IPR Flashcards
trademark act date
1999
patents act date
1970
copyright act
1957
designs act date
2000
GI ACT date
1999
patent time period
20 years
requirements of a patent
new non obvious useful and has industrial application + has to be an invention
trademark time period
first given for 10 years extendable for indefinate period post 10 years upon paying the presdcibed fee. if not used continuously for 5 years, withdrawal is permitted
copyright meaning
exclusive right to reproduce artistic work or authorise its reproduction
conditions of copyright
fixation and originality
which IP policy mentions in its objectives introducing a legislation for trade
secrets.
National IP Policy 2016
Nature of IP
- intangible having tangible expression
- limited monopoly
- dual system of award
- territorial
- bundle of rights
first formal legislation under TM
1940
prior to 1940 how were TM’s protected and the remedy was under which act
under registration act
remedy - under specific relief act + even had criminal remedies
act post 1940
trade and mercantile mark act 1958 - post independance
1958 act was a conseuqnece of what
TMs Enquiry Committee’s (headed by
Justice Rajagopala Ayyangar)
TRIPS date
1998
IPAB
intellectual property apellate board
court procedure for the disputes that take place - Disputes that take place during registration:
eg. - when registrar refused to accept IP application
earlier HC usd to hear now IPAB hears
court procedure for the disputes that take place - acts of infringement and violation
standard procedure district court - HC - SC
when did teh TM Act come into effect
15th sept 2003
Functions of a TM
- identifies the origin
- assures unchanged quality
- advert
- creates images for products
trademark def section
2(1)(zb)
- capable of being represented graphically
- capable of being distringuished from from goods of others
scheme of the act
13 chapters and 159 sections
schedule defining the classes of services and goods
The 4th Schedule provides 35 classes
(1-34 for goods and 35 for services) of goods and services.
schedule classificying is in line with which agreemet
NICE agreement 1957
difference between ordinary marks and well known marks
ordinary marks - protection within a class
well known mark - protection across classes
mark def
2(1)(m) - inclusive def
includes a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, shape of goods, packaging or combination of
colours or any combination thereof.
unconvention TM
smell sound taste
what is trade dress and did india cover it
trade dress - vsiual apperance
earlier act didn’t recognize it but currently shape colours etc. are covered
post trademark registration remedy
infringment
no registration of trademark remedy
passing off tort law
Colgate Palmolive Company and anr. v Anchor Health and Beauty Care Pvt
Ltd (2003)
application of 1958 act
remedy for infringement of trade dress - passing off
reason: trade dress wasn;t recognized under the 1958 act
service def
2(1)(z) - service available to potential consumers
deceptively similar
2(1)(h) - causes confusion and is likely to decieve
trade description
2(1)(za)
1. quantity and measurement
2. standard of quality
3.
collective mark
2(1)(g)
certification mark
2(1)(e)
well known mark
2(1)(zg)
stages of registration
Filing
Numbering
Search
Advert
Opposition
Acceptance
Issue
tages
role of numbering
useful to probve the existence of a prior use of the mark
search procedure in teh filing of registration
registrar checks under section 9
which princip;es are followed in the opposition proceedinfs
PNJ + Section 11 is imp
who can file opposition to registration
section 21 1999 act - any person
section 9
absolute grounds for the rejection of TM
9(1)
1. no distinctive character
2. descriptive marks
3. customary marks
exception: prior to registration it has acquired well known mark status
9(2)
1. cause confusion or decieve
2. hurt the religious sentiments
3. contains scandalous or obscene matter
4. prohibited under emblems and names act
9(3) - shapes
1. shape of goods from the nature of the goods themselves
2. shape necessary to obtain a technical result
3. shape giving substantial value to the goods (if it gives functional value not allowed. only aesthetic value allowed.)
CASE
The Imeperial Tobacco v Registrar of TM- AIR 1977 Cal
geographical name can only be registered as a TM if it acquires distinctiveness, and there is a required a STRONG evidence of distinctiveness. however “shimla” hasn’t acquired distinctiveness for tobacco products registration was disallowed.
section 9(1)(b)
C 4- M/S pk overseas Pvt Ltd v. KRBL and anr.
tm word: bemisal
bemisal, while denotes quality has acquired distinctiveness (bcs of good sales) thus TM granted.
test: sales figures could be used as a determinant for whether it has acquired distinctiveness.
