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Trademark

Trademark

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Published by Apurva Srivastava
A description about trademark law in India
A description about trademark law in India

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Published by: Apurva Srivastava on Mar 19, 2010
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TRADEMARK

Presented by: Rachi Agrawal Ashutosh Kumar Prakash Mathai Sourav Mukherjee Rupal Naidu Kaushik Pathak Apurva Srivastava 102 124 128 132 134 139 154

What is a Trademark? 

A trade mark (popularly known as brand name) in layman·s language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking.

What purpose does a Trademark serve? 

It identifies the actual physical origin of goods and services. The brand itself is the seal of authenticity. It guarantees the identity of the origin of goods and services. It stimulates further purchase. It serves as a badge of loyalty and affiliation. It may enable consumer to make a life style or fashion statement. 

  

Trademark Story 

Paris Convention for Protection of Industrial Property, March 20, 1883. Solved time lag problems in cross-country IP filing. Trademarks, Patents, Designs (Ind..). Started with 11 countries. 7 amendments and revisions, last one Sept 28, 79. 173 countries on last count, including India. Administered by WIPO since 1974.  

 



Trademark Story 

Berne Convention for Protection of Literary &Artistic Works, 1886. Recognized copyright. Influenced by French ´Right of Authorµ and English ´Copyrightµ. No need for cross country filing. 8 amendments and revisions, last one 1979. 164 signatories on last count. Administered by WIPO since 1974.  

  

What is WIPO ? 


Paris & Berne merge in 1893. United International Bureaux for the Protection of Intellectual Property . 1960 moves to Geneva. 1967 rechristens itself World Intellectual Property Organization. 1974 becomes part of UN. 184 signatories on last count. 

 



Then what is TRIPS ? 

Organized, non-negotiable, one country one vote system in WIPO. Unable to face new challenges. Political motives shift dispute resolution to WTO. Both still work together. New resolution underway in WIPO. 

 



Legislation (Indian Trademark Law) 
  

The Indian law of trademarks is enshrined the new Trade Marks Act, 1999. It came into force with effect from September 15, 2003. The old Trade and Merchandise Marks Act, 1958 was repealed at the same time. The new Trademarks Act of 1999 is in line with the WTO recommendations and is in conformity with the TRIPS Agreement to which India is a signatory.

Sources of Trademark Laws 
      

Trademark Act, 1999 and rules there under. International multi-lateral convention. National bi-lateral treaty. Regional treaty. Decision of the courts. Office practice and rulings. Decision of intellectual property affiliate board. Text books written by academicians and professional experts.

Legal Requirements 

The legal requirements to register a Trademark under the Act are: 
Should be capable of distinguishing goods or services.  Should not be similar to an existing mark.  Should not expressly prohibited under the Trademark Act.  Should be capable of being represented graphically.  Should indicate a connection with goods or services and some person has the right to use it.

Functions of a Trademark 
  

Identifies goods or services and its origin. Guarantees its unchanged quality. Advertises the goods/services. Creates an image for goods/services.

Who benefits from a Trademark? 
  

The registered proprietor. The Government. The legal professionals. The purchasers and consumers.

Advantages of Registering 

Confers the owner the exclusive right to use a registered trademark. Indicate ownership (by using symbol, ®). Seek relief of infringement. 



Types of Trademark Available for Adoption 
      

Name of a person. Invented or any arbitrary dictionary word(s). Letters or numerals or any combination. Devices. Combination of colours or single colour in combination with word or device. Shape of goods or the packaging. Marks constituting a 3-dimensional sign. Sound marks represented in conventional notation or words.

Who can apply for a Trademark? 

Any person claiming to be the proprietor of a trademark used, or proposed to be used by him. Application should contain: 
Trademark.  Goods/Services.  Name and address of applicant and agent (if any), with power of attorney.  Period of use of mark and signature.  

Application should be in English or Hindi filed at appropriate office.

Use of Trademark Symbols 

Who can use symbol ® in India? 
Only the proprietor of a trademark whose trademark has been registered in India can use the symbol ® in India.  Using the symbol ® unless your mark has been registered in India is unlawful. 

When can the symbol Πbe used in India? 
Using this symbol with your trademark simply implies that you claim to be the proprietor of the trademark.  There is no prohibition on the use of the symbol Πin India.

