMARK 24
Particulars No. Of Applications
Total ordinary publications 658
Total grants in Mumbai 83
Total grants in Kolkata 98
Total grants in Delhi 217
Total grants in Chennai 267
Total Grants 665
Total early Publications 387
Total applicationspublished 1045
Total applicationsexamined 913
YEARLY TRADEMARK
STATISTICS – A
COMPARISON
25
Particulars Total No. Of
Applications
Total applications published
52379
Total Patents granted
30431
Total applications examined
67727
Total applications refused 5599
Total applications abandoned due
to failure to respond to
examination report ( s. 21[1] )
5289
As we can see from the table, there
has been an increase of 13.78% in
the total number of new trademark
applications filed in the year 2021 as
compared to 2020. However, there
has been a remarkable increase of
40.80% in the total registrations
granted in the year 2021 as
compared to 2020.
ASSOCIATED TRADEMARKS
The Trademarks Act 1999 provides for various provisions dealing with associated
trademarks. The definition of an associated trademark is given in section 2(1)(c) of the
Trademarks Act 1999 which reads as follows-
“associated trademarks” means trademarks deemed to be or required to be, registered
as associated trademarks under this Act.
”
Further, Section 2 (3) provides that
“for the purpose of this Act, goods and services are associated with each other if it is likely
that those goods might be sold or otherwise traded in and those services might be
provided by the same business and so with description of goods and description of
services”
TRADEMARK 26
JOINT TRADEMARK
Coming together of 2 entities or businesses to act as the owner of a brand name either under
a Joint Agreement signed between the parties or to share and act based on the services provided
by them in respect of the goods traded under the brand.They can be called Joint Owners of the
Brand name and can file the application as Joint Applicantwith Trademark Registry for the Brand
name. Section 24 of the Trademarks Act,1999 says – Joint ownership of a trademark is a mutual
agreement between both the entities/partiesto hold the mark together, but neither of them shall
be said to be the absolute owner of the mark and the then registered trademark shall be registered
in favour of both the parties,held together.
During the filing of a Joint application for Trademark Registration,either of the applicants
should have a business registered in India,which is called a Principal place of business in India as
per the Act.In case there is no principal place of business in India with either of the applicants,it
would be compulsory for them to have their serviceaddress in India.
TRADEMARK 27
WHAT IS INFRINGEMENT OF TRADEMARK?
Infringement of trademarks as per Section 29 of the Trademarks Act,1999 is defined as a
use of a mark, by an unauthorised or an authorised person or a person who is not the
registered proprietor,which is identical or deceptivelysimilar to the trademark in relation
to the goods or services in respect of which the trademark is registered.In simple words, it
is defined as the violation of exclusive rights that are attached to a registered trademark
without the permission of the registered owner or licensees.The courts have time and
again assumed that similarity of two marks and the kind of goods and services results in
causing confusion in the minds of general public.They may take an undue advantageof
enjoying the hard-earned reputation of the registered trademark.In order to have a
successfulclaim against a person infringement of trademark,what needs to be proved is
that the infringing trademark is deceptively similaror identical to the registered
trademark.
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TYPES OF TRADEMARK INFRINGEMENT IN
INDIA
1. Direct Infringement
Direct infringement is defined by Section 29 of the Trademark Act. There a few basics are to be met for a
direct infringement of Trademark; those are as follows:-
Use by an Unauthorized Person
The violation of any trademark only occurs when the mark is used by a person who is not authorized or
allowed by the owner of the registered trademark.If the mark is used with the permission of the owner of
the registered trademark,it does not comprise to Trademark infringement.
Identical or Deceptively Similar
The trademark used by the unauthorized person needs to be either identical or deceptively similar to that
of the registered trademark.The term‘deceptively similar’ means that the common buyer may be confused
between the marks and think them of being of the same brand. As long as there is a chance of
misrepresentation of the trademark,it is sufficient for proving trademark infringement.
Registered trademark
The Trademark Act only provides protection to trademark that has been registered with the Trademark
Registry of India. In the case of infringement of any unregistered mark, the common law of passing off can
be used to settle the disputes. Passing off is a Law of Tort that can be used when the injury or damage is
caused to the goodwill linked with the activities of any other person.