C 5- Sri Vishnu Cement Limited v. B.S. Cement Private Limited
vishnu not allowed bcs section 9(2)(b) will hurt religious sensibilities
significance of section 9
used by the registry to see whether TM can be registered
what comes under industrial property as per classification provided by WIPO
patents, trademarks, industrial designs and GI’s
section 11(1)
what is an earlier TM
- date of application earlier
- well known
deceptive similarity
2(1)(h) - resembles so to likely cause confusion or decieve
Cadila pharmacueticals case
deceptive similarity
- court takes into account POV of avg consumer
-
what is the standard when considering deceptive similarity
confusion that may be caused when one mark exists and not the other
deceptive similarity is a ground to oppose the following
- oppose TM registration
- infringement and passing off
- challenging validity of TM
- ground for rectification
what are the kinds of deceptive similarity
visual similarity
phonetic similarity
conceptual similarity
structural similarity
Bhole baba Milk food Industries v. Parul Food specialties (2011) (Delhi DB)
the TM is not for the word krishna but for the logo KRISHNA word in a particular font and style
thus TM protected
C 8- Proctor and Gamble v Joy Creators
what are the grades of similarity and how much does protection extend to them
identical - same good and service - not allowed
similar - same good and service - not allowed
dissimilar - not the same good and service - only not allowed in well known TM’s.
criteria of similarity laid down by which case and what all
cadila case
1. nature of mark
2. degree of resemblance
3. nature of goods
4. kinds of purchasers
5. mode of purchasing
C 9- S.B.L. Ltd. vs Himalaya Drug Co. on 15 July, 1997
marks to be considered as a whole
LIV-T similar to LIV-52
defendant restrained from using LIV independantly, can use it as a prefix
Franco Indian Research Pvt. Ltd. vs Unichem Laboratories Ltd.
2005 (30) PTC 131 (Bom
even if the adoption is bona fide but is likely to cause confusion, the court will protect the rights of the earlier TM.
what was the earlier procedure to get the status of a well known TM
if you are in procedure before trhe court or the registrar and they say that the TM is wellknown, you would get the status.
C 11- Rolex SA v. Alex Jewellery Pvt. ltd and Ors. (2009)
price is not a defence to the use of a well known TM
rolex v. alex
rolex won
C 12- Warner Bros. Entertainment Inc. v Harinder Kohli and ors (2008)
point to note to determine deceptive similarity is the target audience
C 13- Tata Sons Ltd v. Manoj Dodia and Ors (2011)
10 factors to be considered while determining well known trademark
1. 1. the extent of knowledge of the mark to, and its recognition by the relevant public;
2. the duration of the use of the mark;
3. the extent of the products and services in relation to which the mark is being used;
4. the method, frequency, extent and duration of advertising and promotion of the
mark;
5. the geographical extent of the trading area in which the mark is used;
6. the state of registration of the mark
7. the volume of business of the goods or services sold under that mark;
8. the nature and extent of the use of same or similar mark by other parties;
9. the extent to which the rights claimed in the mark have been successfully
enforced, particularly before the Courts of law and trademark
registry and
10. Actual or potential number of persons consuming goods or availing services being sold under that brand.
continuous prior use is protected under which section
section 34
section 12
- honest concurrent use protected
- implied condition
3.
C 14- Goenka Institute Of Education & … vs Anjani Kumar Goenka & Anr.
honest concurrent use upheld
C 15- Champagne Moet and Chandon v. UOI
well known trade mark section def
2(1)(zg) - in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services
that the use of such mark in relation to other goods or services would be likely to be taken as
indicating a connection in the course of trade or rendering of services between those goods or services
and a person using the mark in relation to the first-mentioned goods or services.
infringement section
section 29
requirements of infringement
- plaintiff must be registered
- the defendant must be using a mark deceptively similar
- the use must not be accidental, but in the course of trade
section 27
no action for infringement of unregistered TM
dilution section
29(4)(c) - the registered trade mark has a reputation in India and the use of the mark without due cause
takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade
mark.
reckitt and coleman of india v. MP Ramchandran and anr.
can use exageraton or wronf statements to advertise his own goods, but cannot disparage the goods of another.
Who is the Registrar of Trademarks?
statutory authority appt by the central govt under section 3 of the TM Act
when was TM registry est
1940
which section provides for the TM registry
section 5
essentials to dilution of trademark
- other TM similar
- class of goods or service may be different
- registered TM is well known
cases for dilution
- daimler benz
- bata india batafoam
daimler benz case
defendant (undergarment company) cannot dilute the reputation of benz
bata india v. pyarelal
decptive similiarity + dilution (injury to plaintiff’s reputation) - held by the courts
section 29 scheme
- deceptively similar goods
- likely to cause confusion
- well known marks
comparitive advertising resulting in TM violation
section 29(8)
cases for comparitive advertising
1.
reckitt coleman v. MP Ramachandran
- can say goods are best
- can say goods better than competitiors
- can list the advantages
- cannot say company X’s products are bad
- cannot defame company X
threshold for remedy under section 29 infringement
only need to prove deceptive similarity
threshold for remedy under passing off
- whther gaining advantage
- whether plaintiff has est consumer base
- misrepresentation
- damage caused to plaintiff
- confusion among the consumer base
- irreperable damages for plaintiff
cases for passing off
- sardar baksh
- sm dychem
twin test of deceptive similiarity
- similar or identical tm
- similar product
three theories for IPR protection
- labour - john locke
- utilitarian - bentham
- personality - george hegel and kant
labour theory of property
john locke: everyone deserves the fruits of their labour
two thesis:
1. fruits of labour
2. labour +unowned property = person owning that property
utilitarian theory of property
bentham: IP rights
js mill: patent protection
personality theory of property
george hegel and kant
invention is the property of the person who has conceptualised and created it.
