TRADEMARKS

• A trademark is a sign or a combination of

signs, which distinguishes the goods or
services of one enterprise from those of
another. The owner has an exclusive right
over it for ten years which is renewable every
ten years for ten years
• Such signs may use words, letters, numerals,
drawings, pictures, shapes, colors, logotypes,
labels and any combination of these
• Sometimes unconventional signs like three
dimensional shapes, audible signs or olfactory
signs are also used
• Words and Labels

• Symbols
•Slogans

• Shapes
SOUND

NBC Chimes

MGM Roar

AT & T chime
SMELL

Dunlop Tyres

Unicorn Darts
• Trademarks have been around a long time.
Some have been found on pottery made
around 5000 B.C.
• Trademarks were used for different reasons in
different parts of the world. Pottery makers in
ancient China used marks as symbols of pride
in their workmanship. Egyptian and Roman
masons marked their bricks for purposes of
accountability if the building collapsed.
• In 1266, England passed a law requiring
bakers to mark their bread so that "if any
bread be faultie in weight, it may bee then
knowne in whom the fault is."

• In 1772, a Virginia farmer petitioned the

Fairfax County court to allow him to use his
name as a trademark for flour. His request
was granted. The farmer later became the
first President of USA.
 Purpose of Trademarks
• Enables a consumer to identify a product (whether a
good or service) of a particular company so as to
distinguish it from other identical or similar products of
the competitors
• Play a pivotal role in branding and marketing strategies
of companies
• Defines the image and reputation of the company’s
products in the eyes of consumers
• This creates trust which creates loyal clientele and
enhances company’s goodwill
• Consumers develop an emotional attachment
• Act as incentives for companies to invest in maintaining or
improving the quality of their products
• A carefully selected trademark is a valuable
business asset
• Example – Value of some of the world’s most
famous trademarks such as Coca-Cola and IBM
exceed 50 billion dollars each. This is because
consumers value trademarks, their reputation,
their image and a set of desired qualities they
associate with the mark, and are willing to pay
more for the expected standard
• Trademarks:
 Ensure that consumers can distinguish between
products
 Enable companies to differentiate their products
 Are a marketing tool and the basis for building a
brand image and reputation
 May be licensed to provide a direct source of
revenue
 Are a crucial component for franchising agreements
 May be a valuable business asset
 Encourage companies to invest in maintaining or
improving product quality
 May be useful for financing
 Selecting a trademark
• The trademark of choice meets the legal requirements
• Do a trademark search – no identical or confusingly
similar marks
• The trademark should be easy to read, write, spell and
remember – suitable to all types of advertising media
• Make sure it does not have any undesired
connotations in your own or any other language
• Corresponding domain name is available for registration
 Other Criteria
• Coined or fanciful words These are invented words without
any intrinsic or real meaning, e.g., Kodak, Adidas Easy to protect,
inherently distinctive – could be difficult to remember for consumers

• Arbitrary marks Words that have no relation to the product

they advertise. Easy to protect – heavy advertising campaign to
leave an impression. For e.g., trademark ELEPHANT for a mobile
phone
• Suggestive Marks – Marks that hint at one or more
attributes of the product. The appeal is that they act as a
sort of advertisement; might be rejected for being too
descriptive. For e.g., Mark SUNNY for electric heaters –
radiating heat

• Important to avoid imitating existing trademarks.

EASYWEAR is a registered trademark for teenage
clothing. EEZYWEAR would be considered deceptively
similar
Other categories
Collective mark: A trade mark
distinguishing the goods and services of
an association of persons
Certification mark: A mark not indicating the
trade origin but used to distinguish goods and
services of a particular quality, accuracy and
performance
Service marks: Given to a service
provider such as banking, financing,
insurance, education, entertainment,
transport etc., e.g.
 Well known Marks

• Marks that are considered to be well-known by the

competent authority of the country where protection is
sought. They may be protected even without registration
in a given territory. Generally marks are protected
against confusingly similar for identical or similar
products; in these cases even for dissimilar products.
For e.g. WONDERCOLA – mark for soft drinks, enjoys
strong reputation all over the world, enjoy automatic
protection. Extends to unrelated goods and services. If
another company decides to market other products, say
T-shirts to sunglasses, using this mark, they have to take
permission from Wondercola Inc.
• One Surinder Singh tried to use the mark
CIBACA for motor vehicles. Ciba Giegy
Ltd, the registered proprietor of the mark
sued and got an injunction against him
after producing enough evidence of
distinctiveness and goodwill. A world
famous mark – goods related OR
unrelated
• Victoria Beckham, a.k.a. Posh Spice, is being investigated
by licensing bosses, amid allegations she stole the logo
for her fashion range from... no less than Queen Elizabeth
II.
Victoria Beckham used a crown symbol on her line for
label Rock & Republic, which is said to be similar to the
crown the Queen wore at her coronation and which now
adorns the uniforms of the Beefeaters who famously
protect the Tower of London.
 Protecting Trademarks