Presentation title 29
Class of Goods & Services
For Trademark infringement, the illegal use of the trademark has to be used for the dissemination of Goods
& Services that falls under the same class of any registered trademark.
2. Indirect Infringement
Different from direct infringement, there is no proviso in the Trademark Act that deals with indirect
infringement exclusively. This does not state that there is no legal responsibility for indirect
infringement of trademark.There are two types of indirect infringement,they are as follows-
Vicarious liability
As per Section 114 of the Trademark Act[1], if any business owner commits any offence under this provision,
then the entire company will be liable for Indirect Infringement. Those people who acted in good faith
and without knowledge of the infringement they won’t be liable for Trademark infringement.
The essentials for vicarious liability are as follows-
• The person can control the activities of the principal infringer;
• The person knows about the infringement and also contributes to the infringement of trademark;
• The person obtains any financial gains from the infringement of trademark.
The exception to vicarious liability of any company for infringement of trademark is when the company
acted in good faith and had no idea about the trademark infringement.
TRADEMARK 30
Contributory Infringement
There are three basic essentials to contributory infringement; those are as follows-
• The person knows about the infringement of trademark;
• The person considerably contributes to the direct infringement;
• The person provokes the principal infringer to commit infringement of trademark.
There is no exception in case of indirect infringement as there is no chance of the contributory infringer to
act in good faith.
Penalties for Trademark Infringement
Trademark infringement in India is a cognizable offence that means that the infringer can face civil charges
along with criminal charges. It is not mandatory as per Indian law that trademark should be registered for
the institution of civil as well as criminal proceedings.
Cost of Legal Proceedings
In case of criminal proceeding, the court orders the following punishment-
• Imprisonment for a period not less than 6 months that may extend to 3 years;
• A fine that is not less than INR 50,000 that may extend to INR two lakh.
Presentation title 31
REMEDIES FOR TRADEMARK INFRINGEMENT IN
INDIA
The Registered Trademark owner can initiate legal proceedings against the infringer declaring the unfair
business practices that he carried on.
There are two types of remedies available to the trademark owner against any unauthorized use of trademark by
any third party. The Trademark Act defends the trademark with criminal & civil remedies. Civil dealings can
be initiated by the trademark owner before the District Court as per the jurisdiction.
Civil Remedies for Trademark Infringement
The civil remedies for Trademark infringement in India are as follows-
Presentation title 32
Injunction
Injunction can be referred as prohibition of one person from doing specific activity or task through the
judicial proceedings. With respect to trademark infringement in India, it is preventing a person from
unauthorized use of trademark. By a temporary or permanent stay order, the Court can grants protection to
the trademark owner.
Damages
Damage refers to the recovery of any loss faced by the trademark owner by trademark infringement. The
fiscal value of loss or brand injury is recovered under Damages. The amount of damages will be decided by
the court after considering the actual and predictable loss of owner due to Trademark infringement.
Conclusion
In India, the knowledge to protect the brand name through trademark registration is increasing. Though, the
owners are still inert about the unauthorized usage of their registered trademark. Violation of the right over
trademark can happen internally in an organization that affects the brand name as well as the market share
in the business of the owner. With the help of Corpbiz, one may recover and compensate all the damages
occurred due to Trademark infringement in India.
Presentation title 33
CHARACTER MERCHANDISING
‘Trademark Merchandising’ is more popularly known as ‘Character
Merchandising,’ which is the second adaptation of a fictional or non-fictional
character by using them concerning goods and services to gain prospective
customers due to such close affinity. Often, the creator of the character is not the
proprietor of goods and services; instead, a contractual agreement plays a much
vital role in this regard. Consider the examples as mentioned here below:
• A 3D reproduction of Bumble- Bee from the movie Transformers in the form
of a toy
• An advertisement for an energy drink by Lionel Messi from FC Barcelona
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For commercial commotion, it is necessary to attract consumers and generate awareness of the products. With
character merchandising, dual benefits are met. The audience either recognizes the goods or services originating
from a particular manufacturer, creating the excitement of the product, or draws closer to the cartoon, film,
character, or serial, creating greater inclination for the same. Either kind of interest is a mode of mutually
nurturing both the endeavors, i.e., that of the proprietor of such creative rights or that of the manufacturer or
provider of goods or services.