TRIPS signing
april 15th 1994
when did india ratify TRIPS
1st january, 1995
paris convention
1883
in which case first time dilute word was used
daimler benz 1994
position pre 1999 and post 1999
pre 1999: passing off
post 1999 - infringement
Castrol v. iqbal singh chawla
CASTROL chawla - trade dress was not registered hence only action was passing off
International foodstuffs v. palr products pvt ltdInternational foodstuffs v. palr products pvt ltd
derry and dairy - no confusion will be caused between the two as one is for ice cream and other is toffee, thus no injunction granted.
h&m v. HM Megabrands -
infringement as HM megabrands was using same colour scheme
Starbucks v. sardarbaksh -
infringement due to deceptive similarity
Bhole baba milk food v. parul food
- krishna - religious sentiments - 9(2)(b)
Rolex v. alex
- well known mark -
Warner bros v. harindar kohli - hari puttar -
consumer base/target audience very different thus no confusion
Tata sons v. manoj dodia -
1- factors for determining what is a well known mark
Goenka institute v. gd goenka
- honest concurrent use
NR dongre v. whirlpool
- transborder reputation also taken into acc
Moet chandon v. uoi - champagne -
no likelihood of confusion - honest concurrent use
Colgate palmolive -
trade dress - ppl of ordinary intelligence would consider the colgate box as red and white tin
Hindustan dev corp v. deputy registar
- RASOI - reference must be direct
Imperial tobacco case
- shimla - distinctiveness threshold v. strong
Ms pk overseas v. krbl ltd
- bemisal - long continuous use of the word bemisal has acquired distinctiveness.
Shri vishnu cement -
vishnu without lord was seen as an ordinary name thus allowed
Proctor and gamble v. joy creators
- olay won total effects
Franco indian reserve
- even if bona fide not allowed if causes confusion
Relaxo rubber
- use of TM in a class not covered by registration
Daimler benz
- dilution
Bata foam case
- dilution
Durga dutt:
look at trademark as a whole and not just focus on the part that is common
Sm dychem v. cadbury
- dissimilarities
Cadila healthcare
- similarities - principles to decide deceptively similar
11 Clause 1
Identical to earlier TM + used for similar goods and services
Similar to earlier TM + used for identical/similar goods and services
Even if they do not get confused, but there is a likelihood of confusion of linkage between the earlier TM
11 Clause 2
Trademark belonging to a different good or service can also be rejected if it is identical or similar to an earlier trademark, if that TM has acquired the status of a well known TM .
Protection extends to well known trademarks in all classes of goods and services
11 Clause 3
- use in india is prevented due to
- Any law - especially the law of passing off
Law of copyright
11 Clause 4
Consent may be given by the proprietor of an earlier trademark + the registrar may note it under special circumstances under section 12.
11 Clause 5
Clause 5
Registrar will not reject the trademark unless there is opposition to it
11 Clause 7 -
determination of recognition in the relevant section of public
Number of actual/potential consumers
Number of persons involved in the channels of distribution
The business circles dealing with goods and services
11 Clause 6 -
how will the registrar determine what is a well known trademark
Knowledge and recognition of a trademark in the relevant section of public
Duration, extent and geographical area of use
Duration extent and geographical area of promotion
Registration extent and applications for registration
Recognition of TM in other courts or registrars.
11 Clause 8
n.
If trademark is considered well known in any one particular section by court or registrar - the registrar will consider the TM as well known.
11 Clause 11
Clause 11
If trademark is registered in good faith while disclosing all the material information + right to TM was acquired prior to the commencement of this act
Nothing will affect the validity of that trademark on the ground that it is identical to a well known trademark
11 Clause 9
- what is not relevant in considering well known trademarks
Trademark is not used in india
Trademark is only used in india
Trademark not registered in india
No application for registration in india
No need for international well known status
Does not have to be known to the public at large, only the target/relevant industry as to know it
11 Clause 10
Clause 10
Obligation on registrar to protect a well known trade mark
Take into consideration if there is any bad faith involved
9(1)
9(1)(a) - distinctive character
9(1)(b) - kind quality quantity
9(1)(c) - consists excuslively of those words that have become customary in the industry
9(2)
9(2)(a) - cause confusion
9(2)(b) - hurt religious sentiments
9(2)(c) - scandalous or obscene matter
9(2)(d) - prohibited under emblems and names act
