Introduction To

Intellectual
Property Rights

V.P. Ramnath,
of Ramnath & Associates,
Advocates and IPR Attorneys,
Hyderabad

27th August 2009

1
What is A Trademark Or
Servicemark?

2
Trademark

 Word, phrase, symbol or design, or combination of words, phrases, symbols

 Word, phrase, symbol or design, or combination of words, phrases, symbols
orordesigns
designsused
usedbybyaacompany
company(or
(orperson)
person)totoidentify
identifyitsitsgoods
goodsororservices.
services.

Identify and distinguish the source of the goods or services of one

Identify and distinguish the source of the goods or services of one
enterprise
enterprisefrom
fromthose
thoseofofothers.
others.

 Different from a copyright or a patent or geographical indication.

 Different from a copyright or a patent or geographical indication.
Copyright
Copyright: :protects
protectsananoriginal
originalartistic
artisticororliterary
literarywork
work
Patent
Patent: :protects
protectsan
aninvention
invention
Geographical
Geographicalindication
indication: :used
usedtotoidentify
identifygoods
goodshaving
havingspecial
special
characteristics
characteristicsoriginating
originatingfrom
fromaadefinite
definiteterritory.
territory.

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 Servicemark

 Differs from a trademark - identifies and distinguishes the source of a service

 Differs from a trademark - identifies and distinguishes the source of a service
rather
ratherthan
thanaaproduct.
product.

Trademark for goods appears on the product or on its packaging, while a

Trademark for goods appears on the product or on its packaging, while a
service
servicemark
markappears
appearsininadvertising
advertisingfor
forthe
theservices.
services.

 Trademark rights may be used to prevent others from using a confusingly

 Trademark rights may be used to prevent others from using a confusingly
similar
similarmark,
mark,but
butnot
nottotoprevent
preventothers
othersfrom
frommaking
makingthethesame
samegoods
goodsororfrom
from
selling
sellingthe
thesame
samegoods
goodsororservices
servicesunder
underaaclearly
clearlydifferent
differentmark.
mark.

4
 Classification Of Goods And Services

 Classification system used to group goods and services for registration.

 Classification system used to group goods and services for registration.

This system known as the International Classification of Goods and Services

This system known as the International Classification of Goods and Services

 Consists of 34 classes of goods and 8 classes of services.

Consists of 34 classes of goods and 8 classes of services.

 For eg., printed matter, newspaper and periodicals are classified in Class 16
For eg., printed matter, newspaper and periodicals are classified in Class 16
while
whileservices
servicesininthe
thefield
fieldofofpublication
publicationcomes
comesunder
underClass
Class41.
41.

5
 Benefits Of Registering A Mark

 Exclusive right by the registered proprietor to use the trademark

 Exclusive right by the registered proprietor to use the trademark

viz
vizthe
thegoods
goodsororservices
servicesininrespect
respectofofwhich
whichthe
thetrademark
trademarkisisregistered.
registered.

Though not compulsory , registration offers better legal protection

Though not compulsory , registration offers better legal protection
for
foraction
actionfor
forinfringement.
infringement.

6
 Who Can Apply For A Trademark?

Any person can apply for registration of a trademark to the Trademark

Any person can apply for registration of a trademark to the Trademark
Registry
Registryunder
underwhose
whosejurisdiction
jurisdictionthe
theprincipal
principalplace
placeofofthe
thebusiness
businessofofthe
the
applicant
applicantininIndia
Indiafalls.
falls.

In case of a company about to be formed, anyone may apply in his name for
In case of a company about to be formed, anyone may apply in his name for
subsequent
subsequentassignment
assignmentofofthe
theregistration
registrationininthe
thecompany's
company'sfavor.
favor.

Trademark Search has to be made in the trademark registry office

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 Common Reasons For Refusal Of
Trademark Applications

 Confusion between the applicant's mark with registered mark

 Confusion between the applicant's mark with registered mark

ororpending
pendingprior
priormark.
mark.

 Marks, which are merely descriptive by nature

Marks, which are merely descriptive by nature

 Marks consisting of geographic terms or surnames

Marks consisting of geographic terms or surnames

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 Duration Of A Trademark

 The term of a trademark registration is for a period of ten years.

 The term of a trademark registration is for a period of ten years.

 The renewal is possible for further period of 10 years each.

The renewal is possible for further period of 10 years each.

 Unlike patents, copyrights or industrial design trademark rights can last

Unlike patents, copyrights or industrial design trademark rights can last
indefinitely
indefinitelyififthe
theowner
ownercontinues
continuestotouse
usethe
themark.
mark.However,
However,ififaaregistered
registered
trademark
trademarkisisnot
notrenewed,
renewed,ititisisliable
liabletotobe
beremoved
removedfrom
fromthe
theregister.
register.

Use of the "TM," "SM" and "(R)" Symbols

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Infringement And Passing-Off

Two
Twotypes
typesofofremedies
remediesavailable
availabletotothetheowner
ownerofofaatrademark
trademarkfor
forunauthorized
unauthorized
use
useofofhis
hisororher
hermark
markororitsitsimitation
imitationbybyaathird
thirdparty.
party.