As noted above, merchandising of goods often depends on the negotiation of a contract of license. By such
virtue, there is a certain degree of royalty to which the proprietor of creative works is entitled. The money raised
thereof is an additional benefit to the pocket of the proprietor. Another benefit is that the licensor
has Trademark Protection that prevents others from exploiting his logos or characters.
It also enables a certain degree of quality control as to who uses the registered, licensed mark concerning the
goods and services and the quality thereof. The licensor can set limitations and qualitative requirements required
to make use of the mark within the stipulated contract itself.
Presentation title 35
ADVANTAGES OF CHARACTER MERCHANDISING
.
THANK YOU

Trademark_3312.pdf

  • 1.
    TRADEMARK Intellectual Property Rights Name-Reshabh Roll No. - 3312 Submitted to : Dr.Shweta Rastogi
  • 2.
    WHAT IS TRADEMARK? • A special symbol,design or name that a company puts on its products and that cannot be used by any other company.Something that a person or company has or does that makes them easy to notice or recognize • A trademark can be composed of logos,images,words,short phrases,colours or even a compound of all of these. The most commonly used are words and pictures however,other distinguishable marks may also be used if they are capable of graphical representation.For instance Louis Vuitton,the famous luxury brand has obtained a trademark for its check pattern which is known as the Damier Pattern,the infamous confectionery brand Cadbury has the colour purple trademarked for its chocolates even though trademark for a single colour is very hard to obtain. And Coca-Cola has a trademark for its bottle's design.Some more examples of trademarks are DETTOL,ROLEX,NESTLE,SUN PHARMA,THEOBROMA,MONT BLANC etc.
  • 3.
    EXAMPLES • 1.The McDonald's®golden arches design is an example of a registered trademark in special form format. • 2.The company Nike registered this trademark in special form format,combining the stylized word Nike® with their swoosh logo.
  • 4.
    HISTORY OF TM The firstlegislative act concerning trademarks was passed in 1266 under the reign of Henry III, requiring all bakers to use a distinctive mark for the bread they sold. The first modern trademark laws emerged in the late 19th century. In France, the first comprehensive trademark system in the world was passed into law in 1857.The Trade Marks Act 1938 of the United Kingdom changed the system, permitting registration based on "intent-to-use", creating an examination based process, and creating an application publication system. The 1938 Act, which served as a model for similar legislation elsewhere, contained other novel concepts such as "associated trademarks", a consent to use the system, a defensive mark system, and a non-claiming right system. The symbols ™ (the trademark symbol) and ® (the registered trademark symbol) can be used to indicate trademarks; the latter is only for use by the owner of a trademark that has been registered. India borrowed the British Trademark Act, 1938 and prepared the first Act on the subject as Trademark Act of 1940.Independent India molded the Trade & Merchandise Mark Act, 1958.The Act is now operative as Trademark Act, 1999 which came into force with effect from 30th day of December 1999. TRADEMARK 4
  • 5.
    FIRST TRADEMARK A designmark with an eagle and a ribbon and the words "Economical, Beautiful, and Durable" was the first registered trademark, filed by the Averill Chemical Paint Company on 30 August 1870 under the Trademark Act of 1870. TRADEMARK 5
  • 6.
    ACTS AND LAWSRELEVANT TO TM ACT NO. 43 OF 1958 [ 17th October,58.] An Act provide for the registration and better protection of trademarks and for the prevention of the use of fraudulent marks on merchandise. The Trade Marks Act, 1999 [ Enforced on 15-09-2003] An Act to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks. Section 9 of Trademark Act Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.
  • 7.
    CATEGORIES OF TRADEMARK 1. Arbitraryand Fanciful Trademarks 2. Suggestive Trademarks 3.Descriptive Trademarks
  • 8.
    ARBITRARY AND FANCIFULTRADEMARKS The strongest trademarks are those that are not in any way connected to the products they’re used on. While arbitrary marks fall beneath fanciful ones on the distinctiveness spectrum, the difference is, for all intent and purposes, cosmetic. Fanciful trademarks are usually terms specifically coined for the purpose of creating a trademark, such as Kodak. Arbitrary marks are existing words or designs used out of context to represent a certain brand,service or item, such as Apple (electronics and software) or Shell (oil industry). The former are usually treated as stronger than the latter, but remain comparable.
