Trademark

Sign capable of distinguishing the goods or services produced or provided by one enterprise from those of other enterprises.

What can be a Trade Mark
‡ A trade mark is not limited to a sign or words ‡ Can be:
± ± ± ± ± ± ± ± Words Letters Numerals Drawings Shapes Colours Logo Audible sounds

Functions of Trademark
Enable customers to identify a product (a good or service) of a particular company ± distinguish it from other identical or similar products provided by competitors. Marketing tool ± building brand image and reputation. Licensed ± a direct source of revenue through royalties. Crucial component of franchising agreements. Valuable business asset. Encourage companies ± invest in maintaining or improving product quality. Useful ± obtaining financing. Consumers develop an emotional attachment to certain trademarks, based on a set of desired qualities or features embodied in the products. Eg: SBI symbol.

Selection or creation of a trademark Decides marketing strategy of your business. 1. Fulfillment of all the legal requirements 2. Do a trademark search 3. Easy to read, write, spell and remember 4. No undesired disapprovals 5. Arbitrary marks: Require heavy advertising. Trademark ELEPHANT for marketing mobile phones. 6. Suggestive marks: Hint about attributes of the product. Trademark SUNNY for marketing electric heaters.

Rejection of an application for trademark registration 1. Generic terms: CHAIR to sell chairs. 2. Descriptive terms: Mark SWEET likely to be rejected for marketing chocolates. 3. Marks considered to be contrary to public order or morality. 4. Flags, official hallmarks and emblems of states and international organizations are excluded from registration.

Registering a trademark
1. 
  

The applicant ± duly completed trademark application form:
The contact details of your company, A graphic illustration of its mark, A description of the goods and services. Pay the required fees.

2.
1. 2. 3. 4. 5.

The Trademark office
Formal examination ± administrative requirements or formalities Substantive examination ± verify ± complies with all the substantive requirements Publication and opposition Registration: Registration certificate ± issued ± generally valid for 10 years Renewal

Trademark agent ± Relevant IP office ± list of officially approved trademark agents. Time required for registration of trademark ± 3 months to 2 years.

TM or ® Convenient way of informing others that a given sign is a trademark, thus warning possible infringers and counterfeiters. The ® symbol is used once the trademark has been registered TM denotes that a given sign is a trademark SM is sometimes used for service marks.

Costs ± trademark creation, protection and use 1. Creation of a logo or word (outsource) 2. Conducting a trademark search 3. Registration process 4. Professional trademark agent ± assist in registration process.

Trademark search National trademark office Commercially operated trademark database

Types of Trademark 1. Trade marks: Marks used to distinguish
certain goods as those produced by a specific enterprise.

2. Service marks: Marks used to distinguish
certain services as those provided by a specific enterprise.

Types of Trademark 3. Collective marks: Marks used to distinguish goods
or services produced or provided by members of an association.

4. Certification marks: Marks used to distinguish
goods or services that comply with a set of standards and have been certified by a certifying authority. Eg: Monte Carlo TM of Nahar Co. uses Woolmark on its woollen makes.

5. Well known marks: Marks that are considered to be
well-known in the market and as a result benefit from stronger protection. WONDERCOLA is the famous trademark of a soft drink. Wondercola Inc. would then benefit from automatic protection in those countries where well-known marks enjoy stronger protection and where the mark is wellknown for soft drinks.

Using Trademarks Can u register a trademark without having used it? You may apply for registration before you have used the trademark but some countries will not officially register it until you have shown proof of use. How should you use trademarks in advertising? If your mark is registered with a specific design or font, make sure that the trademark is used exactly as it is registered. Monitor its use closely as it is crucial for the image of your company¶s products.

Can your company use the same trademark for different products? Extending an existing brand to new products enables the new product to benefit from the image and reputation of the mark. However, the use of a new mark, more specific and relevant to the new product, may also prove advantageous and enable the company to target the new product to a specific customer group (e.g. children, teenagers, etc.) or to create a specific image for the new product line. Many companies also choose to use a new brand in conjunction with an existing brand (NUTELLA® generally used with FERRERO).

