Professional Documents
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TRADE MARKS
Prashant sunagar
Asst professor
MSRIT
Bangalore
Trade Secrets Under TRIPS
The trade-related aspects of intellectual
property rights - TRIPs Agreement divided
intellectual property rights into the
following seven heads -
1. Patents,
2. Trademarks,
3. Copyrights,
4. Industrial designs,
5. Layout designs of integrated circuits,
6. Undisclosed information (trade secrets),
and
7. Geographical indications.
Under TRIPs Agreement 'trade secrets' are
Present scenario of trade secrets
A glass of Coca-Cola
Source code
Engineering Drawings
Mechanical
Manufacturing processes
Forensic manuals
Franchise manuals
Marketing and business strategies
….
TRADEMARK LAW IN INDIA
TM-21
Exemptions
Use of a mark in accordance with honest
practices, and not such as to take unfair advantage
of, or harm the distinctive character/repute of the
TM, is not infringement.
The following are not infringement:
use in relation to goods/services to indicate
kind, quality, quantity etc. of the
goods/services;
use in a manner outside the scope of
registration;
use in relation to goods/services where the
owner had once applied the mark and had not
subsequently removed it or impliedly
consented to its use;
use in relation to parts/accessories of other
goods, where such use is reasonably
necessary and not likely to deceive as to the
origin.
The proprietor of a registered TM can not
interfere with the use of any
identical/similar TM, if a person has been
using this mark from an earlier date.
Trademarks - A Cautionary Tale
In 1998, sales of the luxury car brand Rolls
Royce were declining and its owner, Vickers
Corporation, put the Rolls Royce Ltd. division
up for sale.
BMW had long been making parts for the Rolls,
and offered Vickers $575 million dollars for the
company.
However, Volkswagen was also keen to enter
the luxury car market and pushed BMW into a
bidding war. Volkswagen won in the end, paying
$795 million for the company.
Unfortunately, Volkswagen was in such a hurry
to beat its German rival, that it overlooked the
essential question of what exactly it would get
for its $795 million.
BMW kept its eye on the ball, however. It
knew that the Rolls Royce trademarks
were in fact owned by Rolls-Royce PLC—
the aircraft company, not Rolls Royce
Ltd— the motor car company. BMW
purchased the trademarks from the aircraft
company for a mere $65 million dollars.
Volkswagen then belatedly discovered that
although they owned the rights to build the
world’s most elegant luxury car, they could not
use the grill, the hood ornament, or the
legendary name! The point is that while
intellectual property (IP) can be critical to the
success of many deals, IP due
diligence often receives scant
attention and this omission
can be very costly.
Infringement of Trademark
The test laid down by the Supreme
court is a person of average
intelligence with imperfect memory –
Amritdhara case AIR 1963 SC 449.
This test is followed by the Supreme
Court and by various High Courts all
over India.
CASTROL VS PENTAGON
IS THERE ARE
INFRINGEMENT ?
NYLE VS KAMILL- IS THERE
AN INFRINGEMENT ?
.
SABENA VS SUBEENA
IS THERE AN INFRINGEMENT ?
- IS THERE AN INFRINGEMENT
?
Marks different – Get up same
CASTROL VS PENTAGON
Where the marks are different, but the colour
scheme, get up and layout are identical, injunction
has been granted in a suit for passing off.