® Business An organization or economic system where goods and Every business requires some form of inv and services are exchanged for one another or for money. enough customers to whom its output can be sold on a consistent basis in order to make a profit. a tntgenctios) —> a ace Se 2. THING 2. VAG ——> renteg , wala® Preface * Promotion and selling offgoods)and services — Brands — Get-up, business names, etc. — Consumers distinguish competitive products * What is a trade mark? — Any word, name, symbol, or device — Used to identify and distinguish goods and servicesHistory and Origin * Existed from time immemorial — Craftsmen sold their goods with signature, marks — Increasing trade in middle ages lead to increasing use of signs to distinguish goods * Role in Industrialization — Growth of market oriented economy — Same products and services by different competitors — Difference in quality, need to distinguishAton MPRKS =~ bneteesae ® Lieu — | pone rssers | | “ ~ LAvtrtion bovas : . 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Diya Tived ToT Wegetabe vs mi atIntroduction * International Agreements — Paris Convention, 1883 — Madrid Agreement, 1891 — Madrid Protocol, 1989 — World Intellectual Property Organization * International registration — TRIPS Agreementmoyen “obeal © Transeript x Socnmuasigece sree 1 Statin mats ited 125 ete mci amaine ere ee teenie [7 Shapira sae 8 "5! fateaneabanne was een nt yan anticer) In dRARMonKe — Raccenniers Fras conde manotag Heo TESS ang, 164) ses 1 4 : rvs A Mion nL, eas frag € notoylith Oe mre CEL metoggege ea ‘aor Transcript x Search in video 2:36 2:40 2:46 2:56 2:58 3:05 3:15 ‘Agreement in 1994, which came into effect in 1995, Now, the TRIPS Agreement provided for service marks as well, The recent version of the Trademarks Act that is in Trademarks Act 1999, provide for ‘trademarks for goods and services ‘And service marks where introduced in 1999 to Indie’s obligation under the TRIPS ‘Agreement. So, it provided for service marks characterised likelihood of confusion as reason why other marks should not be allowed, because that ould lead ta likelthnnd af enmfieian oO } qdDorrpiy amg 9isrurys _= tae madertrk Us pratt Una Doar ame i ke fasedunr Adie (UPEO) . Ya 4 Naned ((CAr Glin, Geypion. fhe Bibel pushin Cr "fecha it Mecha bed Ye ee; ; : @ History in India Earlier, no mechanism or law Criminal Law [IPC] — Offences relating to documents and property marks — Offences relating to property and other marks — Repealed, Trade Marks Act, 1958Consaapation oF LANG Pe LY 4 L hanks bu, kD S Tepe 4 MEGAN Ghia, Minbandane, Marks fick, 1054 [MERE vex [Ast ‘fale Oe poe | {pyar nmin 61 | ns saeeiian© History in India ~ * Trade Marks Act, 1940, * Trade Marks Enquiry Committee — Trade & Merchandise Marks Act, 1958 * Trade Marks Act, 1999 — Comprehensive review of existing law — Development in trade practices — Give effect to imp judicial decisions® Salient Features “ * Trade Marks Act, 1999 — Enlarge scope and definition of trade mark — Improvement in procedure of registration — Period of protection made to 10 years — Introduced registration for service, well- known, and collective marks — Infringement suit, where plaintiff residesFundamentals * Jurisdiction — Extends to whole of India * Term — 10 years, if registered, renewable * Rights conferred by registration — Exclusive rights to use the mark — For registered goods and services® Fundamentals * What is a good trade mark? — Easy to speak & spell — Appealing and easy to remember or recollect — invented or coined word, unique monogram, logo or a geometrical deviceFundamentals * Avoid using — Laudatory or descriptive matters — Geographical names, common surnames, names of a community or persons — a matter prohibited by law to be used as a trademark — amatter that is same/similar to an already existing trademark in the market® Fundamentals * Meaning of a trade mark [S.2(1)(zb)] — “.means a mark capable of being represented graphically and which is capable of distinquishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.”