Types of Trademark 


Product Trademark:  Those which are affixed to identify goods. Service Trademark:  They are used to identify the services of an entity (e.g., trademark for a broadcasting service, retails outlet, etc.).  They are used in advertising for services. Certification Trademark:  They are used to distinguish goods/services in connection with which they are used in the course of trade.  The goods/services are certified by the proprietor with regard to their origin, material, the method of manufacture, the quality or other specific features. Collective Trademarks:  They are registered in the name of groups, associations or other organizations for the use of members of the group in their commercial activities to indicate their membership of the group.  

Register of Trademark 

The register of trade mark is currently maintained in electronic form. It contains, apart from the trademark: 
The class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred.  The address of the proprietors.  Particulars of trade or other description of the proprietor.  The convention application date (if applicable).  Where a trade mark has been registered.

Trademark Alterations 

Corrections: 
The trade mark applied for should not be substantially altered affecting its identity.  Subject to this, changes are permissible according to rules detailed in the subordinate legislation. 

Removal: 
A Trademark can be removed on application to the Registrar on prescribed form.  The Registrar also can issue Notice for removal of a registered trade mark.

Trademark Alterations

Duration of Trademark 
Term of

registration of a trademark is 10 years. be renewed for a further period of 10 years on payment of prescribed renewal fees. a registered trademark for a continuous period of 5 years is a ground for cancellation of registration. 

This may 

Non-usage of

Trademark Violation 

The Indian trademark law provides for invalidation proceedings and you have the right to initiate a cancellation action should a competitor have registered your trademark in India. You also have the right to initiate either a civil or a criminal action against any party that is violating your mark in India. 

Penalty for Violation 
The penalty

for selling or providing services using a false trademark is: 
A minimum of six months and maximum of three years and, A fine not less than Rupees fifty thousand but which may extend to Rupees 2 lakh.

Trademark Infringement 

Remedies for infringement and passing off of trademark in India: 
An action for infringement in case of a registered trademark is a statutory remedy.  An action for passing off in the case of an unregistered trademark is a common law remedy. 

In both the cases, the court may: 
Grant relief of injunction and/or  Monetary compensation for damages for loss of business and/or  Confiscation/destruction of infringing labels and tax.

Section 29 of the Trademark Act-1999 talks about various aspects related to infringement

Cases of Infringement 

Glaxo Smith Kline Pharmaceuticals Ltd. v. Unitech Pharmaceuticals Pvt. Ltd - Trademark FEXIM that is deceptively similar to the plaintiff ·s mark PHEXIN 

N.R. Dongare v. Whirlpool Corp. Ltd - Use of Trademark Whirlpool.

Cases of Passing Off 

Honda Motors Co. Ltd. v. Mr. Charanjit Singh - Using the trade name HONDA for ¶Pressure Cookers· which they are manufacturing in India.

Trademark Registration for Foreign Investors 

Many foreign and domestic Applicants have been able to successfully register their marks in India. India recognizes the system of multi-class applications and follows the International Classification. Indian trademark law allows filing of a trademark application in India on an ¶intent-to-use· basis. However, the registered proprietor of the trademark in India has to commence use of the mark within 5 years and 3 months of the date of registration.   

Case: Starbucks in China 

In addition to this, the defendant Qingdao company used the English name Qingdao Starbucks Coffee on its napkins, menus and business cards Within its shop, the defendant used Starbucks trademarks such as frappucino and Yukon blend, and it sold coffee beans clearly labelled as Starbucks Coffee The beans were packaged in bags identical to those used by Starbucks in its legitimate shops  

Case: Starbucks in China 

Starbucks Corporation has been in a long running dispute with coffee shops in Shanghai and Qingdao over the use of the Starbucks trademark in China. Starbucks has prevailed in both actions On November 16, 2005, the Qingdao court ruled in favor of Starbucks and it recently published that decision (in Chinese only) on its intellectual property law website The defendant coffee shop started business in Qingdao on October 23, 2003 under the name Qingdao xingbake kafei canting youxian gong si, which means Qingdao Xingbake Coffee Shop Company Limited  

Case: Starbucks in China 

Qingdao company's logo is a round circle with stars just like Starbucks, but it replaced the Starbucks mermaid with a coffee cup and eliminated the company name Starbucks filed suit against the Qingdao company claiming it was infringing on its xingbake and English language trademarks. The Qingdao defendant asserted the following defenses: 
Starbucks registered xingbake as its trademark in China, it never actually used the term. It uses only its English language trademarks.  A company is free to use its legal business name in conducting its business activities, so long as it does not infringe on someone else's trademark. The relevant Chinese authorities approved the Qingdao company using the xingbake business name and since Starbucks does not actually use that name, defendant has the right to use it in its normal business activities. 