  • 9.
    SUGGESTIVE TRADEMARKS A stepbelow arbitrary and fanciful, suggestive trademarks are designed to stimulate the imagination of the consumer and assign a particular characteristic to the product. For example, Jaguar and Greyhound are both brands related to automobiles, designed to impart the characteristics of the animals onto the product. Suggestive marks are less distinctive, but can still be registered, though with a lesser enforceability of trademark rights. Since nearly any two terms can be combined, this category offers plenty of examples to answer the question “What is a trademark?”
  • 10.
    DESCRIPTIVE TRADEMARKS At thebottom of the trademark food chain dangle descriptive trademarks. These directly describe the goods and services, and are generally considered as ineligible for trademarking. The reason is simple. A Candy Coated Apples trademark could be used against competitors offering candy coated apples, greatly limiting the competition. An exception can be granted if the trademark ceased to be associated with a particular product and became associated with the company that produces the product. In effect, it then becomes a suggestive or arbitrary trademark.
  • 11.
    TYPES OF TRADEMARK ATRADEMARK MAY BE DIVIDED INTO THE FOLLOWING CATEGORIES: TRADEMARK 11 Word marks: They may be words, letters or numerals. Eg: COCO CHANEL and APPLE Device marks: These marks consist of exclusive representation of a word, letter or numerical. Eg: The way in which AMAZON is written or EBAY is written. Figurative marks / logos: They consist of a figure or a logo. Eg: The YELLOW M of Mc Donlads or the SWOOSH sign of Nike. Service Marks: A service mark basically differentiatesthe services (and not goods) of one person from that of another.Eg: The name UNITED AIRLINES, the FLY THE FRIENDLY SKIES tagline, and the logo of a world map are service marks. This is because United provides a service: airline flights around the world.
  • 12.
    . • Collective Marks:Marks being used by a group of companies. The owner of such marks may be an association or public institution or cooperative.Eg: CA used by the Institute of Chartered Accountants and the mark CPA, to indicate members of the Society of Certified Public Accountants. • Certification Marks: Certification marks are used to define standards. They assure the consumers that the product meets certain prescribed standards. Eg: ISI mark and FSSAI mark. • Well-known marks: When a mark is easily recognised among a large percentage of the population it achieves the status of a well-known mark. Example: ROLEX, CARTIER, FERRARI. • Unconventional Trademarks: Unconventional trademarks are those trademarks which get recognition for their inherently distinctive feature: • Colour Trademark: Purple colour trademark of Cadbury Chocolates • Sound Marks: A well-known sound trademark is the Hemglass ice cream van jingle. • Shape Marks (3D marks): The coca cola bottle. • Smell Marks: Brazilian footwear company Grendene successfully trademarked their line of bubble gum- scented jelly sandals in June,2015 TRADEMARK 12
  • 13.
    DESIGNATION OF TMSYMBOLS • TM stands for trademark. The TM symbol (often seen in superscript like this: TM) is usually used in connection with an unregistered mark—a term, slogan, logo, or other indicator—to provide notice to potential infringers that common law rights in the mark are claimed. • SM stands for service mark (often seen in superscript like this: SM). It functions similarly to the TM symbol, in that it is used to provide notice of a claim of common law rights in a mark, but it is used in connection with a service. A service mark covers services, such as banking or legal services, rather than tangible goods • The symbol ® is a notice of registered trademark ownership. It is used to advise the public that a trademark or service mark is registered, providing notice of the legal ownership status of the mark with which it is used. The ® symbol should be used only in connection with registered trademarks or service marks. Presentation title 13
  • 14.
    REGISTRATION OF TRADEMARK •On filing a Trademark application, the registry issues an official receipt that has the filing date and application number.Then the Indian TrademarksOffice examines the application, as to ensure it can be registered under the Trademarks Act and if any objection to registration is raised, registry issues an examination report to the applicant. The applicant is then required to file a written response or is required to give evidence of acquired distinctiveness and thereafter a hearing with the examiner is posted. • If post examination and hearing,the registrar is of the view that the trademark can be allowed, Letter of Acceptance is issued to the applicant after which the trademark is published in the Trademark Journal. Post publication, it is open for opposition for 4 months from date of publication. If no objection is raised in these 4 months, certificate is issued and in case of objection, both parties are given opportunities to be heard. • Trademark Registration is a tedious process and it usually takes around 18-24 months to acquire registration in cases with no objections or oppositions. • Once the trademark is registered, it is valid for a period of 10 years from the date of application. The registration can then be renewed indefinitely as long as the renewal fees are paid every 10 years. TRADEMARK 14
  • 15.