@ Types * Word Marks — Rights claimed only in the word, letters or numbers — No rights claimed in manner how these words are presented * Service Marks — Word, phrase, symbol or design, or a combination thereof — Identifies and distinguishes the source of a service rather than goodsTypes * Collective Marks — Distinguishes the goods or services of members of an association of persons * Certification Marks — Certified by the proprietor of the mark — Origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics© Types ~ * Unconventional Trade Marks — Color Marks — 1444 * Cadbury purple — Shape Marks — '444 * Coca-Cola Bottle — Smell Marks —~ * Tennis balls with the scent of newly mown grass — Sound Marks, ~ - He lasyTypes * Unconventional Trade Marks — Smell Marks “ |; Sound Marks “ — Taste marks / * Graphical representation *Onpaper SS9:43 Oa ® Application fora Trade Mark ~~ + Why: Confers exclusive rights to use ~ Prima facie evidence of proprietorship of the ™ ~ Registered proprietor may assign or license the trademark as any other property ~ Registered proprietor can enjoy the goodwill associated with registered trademark forever, if the mark is renewed from time to time < Transcript xX Search in video 12:40 __lawand if thas to be graphically represented, it should be capable of being portrayed on. Paper, 12:46 and that is how you file your trademarks, So, there is still same uncertainty as to 12:52 whether smell marks and sound marks will be allowed under the Indian law. 12:57 So, apart from the smell marks and the sound marks, there is also an attempt 13:02 _tohave trademarks for taste. So, that is again as we just mentioned in India, 13:09 there has to be a graphical representation on paper. So, 1313 we the law with regard to smell sound and ‘trademarks is still not crystallized in India.® Application fora Trade Mark ~~ + Who: Any person, claiming to be the proprietor. of a trade mark used or proposed to be used by him OO * How: Apply in writing to the CGPDTM — Filed by submitting to office, post, or electronically — Application should have TM, goods and services, name, address, attorney details, period of use of markWhat may be Protected?Subject Matter * It should conform to the definition of trade mark under the Act * Particularly, prove 3 conditions — Asign/mark — Capable of being represented graphically — Capacity to distinguish® A Sign or Mark a * Concept of sign is broad, but not without limits * “Mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereofA Sign or Mark * Limits on registration of shapes — Shape results from nature of goods themselves — Shape necessary to obtain technical result — Shape gives substantial value to goods@ Graphical Representation a * The mark should be capable of being graphically represented — Representation of sign — Words marks are written, figurative marks by pictures — Representation of unconventional marks can be problematic® Distinctive Character ~ * Capable of distinguishing the goods and services of one undertaking from the goods and services of other * Distinctiveness Hierarchy — Arbitrary/Fanciful/suggestive * Google/Apple/SugarFree@ Secondary Meaning a * Acquired Secondary meaning — Consumers recognize mark as a source of indicator — Primary significance of the term in the minds of the consuming public is not the product but the producerDistinctive Character * Distinctiveness Hierarchy — Suggestive * Suggest the quality of a good or service, eg. Citibank — Descriptive * Describes characteristics of product, eg. Coca-Cola — Generic * Common term used, eg. Xerox® What Can’t be a Trade Mark? ~~ * Functionality — Marks cannot be protected if functional * Disparaging — Detrimental to mark’s distinctive character and against reputation of the TM * Immoral or scandalous® What Can’t be a Trade Mark? ~~ * Deceptive similarity — Marks misdescribes the goods attached to it * Conflicts with existing Marks — Cause confusion with existing marks — Cause dilution of existing known marks ° Fraud — Knowingly makes false representation®@ Well-Known Marks ~ * “.means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first- mentioned goods or services.”Registration® Registration of Trade Mark ~~ * Process of registration — Filing of application — Examination — Publication, observation, and opposition — Registration * Period of 10 years — Renewal * Prescribed fee, renewed for further 10 yearsClassification * Classification of goods and services — International Classification — Nice Classification — Disputes determined by the Registrar — < Transcript xX Search in video 3:20 _systemis called the Nice classification; which was established by the Nice Agreement 3:26 _i 1957, this was an agreement entered into by various countries, and it happened for 3:32 _the first time in Nice which is a city in France. 3:34 So, it takes the name from the place. 3:37. TheNice classification is a system of classifying goods and services for the purpose of registering 3:42 term marks, the trade marks, for the purpose of registering trademarks. 3:49 The classification system is updated every 5 years, and currently we have the 10th version oO } qd2 Classification * Classification of goods and services — International Classification — Nice Classification — Disputes determined by the Registrar 7 < Transcript xX Search in video 3:49 The classification system is updated every 5 years, and currently we have the 10th version 3:58 _ of the Nice classification. 