Case: Starbucks in China
Ruling: The Qingdao court quite properly summarily rejected the argument that Starbucks does not own its own English language marks and rejected both defenses regarding the xingbake name as well. 
The Court found that Starbucks had in fact used the Chinese term xingbake in identifying its business in China.  The court held that the Qingdao defendant was not using xingbake as a business name; it was using xingbake as a trademark to identify its business as a coffee shop.

Case: Starbucks in China
Ruling: The court therefore held in favor of Starbucks, and issued the following order: 
Defendant must remove the term xingbake from its legal name;  Defendant must cease using any Starbucks trademarks, including the Chinese term xingbake;  Defendant must cease using the green circle logo as it is confusingly similar to Starbucks' logo;  The defendant is ordered to pay economic damages to Starbucks in the amount of $62,000.

Case: Starbucks in China
Important Points: 
The defendant in this case is also a foreign owned company.  This case was a dispute between two foreign entities, not a dispute between a U.S. company and a local Chinese company.  Much copying in China is organized and carried out by overseas Chinese based in Taiwan, Hong Kong, Canada, or the United States. This increases the complexity of dealing with intellectual property (IP) infringement in China.

Tata Sons won trademark case against MakeMyTrip 

Tata Sons won a trademark case at the World Intellectual Property Organization against New Delhi-based travel portal MakeMyTrip for the use of the word µTATA¶ in the latter¶s sister Web site okaytatabyebye.com, an online networking forum for the travel community. 

The disputed domain name oktatabyebye.com includes the word TATA, ³ confusingly similar to the well-known and registered trademark TATA that has a statutory right as well as rights in common law, by virtue of a long and continuous use and being its registered proprietor thereof.´ 

The argument put forth by Tata¶s was that MakeMyTrip had ³ill intention´ behind creation of oktatabyebye.com in order to infringe the intellectual property rights of Tata.

Tata Sons won trademark case against MakeMyTrip 

MakeMyTrip on its part contested that okaytatabyebye as a ³name´ is derived from the common parlance ³OK Ta Ta Bye Bye´ since it signifies travel, journey and related activities. 

The expression bidding farewell has been used by using the generic word ³Ta Ta´ in the same flow as ³OK´ and ending at ³Bye Bye´. Therefore, the expression ³Ta Ta´ has been used not as a standalone mark but as a generic description of bidding farewell in this Web site´. 

Decision was passed in favour of Tata Sons.

Kellogg Co. v. National Biscuit Co. 

This was a United States Supreme Court case in which the Court ruled that the Kellogg Company was not violating any trademark or unfair competition laws when it manufactured its own Shredded Wheat breakfast cereal, which had originally been invented by the National Biscuit Company (later called Nabisco). 

Kellogg's version of the product was of an essentially identical shape, and was also marketed as "Shredded Wheat"; but Nabisco's patents had expired, and its trademark application for the term "Shredded Wheat" had been turned down as a descriptive, non-trade markable term. 

The Court therefore "forcefully applied the principle that once a patent has expired, its benefits are to be freely enjoyed by the public." Kellogg·s case has been one of the Supreme Court's most versatile and influential trademark decision

Kellogg Co. v. National Biscuit Co. 

On the use of the term "Shredded Wheat", the Court ruled that the term was generic and not trademark able 

On the protection of the cereal's shape, the Court decided that the shape was functional and that there was a right to copy it after its patent expired 

Nabisco had complained in its lawsuit about Kellogg's use of a symbol on its product box , that of a picture of two of the pillow-shaped cereal biscuits submerged in milk similar to its own and that Kellogg's was fraudulently trying to "pass off" its cereal as Nabisco's. 

On the picture of the two shredded wheat biscuits in the bowl of milk, the Court noted that "the name Kellogg was so prominent on all of the defendant's cartons as to minimize the possibility of confusionµ     

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