Trademarks

What is trademark ?
 A trademark is a sign capable of distinguishing the goods or services provided by one enterprise from those of other enterprises .  Any distinctive words , letters , numerals , drawings , pictures , shapes , colors , logotypes , labels or combinations used to distinguish goods or services .  Some countries also allow for registration of less traditional forms of trademarks such a single colors , 3 dimensional signs , audible signs or olfactory signs .

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.What are trademarks for? The main function of a trademark is to enable consumers to identify a product (whether a good or a service) of a particular company so as to distinguish it from other identical or similar products provided by competitors.

The image and reputation of the company create trust which is the basis for establishing a loyal clientele and enhancing a company’s goodwill. . Consumers often develop an emotional attachment to certain trademarks.Trademark: Business way By enabling companies to differentiate themselves and their products from those of the competitors. based on a set of desired qualities of features embodied in the products bearing such trademarks. trademarks play a pivotal role in the branding and marketing strategies of companies.

Consumers value trademark. their reputation. their image. and a set of desired qualities they associate with the mark and are willing to pay more which give a company a competitive edge. .The Value of Trademarks A carefully selected and nurtured trademark is a valuable business asset for most companies Estimates of the value of some of the world’s most famous trademarks such as Coca-Cola or IBM exceed 50 billion dollars each.

The Value of a Mark .

 It hinders the efforts of unfair competition such as counterfeit .Need for trademarks  It provides protection to the owner of the mark by ensuring the exclusive right to use the mark or authorize another to use it in return of payment .  Trademark promotes initiative and enterprise world wide by rewarding the owners of trademarks with recognition and financial profit . .  It enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions .

 Enable companies to differentiate their products .Advantages of trademark  Are valuable business assets for lots of companies  Ensure that consumers can distinguish between products .  Are licensed and provide a direct source of revenue through royalties .  Encourage companies to invest in maintaining or improving product quality . .  Are crucial component of franchising arrangement .  Trademarks are marketing tools and the basis for building reputation .  May be useful for obtaining financing .

.Protecting Trademarks • Can be protected through registration or in some countries through use • But registering a trademark will provide a stronger protection. particularly in case of conflict with an identical or confusingly similar trademark.

Is the registration of the trade name of your company sufficient? • Many people believe that by registering their business and its trade name at the business registry. this name would also be automatically protected as a trademark. . • This is a common misconception.

or other similar abbreviations that denote the legal character of the company. a particular range of products. however. Inc. or one specific type of product. • Companies may use a specific trademark to identify all the products. And the company may have various trademarks. is the sign that distinguishes the product(s) of your company. . It often ends with Ltd..Trade name & Trademark? • A trade name is the full name of your business. such as: “Blackmark International Ltd” and it identifies your company. • A trademark.

 Allows one to take legal action when the mark is infringed both civil and criminal .  Prevents third parties from registration of same trademark .TRADEMARKS CAN BE BOTH REGISTERED AND UNREGISTERED ADVANTAGES OF REGISTERED TRADE MARK:  Excludes others from using identical / confusingly similar mark .

REGISTRATION PROVIDES ADDITIONAL RIGHTS Proceedings for infringement of an unregistered TM cannot be instituted . subject to conditions and limitations . Registration is the prima facie evidence of validity in all legal proceedings . . Registration gives exclusive rights to the proprietor to the use of the registered TM with respect to the goods or services registered .

.IF MARK NOT REGISTERED Common law action lies subject to proving Goodwill and reputation . one has to prove that : There is likelihood of deception .Such action is known as passing off action . To be successful in a passing off action .

.IF MARK NOT REGISTERED The user has built up a reputation and goodwill in the mark . The reputation/goodwill of his mark is being tarnished in some way by the other persons use of the mark .

Types of trademarks Trademarks Service marks Collective marks Certification marks Well Known marks Trade dress .

.Trademarks Marks used to distinguish certain goods as those produced by a specific enterprise .

.Service marks Marks used to distinguish certain services as those provided by a specific enterprise . It is very similar in nature to trademark .

• Financial services • Banking services • Travel services • Advertising services .

Difference between trademark and service mark Trademark distinguish the goods of one enterprise from those of others . while service marks fulfill same function in relation to services .

. . quality standards ) and permit individual companies to use the mark if they comply with the standards .Collective marks A collective mark is generally owned by an association or cooperative whose members may use the collective mark to market their products . Association generally establishes a set of criteria for using the collective mark ( eg.

Example : .Advantage of collective mark Collective marks is an effective way of jointly marketing the products of a group of enterprises which may find it more difficult for their individual marks to be recognized by consumers and/or to be accepted for distribution by the main distributor .

Example of collective mark The Melinda collective mark is used by the 5200 members of the 16 apple producing cooperatives working in Valle di Non and Valle di Sole ( Italy) who established the Melinda consortium in 1989 . .

 They can be used by anyone whose products meet certain established standards . .Certification marks  Certification marks are given for compliance with defined standards but are not confined to any membership.  An important requirement for certification marks is that entity which applies for registration is considered “ competent to certify” the products concerned .

Example of certification mark • The woolmark symbol is registered trade (certification) mark of the woolmark company . . • The Woolmark is a quality assurance symbol denoting that the products on which it is applied are made from 100% new wool and comply with strict performance specification set down by the Woolmark company . It is registered in over 140 countries and is licensed to manufactures who are able to meet quality standards in 65 countries .