4:00 The system comprises of groups which, the Nice classification system classifies products 4:11 into 45 classes and allows users seeking to trade mark a good of a service to choose from 4:19 these classes which may be appropriate for their product or service. 4:25 The Nice classification system is administered by the World Intellectual Property 4:32 or WIPO. 4:34 Andiif there are any disputes in the oO } qdGrounds for Refusal of Registration® Absolute Grounds a * Relate to inherent objections to distinctiveness and certain public interest objections * Devoid of any distinctive character — Not capable of distinguishing the goods and services of one person from those of another person * Exclusively consists of marks which designate kind, quality, quantity, intended purpose, values, geographical origins, characteristics® Absolute Grounds “ * Marks/Indications, become customary — Current language — Bona-fide and established practices of the trade * Shall not be refused registration — Acquired distinctive character as a result of use, well-known trade mark — Before the application for registrationAbsolute Grounds Deceive the public or cause confusion Contains or comprises of any matter likely to hurt the religious susceptibilities Scandalous or obscene matter Prohibited under Emblems and Names ActAbsolute Grounds * Shall not be registered if it consists exclusively of: — Shape of goods which results from the nature of the good themselves — Shape of goods, necessary to obtain a technical result — Shape which gives substantial value to goods® Relative Grounds “ * Arise because some other proprietor has an earlier conflicting right * Fall into two categories — Concerned with ‘earlier trade mark’ — Concerned with ‘earlier rights’ * Trade Marks shall be refused subject to certain conditionsRelative Grounds : * Earlier TM well-known, use of later would take unfair advantage or detrimental to the distinctive character or repute of the earlier mark, shall not be registered — Identical, similar to an earlier TM — Registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietorRelative Grounds ic * No registration, use in India prevented: — By law of passing off — Law of copyright * Exceptions — Proprietor of earlier mark consents to the registration — Shall not refuse registration unless opposition is raised OORelative Grounds = ¥ Went CAL “Licgeinonp oF Corifusions : < Sim CAR® Honest Concurrent Use ~ * In case of honest concurrent use the Registrar may permit the registration by more than one proprietor of the trade marks which are identical or similar in respect of the same or similar goods or services — Subject to conditions and limitations® Effect of Registration ~ Initiate suit for infringement Exclusive rights to the use of the TM — Relation to goods and services for which granted — Subject to any conditions or limitations imposed Registration to be prima facie evidence of validity® Infringement Suits * Registered trade mark * What amounts to infringement? — Identity with registered mark and similarity — Similarity with registered mark and identity — Identity with registered mark and identity * Presumption of confusion — Identity with registered mark having reputation®@ Infringement Suits * What amounts to infringement? — Unauthorized use of TM on packaging, goods for sale, import, export etc — Disparaging advertisement@ Passing Off a Unregistered trade mark Conditions for passing off — The claimant has goodwill — The defendant made a misrepresentation that is likely to deceive the public — The misrepresentation deceives the goodwill of the claimant@ Cybersquatting a Relationship between domain names and TM Abusive and bad-faith use of domain names including trade marks Internet Corporation for Assigned Names and Numbers Uniform Dispute Resolution Policy and Rules® Exploitation and Use a Self-exploitation Assignment Voluntary licenses Mortgages Compulsory license — No CLin relation to TM — Prohibited under TRIPS® Defences Conflict between registered marks — Cannot amount to infringement — It may constitute passing off Legitimate use of a mark by unauthorized user — Honest concurrent use Use to indicate the characteristics of the product or serviceDefences * Use of mark, outside scope of registration — Registration subject to conditions, or limitations * Descriptive Use * Use of Name or address * Comparative advertising. . ® Losing Protection “ * Abandonment — Non-use — Change in product or service than for which it is registered * Mark has become generic — Has become a common name in the trade * Mark has become deceptive — Misleading the public