• Registration
• Use
• Registering a trademark a stronger protection
• Application in requisite format with prior use
information
• Formal examination
• Substantive examination
• Publication and opposition
• Registration
• Rectification
• Registration of business and its trade name not sufficient
• Trade name is the full name of your business and it
identifies your company
• A trademark is sign that distinguishes the product(s) of
your company
• Not compulsory, but advisable to register your trademark
 Registering a trademark
• Application Form
• A graphic representation of the mark
• A translation or transliteration of any part of the
mark that is in a language other than English
• Indication of Class
• Period of Use
• If shape of goods, then at least five different
views
• If colour claimed, then specify
• The Trademark Registry – New Delhi, Mumbai,
Kolkata, Chennai or Ahemdabad
• Examination – Formal and Substantial
• Accepted, asked to modify or rejected
• Publication - If accepted, published in the Trade
Marks Journal
• Opposition – within three months
• Registered - ten years, renewable for ten years
• Renewal
• Removal
 The costs involved
• Creation of logo or word – if outsourcing. Designing
a trademark is a creative process – a creator
automatically owns the copyright over creative or
artistic works, such as artwork of a trademark- best
to clarify - get it assigned to your company
• Trademark search – The trademark office does
search, also have online trademark databases
• Costs associated with registration process – can
vary depending on the number of countries and the
categories of products
• Trademark agent’s fee
 Protecting trademarks abroad

• It is a territorial right
• If your products are commercialized abroad, best to
protect it in other countries
• Allows your company to build a reputation abroad
• The national route – In India, you get priority of six
months to signatories of the Paris Convention
• The Regional route – Apply to regional offices
• The International Route – The Madrid Agreement
 The Madrid System
• A single Application
• One language
• Subject to one fees and deadlines
• Registration maintained and renewed through a
single procedure
• More than 70 countries members
• India to become a member soon
 Zegna in local characters
• Chinese • Japanese

• Arab • Thai

• Cyrillic • Greek

• Hebrew • Korean

• Hindi
 Trademarks and Undesirable
Connotations
HONDA CONCERTO

Chinese transliteration - `gong xi do’ means

`business collapse’
 Main reasons for rejection of an
application (Absolute)
• Generic Terms – Register `CHAIR’ for
selling chairs
Some trademarks that have become generic

Corn Flakes
Escalator
Dry Ice
Yo-Yo
Xerox
Google
Zipper
Aspirin
Band – Aid
Scotch Tape
Hoover
• Descriptive Terms – Words used to describe the product.
E.g. “SWEET” likely to be rejected for selling chocolates -
considered unfair. Laudatory words such as RAPID, BEST,
CLASSIC, INNOVATIVE etc. likely to be rejected, unless part of
otherwise distinctive mark. To give a disclaimer.
• Deceptive trademark – Trademarks likely to deceive or
mislead consumers as to the nature, quality or geographic
origin of the product. E.g. Margarine with a COW as a
trademark; words Bio or Eco
• Marks considered contrary to public order or
morality e.g. names or pictures of Hindu gods for beef
• Flags, armorial bearings, official hallmarks and
emblems of states and international organizations
which have been communicated to International Bureau of
WIPO – Ashoka Chakra, Prime Minister of India, WHO, UN etc
 Relative grounds of rejection
• Conflict with prior trademark rights If two
identical or very similar trademarks – could cause
confusion among consumers
• Example – Glucon – D - claimed they are the registered
proprietor of trade mark and user of distinctive package
and said mark since 1940 and that Glucose – D had
copied deceptively similar trademark and packaging –
color scheme and a happy family superimposed on it.
Lower Courts rejected the application of Glucon–D
saying that Glucose was a generic term. It was Supreme
Court that finally settled in favor of Glucon-D –
deceptively similar, likely to confuse consumers
• Scrabulous case

Mattel Vs. Agarwala Brs.

 Restrained from using any `deceptively’ similar
mark
 Cannot add in the source code of their websites
 Disagreed that `scrabble’ was generic
 Use of Trademark
• Can apply before use, but some countries,
like USA, do not register till you have
shown proof of use.
• India – statement of use or propose to use
• If a trademark is unused for a certain
period of time (5 years in India) even after
registration, you lose your right in your
trademark
 Proper Use
• Conspicuous from surroundings, e.g ROLLS-
ROYCE automobiles
• Do not deviate from established spellings, e.g.
Montblanc fountain pens, not Mont Blanc
• Never use a noun, e.g. LEGO toy blocks
• Never modify to plural forms, tic tac candies
and not tic tacs
• Never make trademark possessive, e.g. Levi’s
jeans, not Levi jeans
• Never use it as a verb, e.g. Never say
xerox these pages, always say photocopy
on Xerox machine
Or
Google this topic but look for it on Google’s
website
• Symbol TM or R or SM – not a requirement
and gives you no further legal protection, only
acts as a deterrent.
• ® can be used only if registered
• Use in advertising – should use exactly as
registered – same font, color etc. Monitor its
use closely, crucial for your image
 Enforcing trademarks
• The trademark owner has to identify infringement
and decide what measures to take