    ELIGIBILITY Who is eligibleto apply for trademark registration? Any individual or organization can apply for trademark to protect their product or service. The application has to be filed mentioning the trademark, name and address of the applicant along with the agent and Power of Attorney. TRADEMARK 15
  • 16.
    FOLLOWING ENTITIES ININDIA ARE APPLICABLE TO DO A TRADEMARK REGISTRATION: TRADEMARK 1.Joint owners: The Joint owners of a company together can file for a trademark and both their names have to be mentioned in the application. 2.Proprietorship firm: One of the simplest business forms with respect to cost, level of maintenance and set up,a sole proprietorship firm is not a separate legal entity and the person who runs the business is solely responsible for its debts. Hence,a proprietorship company can file a trademark application under the name of its proprietor but not under the business name and proprietorshipname.If a proprietorship name and business name are included in the application,then those details will be considered separately. 3.Partnership firm: Governed by the Indian Partnership Act,a partnership firm is formed when two or more individuals run a business together as partners with the aim of gaining profits which are equally shared or as mentioned in their agreements.While registering for a trademark,a partnership company has to mention all the names of the partners in the application,with the maximum number being 10.If there is a minor partner,then the name of the minor’s guardian has to be mentioned. 16
  • 17.
    4. Limited LiabilityPartnership or LLP: As LLP companies are incorporated on their own identities,this type of companies can file for trademark registration under the respectiveLLP’s name. However,the partners themselves cannot be applicants. 5. Indian company: For any Indian company whether private limited or limited or any other type,the trademark application has to be made in the company’s name. It is to be noted that any incorporated entity has its own identity due to which a director of a company cannot be a trademark applicant. 6. Society or trust: Organizations that are created with the aim of social service rather than profits fall under Trust or Society.It is called a Trust if it is formed based on a legal agreement in which a beneficiaryholds the property and nominates trustees to control the assets and operations.It may be registered as a Society if there more persons coming together to fulfil a particular purpose. 17
  • 18.
    TRADEMARK Both Trust andSociety can do trademark registration, provided it is done on behalf of the Trust or Society and the names of Chairman, Managing Trustee and Secretary are mentioned in the application. 7. An individual or a person: Any individual who wants to register their unique words or symbols are eligible to file for trademark registration under their own names. However, it is not necessary that they have to do business. Only the entities who have their trademarks registered can create, establish and protect their goods, services and products thereby stopping other unlawful use of their mark. 18
  • 19.
    THE CENTRAL RATIONALEFOR TRADEMARK PROTECTION IS AND OUGHT TO BE THE NEED OF BUSINESSES TO PROTECT THEIR BRAND VALUE RATHER THAN THE PUBLIC INTEREST. TRADEMARK It has been misunderstood for years that trademark law was intended to protect the interests of consumers and improve the quality of information available at the marketplace.However, since the time of its inception, trademarks served the only purpose of indicating the commercial origin of services or goods at any given place (McKenna 2007). Public interest always played only a secondary role, even in traditional trademark law as can be seen from the numerousjudgments where the courts denied relief though there was clear evidence that consumers were not likely to be deceived (McKenna 2007). With the functionality of innovation comes the reason to safeguard such innovation and this is the objective that drives business organizations to register their trademarks.In the following sections the importance of brand merchandise and the various reasons that drive businesses to protect their trademark is established and reviewed in detail. It is also established that businesses through centuries have always wanted to protect their brand image and with advancement in technology there has been no subversion of public interests, which always played a secondary role. This paper looks into the various aspects of trademark law that have been established over the years and asserts the importance of brand value protection that has turned into the core functionality of trademark law. Finally this paper concludes by establishing the various economic implications of trademark protection and how the current law is shaping through legislations and judgments around the world. 19
  • 20.