Licensing of trademark to other companies
The trademark owner retains ownership, agrees to the use of trademark by one or more other companies. This is done on payment of royalties and involves the consent of the trademark owner, which is usually specified in a formal licensing agreement.

Licensing of trademark to other companies
The licensor often retains some degree of control over the licensee to guarantee that a certain quality is maintained. Eg: A restaurant selling chicken meals operates under the trademark NANDO¶S. NANDO¶S imparts its knowledge and experience to its franchisees and retains the right to supervise and control local franchises. As a crucial component of the franchising agreement the franchisees will also be authorized and obliged to use the NANDO¶S trademark.

It is increasingly possible to sell or assign a trademark. It may be required to deposit a copy of the agreement, or parts of it, at the trademark office.

PROTECTION vs. ENFORCEMENT
‡ Protection refers to obtaining of legal rights through such as through creation, registrations and use of trademarks & copyright ‡ Enforcement refers to checking third party infringers by exercising such legal rights & taking appropriate action against them

WHY ENFORCE YOUR IP RIGHTS?
‡ Helps in building & maintaining your BRAND VALUE ‡ Maintains the aura of EXCLUSIVITY in the minds of consumers ‡ Deters infringers and counterfeiters ‡ Essential if your trademark is to be the source identifier for your business

STAGES OF TAKING ENFORCEMENT ACTIONS
‡ Identify the nature of counterfeiting in the market:
± Manufacturers/Printers/Wholesalers/Retailers ± Kinds of rights that are being infringed - trademark and/or copyright

Conduct intensive investigations on these targets to determine volumes of infringing goods and collect evidence for taking further action sample infringing product, visiting cards, other printed matter

STAGES OF TAKING ENFORCEMENT ACTIONS
‡ Decide on strategy to adopt for each target based on: ± Kind of entity - wholesaler, retailer, manufacturer ± Volume of infringing goods ± Kind of rights being infringed

DIFFERENT STRATEGIES
‡ Issuing cease & desist letters/caution notices ‡ If infringement is willful and location of the infringing activity is known, surprise action ± a search and seize order ± conduct a raid without prior notice to allegedly offending company/person. ‡ Infringer may be compelled by the judicial authorities - identity of persons involved in production and distribution of infringing goods or services and their channels of distribution.

DIFFERENT STRATEGIES ‡ The judicial authorities may order for destroying infringing goods and materials. ‡ Negotiation & undertaking ‡ Filing of a civil suit/criminal complaint

RELIEFS THAT CAN BE OBTAINED IN A CIVIL SUIT
‡ Damages: Based on estimated lost profits/lost sales/loss of goodwill, etc. ‡ Rendition of accounts of profits earned from sales of infringing goods ‡ Delivery up of infringing goods

Example of a enforcement action
‡ 3 suits filed by Adidas Saloman AG in the Delhi High Court against counterfeiters ‡ At the initial stage, infringing goods were seized by the Local Commissioner ‡ Cases were decreed recently & damages of Rs. 15 lakhs was awarded to Adidas Saloman

successful

civil

Examples of successful enforcement of trademark rights by Indian textile houses
‡ Virendra Dresses v. Varinder GarmentsDefendants restrained from using ³Varinder´ as part of their trade name

TRADEMARK CRIMINAL ENFORCEMENT ‡ A cognizable, bailable criminal offence ‡ Punishment extends from 6 months to 3 years ‡ Fine which may extend to Rs. 1000/-

Example of a successful criminal enforcement action
‡ Criminal raids conducted in 2003 by the Economic Offences Wing, Delhi Police upon a complaint ‡ Printers printing counterfeit stickers & labels- Levi¶s, Adidas, Lee, Timberland

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