 Cease and desist letter – informing of a possible

conflict
 Arbitration and mediation
 Suit of infringement - Suit can be filed in a District
Court or a High Court
 Seek assistance from customs authority – seize
counterfeit goods

Relief – (a) injunction, (b) damages or account of

profit, ©delivery-up of infringing labels and marks
for destruction or erasure
Criminal remedies in trademark
• Available both in the Trademarks Act and the
Indian Penal Code
• Register an FIR with police after taking opinion
from the Trade Marks’ registrar or complain
before Magistrate
• Imprisonment from six months to three years
and fine from fifty thousand rupees to two lakhs
 Trademarks on Internet
• Controversial legal problems – no easy or uniform
solution
• Territorial rights – internet global – similar or
confusingly similar logos for identical or similar
goods. Legislation in this area still developing
• Domain names – are internet addresses – used to
find websites. Over time become business identifiers
– come in conflict with trademarks. Under the law
registration of another company’s trademark as a
domain name, taken as trademark infringement,
called cyber squatting. Not only cancel the domain
name, pay heavy damages
• Fashion powerhouse Armani lost a battle for control of the Armani.
COM internet address. Swiss-based Armani had argued that the
registered owner of the address, Anand Mani, a graphic designer
based in Vancouver, had taken the name with intent to confuse. But
Mr. Mani argued because his business had operated under the name
A.R.Mani since 1981, he had at least as much right to the address as
the fashion company.
• A panel of the World Intellectual Property Organization (WIPO), a
United Nations body, cleared Mr. Mani of cyber squatting, and
dismissed Armani's complaint.
• The key element in the case, as in any dispute over domain names, is
whether the name was registered in bad faith.
• Pop star Madonna, actresses Julia Roberts and Nicole Kidman, and
authors Julian Barnes and Louis de Bernires are among figures who
have won control over web addresses bearing their names.
Small modifications to trademark
 The Competitive Edge
• Contemporary firms use innovation and design to build and
sustain competitive edge
• They build strong, transferable brand identity throughout the
product lifecycle that can be leveraged in future offerings
• Marks, unlike patents or copyrights, never expire, if used
properly
• Value transference – premeditated use of multiple
intellectual property regimes at specific points across the
product lifecycle
• Patents – secure technology early in the lifecycle – critical
design elements secured through a registered trademark
 Value transference

• Dolby – consumer electronics

• Lego, Barbie, Nintendo
• Duracell
 The story of Apple iPod
• The technology at the heart of the iPod will have little to
do with their long-term competitiveness in the consumer
electronics realm
• If you teardown the iPod – the guts of the product are
made by others – who are also in the same game
• Design Patents – limited period
• Trademark - registration of two dimensional shape
• Allow them to leverage unique display screen and Click
wheel visual
The Amul Story – Utterly-Butterly Delicious
• Many people erroneously believe that the Mickey Mouse
character is protected only by copyright. In fact, the Mickey
Mouse character, like all major Disney characters (Minnie
Mouse, Donald Duck, Goofy etc.), is protected as a
trademark, which like all trademarks lasts in perpetuity as
long as it continues to be used commercially by its owner.
Whether or not a particular Disney cartoon goes into the
public domain, the characters themselves will remain
protected as trademarks from unauthorized use.
• In 1989, Disney sued three daycare centers in Florida for
having Mickey Mouse and other Disney characters painted
on their walls. The characters were removed, and rival
Universal Studios replaced them with Universal cartoon
characters
• Many other characters like Superman, Tom and
Jerry, Batman are protected as trademarks
Legal battles in the world of fashion
– fighting counterfeit
• E-bay pays LVMH 38.6 million euros for
selling counterfeit goods of the luxury
brand
 Burberry vs. Heelys
• Copying the trademarked
Burberry plaid!
 Adidas vs Payless

• Adidas got compensation of $305 million

from Payless for infringing their Stripes!!!
 Trade Dress
Trade Dress is a distinctive, nonfunctional feature, which
distinguishes a merchant's or manufacturer's goods or
services from those of another. 

The trade dress of a product involves the "total image"

and can include the color of the packaging, the
configuration of goods, etc...  Even the theme of a
restaurant may be considered trade dress.  Examples
include the packaging for Wonder Bread, the tray
configuration for Healthy Choice frozen dinners, and the
color scheme of Subway sub shops. 
 Trade Dress
The distinctive packaging or design of a product that
promotes the product and distinguishes it from other
products in the marketplace -- for example, the shape
of Frangelico liqueur bottles.

Trade dress can be protected under trademark law if a

showing can be made that the average consumer
would likely be confused as to product origin if another
product were allowed to appear in similar dress.
 Trade Dress

Examples of trade dress include the shape

of the Coca-Cola bottle, the front grill on
the Rolls-Royce automobile, the shape of a
classic Ferrari sports car, the round wall-
thermostat by Honeywell, and the shape
and appearance of the Big Bertha golf club
head by Callaway.