    WHO GIVES TMIN INDIA? • The Trade Marks Registry was established in India in 1940 and presently it administers the Trade Marks Act, 1999 and the rules made thereunder. It acts as a resource and information Centre and is a facilitator in matters relating to trademarks in the country. • The objective of the Trade Marks Act, 1999 is to register trademarks applied for in the country and to provide for better protection of trademark for goods and services and also to prevent fraudulent use of the mark. • The main function of the Registry is to register trademarks which qualify for registration as per provisions of the Trade Marks Act and Rules, and to maintain the Register of trademarks. • After accession to the Madrid Protocol, a treaty under the Madrid System for international registration of trademarks, the Trade Marks Registry also functions as an office of origin in respect of applications made by Indian entrepreneurs for international registration of their trademarks and as an office of the designated Contracting party in respect of international registrations in which India has been designated for protection of the relevant trademarks. TRADEMARK 20
  • 21.
    . • The HeadOffice of the Trade Marks Registry is at Mumbai and branch offices are at Ahmedabad,Chennai,Delhi and Kolkata.For the purposes functions related to internationalapplicationsand registrations under the Madrid Protocol,an International Registrationwing is set up in the Head Officeof the Trade Marks Registry at Mumbai. • The Controller General of Patents,Designs and Trade Marks heads the TRADE MARKS Registryoffices and functions as the Registrarof TRADE MARKS.He, from time to time, assigns functionsof the Registrarto other officers appointed by the Central Government and such officers also function as Registrarin respect of matters assigned to them. • Presently all the functions of the Trade Marks Registryare performed through an automated Trade Marks System.The Central Server of TMR is at Intellectual Property Office(IPO) Building in Delhi and DisasterRecovery server is at IPO,Mumbai.All branches of the Trade Marks Registryare connected to the main server in Delhi with Virtual PrivateNetwork (VPN).All the actions done by the officestaffs through the TMS are recorded in the central server on real time basis. TRADEMARK 21
  • 22.
    BENEFITS OF TM TRADEMARK 22 ExclusiveRights: Registered trademark owners enjoy exclusive rights over the trademark. The owner can use the same for all the products falling under the class(es) applied. Further, the owner can enjoy exclusive ownership of the Trademark. A registered trademark gives you an exclusive right to take legal action against a party who attempts to violate your right by making unauthorized use of your trademark. Builds Trust and Goodwill: Other benefits of having a trademark are that it helps in the establishment of trust and goodwill in a brand. The established quality of your product and services is known by everyone through the trademark. The trust and goodwill in a brand increase when it becomes popular among consumers. It helps in creating permanent customers who are loyal and always opt for the same brand. Differentiates Product: The purpose of a trademark is to have a distinguished brand identity. This is also one of the benefits of a trademark. This means, that a unique brand identity creates a brand appeal and attracts relevant consumer markets to buy a product. It gets easier to market or commercialize a product with a unique brand identity which is in line with the market requirements. It creates a unique identity for you among the competitors. The brand identity lets you communicate your vision, quality and various other features of your product as well as the business enterprise.
  • 23.
    TRADEMARK Recognitionto Product’s Quality:It gives recognitionto the quality of the product. Customers attach the product’s quality with the brand name and this image is created in the market about the quality of a particularbrand which helps in attracting new customers as they can differentiatethe quality of a product by the logo/brand name. Creation of Asset: Trademark is intellectual property.Having a trademark is an asset.A registered trademark is a right created which can be sold,assigned,franchised or commercially contracted. Use of ® Symbol: Once the trademark is registered you can use the ® symbol on your logo stating that it is a registered trademark and no one can use the same trademark.If a third party violates your registered trademark then you have a right to bring legal action against the infringer. Protection For 10 Years at Low Cost: OnlineTrademark registration is done at a very low maintainabilitycost.Once you registerthe trademark you have to just pay the renewal cost and the same is to be paid every ten years of registeringthe trademark.It is cost-efficient and helps your company create a unique image. 23
  • 24.
    STATISTICS Trademark statistics from January1st,2021 to December 30th,2021 TRADEMARK 24 Particulars No. Of Applications Total ordinary publications 658 Total grants in Mumbai 83 Total grants in Kolkata 98 Total grants in Delhi 217 Total grants in Chennai 267 Total Grants 665 Total early Publications 387 Total applicationspublished 1045 Total applicationsexamined 913
  • 25.