 ‘An action for infringement' in case of a registered trademark :

 ‘An action for infringement' in case of a registered trademark :

 Statutory remedy
Statutory remedy
 Necessary only to establish that the infringing mark is identical
Necessary only to establish that the infringing mark is identical
orordeceptively
deceptivelysimilar
similartotothe
theregistered
registeredmark
markand
andno
nofurther
furtherproof
proofisisrequired.
required.
 In this case, the use of the mark by the defendant need not cause any
In this case, the use of the mark by the defendant need not cause any
injury
injurytotothe
theplaintiff.
plaintiff.

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Infringement And Passing-Off
Two
Twotypes
typesofofremedies
remediesavailable
availabletotothetheowner
ownerofofaatrademark
trademarkfor
forunauthorized
unauthorized
use
useofofhis
hisororher
hermark
markororitsitsimitation
imitationby
byaathird
thirdparty.
party.

‘An action for passing off ' in the case of an unregistered trademark
‘An action for passing off ' in the case of an unregistered trademark
 Common law remedy
Common law remedy
 Not sufficient to prove that the mark is identical or deceptively
Not sufficient to prove that the mark is identical or deceptively
similar
similartotothe
theregistered
registeredmark
mark; ;should
shouldbe
belikely
likelytotodeceive
deceiveororcause
cause
confusion.
confusion.
 In this case, the use of the mark by the defendant is likely to cause injury or
In this case, the use of the mark by the defendant is likely to cause injury or
damage
damagetotothe
theplaintiff’s
plaintiff’sgoodwill
goodwill

The rule followed is ‘priority in adoption prevails over priority in

registration’.

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 International Usage Of Trademarks
 Use Of Trademarks In Foreign Countries
 Use Of Trademarks In Foreign Countries
 Trademark rights granted on a country-by-country basis.
Trademark rights granted on a country-by-country basis.
 An Indian registration provides protection only in India and its territories.
An Indian registration provides protection only in India and its territories.
 In order to protect a mark in other countries, the owner must
In order to protect a mark in other countries, the owner must
seek
seekprotection
protectioninineach
eachcountry
countryseparately
separatelyunder
underthe
therelevant
relevantlaws.
laws.

 International Trademark Protection

 International Trademark Protection
 No system wherein a single trademark application sufficient to
No system wherein a single trademark application sufficient to
protect
protectthe
thetrademark
trademarkright
rightinternationally.
internationally.
 Paris convention* provides certain privileges to member countries
Paris convention* provides certain privileges to member countries
inintrademark
trademarkregistration.
registration.

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Copyrights
Copyright
Copyright: :protection
protectiongiven
giventhroughout
throughoutthe
theworld
worldtotocertain
certainoriginal
originalworks
worksofof
authorship,
authorship,including
includingtext,
text,pictures,
pictures,music,
music,etc.
etc.
Exclusive right to duplicate, distribute and create derivative works
Exclusive right to duplicate, distribute and create derivative works
from
fromhis
hiswork.
work.
Protects the form of expression rather than the subject matter of
Protects the form of expression rather than the subject matter of
the
thewriting.
writing.For
Foreg.
eg.description
descriptionofofaamachine
machine   

Following
Followingclass
classofofworks:
works:
Original literary, musical, dramatic and artistic works.
Original literary, musical, dramatic and artistic works.
Cinematograph films
Cinematograph films
Sound recordings
Sound recordings
Computer programmes  
Computer programmes  
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 Use Of The "©" Symbol

 Use copyright notice to alert the public of the claim of copyright in a work
 Use copyright notice to alert the public of the claim of copyright in a work

Not necessary to have a registration to use the designations

Not necessary to have a registration to use the designations
Highly advisable to incorporate a copyright notice
Highly advisable to incorporate a copyright notice
like
likethe
thesymbol,
symbol,letter
letter"c"
"c"ininaacircle
circleororthe
theword
word"Copyright"
"Copyright"
followed
followedby
byname
nameofofcopyright
copyrightowner
ownerand
andyear
yearofoffirst
firstpublication.
publication.
For
Forexample,
example,©©ipfirmsdirectory
ipfirmsdirectory1999.
1999.

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 Patent

 Patent for an invention is the grant of a property right to the inventor,

issued by the Patent and Trademark Office.

 The term of a new patent is 20 years from the date on which

the application for the patent.

 For Drugs and Food items, it is only 5 years from the date of sealing

or 7 years from the date of application.

 What is granted is not the right to make, use, offer for sale,

sell or import, but the right to exclude others from making,

using, offering for sale, selling or importing the invention

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 Geographical Indications (GIs)

 An indication that the particular goods have originated from or are manufactured

in a particular territory

 Protection of GIs - one of the most contentious intellectual property right (IPR)

issues in the realm of the WTO. generating significant controversies,

 Number of world renowned GIs including 'Darjeeling' and 'Basmati'.

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Famous GIs Of India

 Textiles: Banarasi silks, Pochampalli saris, Mysore silk saris,

Chanderi silk saris (MP)

 Carpets: Kashmiri carpets
 Grains: Basmati rice
 Tea: Darjeeling tea , Nilgiri tea, Assam tea
 Fruits: Alfanso mangoes
 Pearls: Hyderabad pearls
 Chappals: Kolhapuri chappals, Jodhpur chappals
 Incense sticks: Mysore agarbattis

 Food: Hyderabadi biryani, Lonavla chikkis.

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