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 ‡ Arab ‡ Cyrillic ‡ Hebrew ‡ Hindi ‡ Japanese ‡ Thai ‡ Greek ‡ Korean

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. ³SWEET´ 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 ROLLSROYCE 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 wallthermostat by Honeywell, and the shape and appearance of the Big Bertha golf club head by Callaway.

Sign up to vote on this title
UsefulNot useful