IPR

CE test for 30 mark.

Part I.
Provide your suggests and solve the following problems: Each problem carries 7.5 mark.
Total (7.5 x 2 = 15 marks)

1. R.K. Tyres is a new company which is going to star manufacturing tyres for
medium and large vehicles. The CEO of the company wants to register the word
R.K Tyres with a background image of tyre as trade mark of the company. Here
R.K stands for Rakesh Kumar who is the promoter and CEO of the company. It
is possible to get the registration of such a trade mark. Advice the CEO and solve
the problem.
A trademark performs the important role of identifying goods of a particular manufacturer,
give an indication of the origin, and protect the consumer from deception by distinguishing
from similar goods and services. The capability of distinguishing may be some form of
distinctiveness which has been acquired over a period of time.
The Manual for Trade Mark states that Marks with single letter or double letters are
generally “devoid of distinctive character” for goods because of their tendency in trade to
use letters as models or references and further may be “abbreviations of names”. Further,
since there are more than one person, bearing the same name, it is obvious that a person is not
capable from being able to distinguish one goods or service from another. The probability to
be considered here is that of another person entering the same business.
In order to get a trademark over initials of the name, it should possess element of distinctive
character or representation in a special manner. If the name contains some prominent
feature capable of distinguishing per se, such trademark may be granted. That is, it should not
be identifiable or synonymous with any other product. For example, EA Sports.
Therefore, a trademark may be obtained from distinguishing goods of the company from
other goods available in the market. However, this protection will be available only to the
goods of the impugned industry, and not to all other industries in general. Further, while the
other manufacturer may be able to use the name “R.K. Tyres” or similarly named but, he
shall not be permitted to use in similarly stylized manner.
In the case of Pratibha M. Singh vs. Singh Associates , the Court held that Singh being a
very common surname, it cannot be reserved for a particular individual. However, it is also
essential to note that every person has a right to trade in his own name. A person who trades
under a particular name acquires a goodwill under that name. Honesty and fair play
protection is the basic rationale of the Court and in case of names which acquire sufficient
goodwill and reputation, the Courts ought to protect. This was held in Laxmikant v. Patel V/s
Chetanbhai Shah and another.
Therefore, in order to gain trademark protection for R.K Tyres, the client has following
options:
1. To design the name in a distinctive manner.
2. Give evidence of distinctiveness or capacity to distinguish. (depending on number of
letter and rarity of combination).
3. To wait for the business for a few years and gain sufficient goodwill and reputation
4. Or, to register as a device trademark
Based on the above discussion, my advice to the client shall be as follows:
As per the Indian law, the names are generally not granted trademarks due to the
possibility of other person carrying on similar trade with the same name. In order to get a
trademark, the name is to be designed in such a manner as to highlight the distinctiveness
of the combination of letters and pass the test of distinctiveness to a common man. The
other alternative is to build a goodwill to obtain a protection. Or, as a last resort, given the
trademark obtained by JK Tyres, the trademark can be obtained as a device trademark.

2. The owner of a small scale industry M/s Patola Sarees, which is manufacturing
silk sarees, wants to register a trade mark as Patan Potola Sarees. The industry
is existing for over 100 years in the town of Patan in Gujarat. There are
numerous other manufactures in the same town. Till date the owner had not
registered this trade mark. Now when application for registration of trade mark
is made, the other traders of Patan who manufacture saree objects for
registration of this trade mark. Advice under what circumstance, this trade
mark Patan Patola Saree can be registered.
The Agreement on Trade Related Aspects of Intellectual Property includes protection for
geographical indications. The general rule in India is that the geographic names cannot be a
subject of trademark, since such names cannot be a property of any one particular person.
Further, Section 9(1)(c ) of the Trademark Act clearly provide geographical name as a
ground for refusal. Further, when a trademark is with the name of a geographical location, it
generally denotes that the particular article is available at that particular place, and not with
that particular purpose. Therefore, it does not serve a purpose for the acquirer.
However, if a trademark is to be secured with such a name, a distinctive character is to be
shown based on the evidence of acquired distinctiveness. In order to satisfy the test of
acquired distinctiveness, the following ingredients are to be satisfied:
1. Market Share held by the Company;
2. Intensive-ness, geographical widespread and long-standing use of mark;
3. Amount invested by the undertaking in promoting the marks
4. Proportion of the relevant class of persons;
5. Statement from Chamber of Commerce and industry or other other trade and
professional associations.
In the Stilton Cheese case (1967) referred in the Imperial Tobacco Co. vs. Registrar of
Trade Marks, the Court observed that the ‘Stilton’ was used to denote particular process of
manufacturing cheese for 50 years, and thus, was inherently adapted to distinguish. Thus, it
also distinguished between persons of Association certified to and not certified to
manufacture. On the other hand, in the London Candles" case (1909) under the title Prices
Patent Candles Co. Ltd. v. Ogston and Tennant Ltd. the single judge held that since the
word “London” is very general and could not be adopted as a trademark, its use cannot be
monopolized as well. There are several factors that are taken into consideration while
dealing with objections by other traders such as in this case, such as the importance
attached to the trademark in a particular trade, the class and intelligence of the buyer, the
quantum of user and the impact on an honest trader etc.
Therefore, if the Industry emphasizes on securing a trademark, the same can be secured by
emphasizing on the fact that the Industry is in the market for 100 years and has thus acquired
distinctiveness. A comparison may also be shown to the Court about the market share and
goodwill held by the Industry in comparison to other traders and which has been acquired
over the years. Further, if there is some distinction in the manner of manufacture of the Silk,
that may be referred as well. The fact that the industry is in market shall distinguish between
persons who are authentic producers to that who are not. It may also be demonstrated before
the Court that it is in particular the sarees manufactured the client which are famous and
distinctive in name of Patola Sarees.
However, the possible impediments may be factors like objection of Association of Traders,
impact of the trademark on other manufacturers etc.