Example of certification mark .

.Difference between certification mark and collective mark • Collective marks may only be used by a specific group of enterprises eg: members of an association . • Certification marks can be used by anybody who complies with the standards defined by the owners of the certification mark .

• Well known marks may be protected even if they are not registered . .Well known marks • Marks that are considered to be well known in the market and as a result benefit from stronger protection .

Even the theme of a restaurant may be considered trade dress. Examples include the packaging for Wonder Bread. which distinguishes a merchant's or manufacturer's goods or services from those of another. and the color scheme of Subway sub shops. . the tray configuration for Healthy Choice frozen dinners.. the configuration of goods. etc. nonfunctional feature. The trade dress of a product involves the "total image" and can include the color of the packaging.Trade Dress Trade Dress is a distinctive..

Trade Dress The distinctive packaging or design of a product that promotes the product and distinguishes it from other products in the marketplace -. the shape of Frangelico liqueur bottles.for example. . 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.

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

Registration of Trademarks .

TRADEMARK REGISTRATION PROCESS IN INDIA .

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Duration of trademark under Indian Trademark Act Validity • Initial term on registration of a trademark is 10 years which has to be renewed every 10 yrs thereafter . . • Non use of a registered trademark for a continuous period of 5 yrs may result in cancellation of registration on application by an aggrieved party .

• Do a trademark search to make sure that it is not identical or confusingly similar to the existing trademarks . spell and remember .Checklist for selecting trademark • Check that your trademark of choice meets all legal requirements for registration . write . . • Make sure the trademark is easy to read . • Make sure the mark does not have any undesired connotations in your own language or in any of the languages of the potential export markets .

But while selecting a trademark it is helpful to know which categories of signs are usually not acceptable for registration. .What are the main reasons for rejecting the application? In general. any person who intends to use a trademark or to have it used by third parties can apply for registration. It can be either an individual or a legal entity. Applications for trademark registration are usually rejected on what are commonly called “absolute grounds”.

armorial bearings. official Hallmarks & emblems of states And international organizations .Absolute Grounds? Generic Terms: CHAIR for chairs Descriptive terms: SWEET for chocolates Deceptive: marketing margarine under a trademark featuring a cow Marks considered to be contrary to public order or morality Flags.

Relative Grounds • When the trademark conflicts with prior trademark rights • If the trademark is considered to be identical or confusingly similar to an existing one for an identical or similar products. it will be rejected or cancelled. as the case may be • Avoid using trademarks that risk being considered confusingly similar to existing marks .

What should be kept in mind when selecting or creating a trademark • Check that your trademark of choice meets all the legal requirements for registration • Do a trademark search to make sure that it is not identical or confusingly similar to existing trademarks • Make sure the trademark is easy to read. write. spell and remember and is suitable to all types of advertising media • Make sure the mark does not have any undesired connotations in your own language or in any of the languages of potential export markets • Check that the corresponding domain name is available for registration .

Consider before you register • Coined or “fanciful” words: invented words without any intrinsic or real meaning • Arbitrary marks: words that have a meaning that has no relation to the product they advertise • Suggestive marks: marks that hint at one or some of the attributes of a product • Imitating Existing Trademarks: slightly altered competitor’s trademark or a misspelt well-known or famous mark is unlikely to be registered .

Examples Coined or Fanciful words Kodak: Eastman Kodak Company Suggestive marks SUNNY for marketing electric heaters would hint at the fact that the product is meant to radiate heat and keep your house warm Imitating EASY WEAR (trademark for teenage clothing) EEZYWARE Arbitrary marks ELEPHANT for making mobile phones .

UK TRADEMARK REGISTRATION PROCESS APPLICATION RECEIVED BY INTELLECTUAL PROPERTY OFFICE(IPO-UK) ACKNOWLEDGEMENT RECEIPT SENT BACK TO APPLICANT SEARCH REPORT SENT TO APPLICANT .

THERE IS AN EXTENDABLE PERIOD OF TWO MONTHS FOR ANYONE TO OPPOSE THE REGISTRATION OF THE MARK. IF OBJECTIONS IN THE SEARCH REPORT ARE NOT MET WITH. . THE TRADEMARK IS REGISTERED AND A REGISTRATION CERTIFICATE IS SENT TO THE APPLICANT. MARK IS ADVERTISED IN THE TRADE MARKS JOURNAL.IF THE EXAMINER DOES NOT RAISE OBJECTIONS OR YOU CAN YOUR APPLICATION OVERCOME ANY OBJECTIONS RAISED. EITHER THE APPLICANT WITHDRAWS OR THE IPO REJECTS THE APPLICATION IF THERE IS NO OPPOSITION AND ALL THE OBJECTIONS ARE MET WITH.

US TRADEMARK REGISTRATION PROCESS Optional Search phase Two types of application can be filed Intent to Use application Review of application Examiner approves Examiner objects Response prepared and filed Mark published for opposition Use application Review of application Examiner objects Response prepared and filed Examiner approves .

Mark published for opposition Opposition proceeding Applicant must file a Statement of Use (SOU) with specimens within 6 months of allowance of ITU application Mark becomes registered .

TRADEMARK INFRINGMENT .

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