    YEARLY TRADEMARK STATISTICS –A COMPARISON 25 Particulars Total No. Of Applications Total applications published 52379 Total Patents granted 30431 Total applications examined 67727 Total applications refused 5599 Total applications abandoned due to failure to respond to examination report ( s. 21[1] ) 5289 As we can see from the table, there has been an increase of 13.78% in the total number of new trademark applications filed in the year 2021 as compared to 2020. However, there has been a remarkable increase of 40.80% in the total registrations granted in the year 2021 as compared to 2020.
  • 26.
    ASSOCIATED TRADEMARKS The TrademarksAct 1999 provides for various provisions dealing with associated trademarks. The definition of an associated trademark is given in section 2(1)(c) of the Trademarks Act 1999 which reads as follows- “associated trademarks” means trademarks deemed to be or required to be, registered as associated trademarks under this Act. ” Further, Section 2 (3) provides that “for the purpose of this Act, goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business and so with description of goods and description of services” TRADEMARK 26
  • 27.
    JOINT TRADEMARK Coming togetherof 2 entities or businesses to act as the owner of a brand name either under a Joint Agreement signed between the parties or to share and act based on the services provided by them in respect of the goods traded under the brand.They can be called Joint Owners of the Brand name and can file the application as Joint Applicantwith Trademark Registry for the Brand name. Section 24 of the Trademarks Act,1999 says – Joint ownership of a trademark is a mutual agreement between both the entities/partiesto hold the mark together, but neither of them shall be said to be the absolute owner of the mark and the then registered trademark shall be registered in favour of both the parties,held together. During the filing of a Joint application for Trademark Registration,either of the applicants should have a business registered in India,which is called a Principal place of business in India as per the Act.In case there is no principal place of business in India with either of the applicants,it would be compulsory for them to have their serviceaddress in India. TRADEMARK 27
  • 28.
    WHAT IS INFRINGEMENTOF TRADEMARK? Infringement of trademarks as per Section 29 of the Trademarks Act,1999 is defined as a use of a mark, by an unauthorised or an authorised person or a person who is not the registered proprietor,which is identical or deceptivelysimilar to the trademark in relation to the goods or services in respect of which the trademark is registered.In simple words, it is defined as the violation of exclusive rights that are attached to a registered trademark without the permission of the registered owner or licensees.The courts have time and again assumed that similarity of two marks and the kind of goods and services results in causing confusion in the minds of general public.They may take an undue advantageof enjoying the hard-earned reputation of the registered trademark.In order to have a successfulclaim against a person infringement of trademark,what needs to be proved is that the infringing trademark is deceptively similaror identical to the registered trademark. 28
  • 29.
    TYPES OF TRADEMARKINFRINGEMENT IN INDIA 1. Direct Infringement Direct infringement is defined by Section 29 of the Trademark Act. There a few basics are to be met for a direct infringement of Trademark; those are as follows:- Use by an Unauthorized Person The violation of any trademark only occurs when the mark is used by a person who is not authorized or allowed by the owner of the registered trademark.If the mark is used with the permission of the owner of the registered trademark,it does not comprise to Trademark infringement. Identical or Deceptively Similar The trademark used by the unauthorized person needs to be either identical or deceptively similar to that of the registered trademark.The term‘deceptively similar’ means that the common buyer may be confused between the marks and think them of being of the same brand. As long as there is a chance of misrepresentation of the trademark,it is sufficient for proving trademark infringement. Registered trademark The Trademark Act only provides protection to trademark that has been registered with the Trademark Registry of India. In the case of infringement of any unregistered mark, the common law of passing off can be used to settle the disputes. Passing off is a Law of Tort that can be used when the injury or damage is caused to the goodwill linked with the activities of any other person. Presentation title 29
  • 30.
    Class of Goods& Services For Trademark infringement, the illegal use of the trademark has to be used for the dissemination of Goods & Services that falls under the same class of any registered trademark. 2. Indirect Infringement Different from direct infringement, there is no proviso in the Trademark Act that deals with indirect infringement exclusively. This does not state that there is no legal responsibility for indirect infringement of trademark.There are two types of indirect infringement,they are as follows- Vicarious liability As per Section 114 of the Trademark Act[1], if any business owner commits any offence under this provision, then the entire company will be liable for Indirect Infringement. Those people who acted in good faith and without knowledge of the infringement they won’t be liable for Trademark infringement. The essentials for vicarious liability are as follows- • The person can control the activities of the principal infringer; • The person knows about the infringement and also contributes to the infringement of trademark; • The person obtains any financial gains from the infringement of trademark. The exception to vicarious liability of any company for infringement of trademark is when the company acted in good faith and had no idea about the trademark infringement. TRADEMARK 30
  • 31.