Part II
Multiple choice question. Each MCQ is of one mark. To mark correct answer write (true) in
front of the answer:
Example: 2+2 is
 4 --- true
 6
 8
 10

1. Trade mark Act, 1999 provides protection to non-conventional trade-marks such as

 Sound marks
 Colour combination and packaging
 Shape marks
 All the above ---(True)

2. Opposition to registration of trade mark can be made within

 Two months which can be extended to another one month.
 Three months, which can be extended to another two months,
 Five months, which can be extended to another 15 days,
  Four months. ----(True)

3. Fee for trade mark registration is to be paid as under;

 Per application, irrespective number of trade marks applied for.
 Per class of trade mark, irrespective of number of trade marks applied for.
 Per trade mark in each class applied for ----TRUE
 It is at the discretion of trade mark registrar.

4. Which is true?
 For registration of a trade mark under different classes, separate application
for each are to be made.
 For registration of a trade mark under different classes, single application is to
be made but fees for each class of trade mark is to be paid. --- TRUE

5. Once trade mark is registered, statutory protection for the trade mark is available for a
period of
 20 years,
 18 years,
 15 years,
 10 year, --- (True, further renewable for 10 years on payment of
prescribed renewal fees).

6. The general rule is that the surname is not Registrable under trade mark law, provide
 Is written in a unique style
 It is not deceptively similar
 It has acquired distinctiveness and evidence is available ---(True)
 Surnames cannot be registered as trade marks.

7. Signature can be registered as trade mark provided it has

 Acquired distinctiveness
 The signature should have phonetics and not only visual value
 It should be written in a distinctive style. ------(True)
 Signature is not a subject matter of trade mark law.

8. 7 O'CLOCK is a registered trade mark of Gillete U.K Limited. It is an example of

 Non descriptive trade mark ----True
 Invented word trade mark
 Descriptive word trade mark
  Non-conventional trade mark

9. Geographical name such as Ahmedabad can be registered as trade mark provide it

 There is no other person who has registered/used this geographical name as
trade mark.
 There is no opposition from people to register it as trade mark, (This option
may be relevant ONLY IF the people here refer to trade or other
professional association)
 It has acquired distinctiveness and has proof regarding intensive geographical
widespread, long standing and amount invested in promoting it as trade mark.
---(True)
 Permission from state government is obtained.

10. ISI mark, Agmark are examples of

 Collective trade marks
 Certification trade marks ----True
 They are not trade marks
 Device mark.

11. Domain names can

 Be registered as trade mark provided they satisfy all the conditions for
registration of trade marks. ------True
 Domain names cannot be registered as trade marks.
 Domain names are not distinctive and not registered.

12. Which is true?

 Trade mark law permits registration of trade marks for both goods and
services. ----------True
 Trade mark law permits registration of trade marks of only goods.
 Trade mark law permits registration of trade marks of only services.
 None of the above.

13. Sound can be a subject matter of trade mark, provide,

 It is unique and it is protected under copyright law.
 It is recordable and can be played whenever required.
 It is graphically representable. ---------True
 Has acquired distinctiveness.

14. As per trade mark law of India, the trade mark consisting of a shape of a building falls
under;
  Shape marks
 Device marks
 Non-conventional marks ----True (Shape marks in one of the types of
Non-Conventional Marks such as Sound, Colour etc. Recently, The Taj
and BSE buildings have been granted trademark under the said
category).
 None of the above.

15. Trade marks of Darjeeling tea, hp, Mac book are examples of
 Certification marks,
 Device marks,
 Collective marks ----True
 None of the above.