    Contributory Infringement There arethree basic essentials to contributory infringement; those are as follows- • The person knows about the infringement of trademark; • The person considerably contributes to the direct infringement; • The person provokes the principal infringer to commit infringement of trademark. There is no exception in case of indirect infringement as there is no chance of the contributory infringer to act in good faith. Penalties for Trademark Infringement Trademark infringement in India is a cognizable offence that means that the infringer can face civil charges along with criminal charges. It is not mandatory as per Indian law that trademark should be registered for the institution of civil as well as criminal proceedings. Cost of Legal Proceedings In case of criminal proceeding, the court orders the following punishment- • Imprisonment for a period not less than 6 months that may extend to 3 years; • A fine that is not less than INR 50,000 that may extend to INR two lakh. Presentation title 31
  • 32.
    REMEDIES FOR TRADEMARKINFRINGEMENT IN INDIA The Registered Trademark owner can initiate legal proceedings against the infringer declaring the unfair business practices that he carried on. There are two types of remedies available to the trademark owner against any unauthorized use of trademark by any third party. The Trademark Act defends the trademark with criminal & civil remedies. Civil dealings can be initiated by the trademark owner before the District Court as per the jurisdiction. Civil Remedies for Trademark Infringement The civil remedies for Trademark infringement in India are as follows- Presentation title 32
  • 33.
    Injunction Injunction can bereferred as prohibition of one person from doing specific activity or task through the judicial proceedings. With respect to trademark infringement in India, it is preventing a person from unauthorized use of trademark. By a temporary or permanent stay order, the Court can grants protection to the trademark owner. Damages Damage refers to the recovery of any loss faced by the trademark owner by trademark infringement. The fiscal value of loss or brand injury is recovered under Damages. The amount of damages will be decided by the court after considering the actual and predictable loss of owner due to Trademark infringement. Conclusion In India, the knowledge to protect the brand name through trademark registration is increasing. Though, the owners are still inert about the unauthorized usage of their registered trademark. Violation of the right over trademark can happen internally in an organization that affects the brand name as well as the market share in the business of the owner. With the help of Corpbiz, one may recover and compensate all the damages occurred due to Trademark infringement in India. Presentation title 33
  • 34.
    CHARACTER MERCHANDISING ‘Trademark Merchandising’is more popularly known as ‘Character Merchandising,’ which is the second adaptation of a fictional or non-fictional character by using them concerning goods and services to gain prospective customers due to such close affinity. Often, the creator of the character is not the proprietor of goods and services; instead, a contractual agreement plays a much vital role in this regard. Consider the examples as mentioned here below: • A 3D reproduction of Bumble- Bee from the movie Transformers in the form of a toy • An advertisement for an energy drink by Lionel Messi from FC Barcelona 34
  • 35.
    For commercial commotion,it is necessary to attract consumers and generate awareness of the products. With character merchandising, dual benefits are met. The audience either recognizes the goods or services originating from a particular manufacturer, creating the excitement of the product, or draws closer to the cartoon, film, character, or serial, creating greater inclination for the same. Either kind of interest is a mode of mutually nurturing both the endeavors, i.e., that of the proprietor of such creative rights or that of the manufacturer or provider of goods or services. As noted above, merchandising of goods often depends on the negotiation of a contract of license. By such virtue, there is a certain degree of royalty to which the proprietor of creative works is entitled. The money raised thereof is an additional benefit to the pocket of the proprietor. Another benefit is that the licensor has Trademark Protection that prevents others from exploiting his logos or characters. It also enables a certain degree of quality control as to who uses the registered, licensed mark concerning the goods and services and the quality thereof. The licensor can set limitations and qualitative requirements required to make use of the mark within the stipulated contract itself. Presentation title 35 ADVANTAGES OF CHARACTER MERCHANDISING
  • 36.