trademarks Flashcards
UNCONVENTIONAL MARKS
COLOUR TRADEMARKS E.G. CADBURY’S PURPLE WRAPPING
SOUND TRADEMARKS E.G. FOUR NOTE BELL SOUND OF BRITTANIA
surnames as TM
Lack of Distinctiveness: Surnames by themselves often lack a unique character, making them harder to register as trademarks.
Famous Names: If a well-known name is used for products/services unrelated to the person’s fame, consumers might think the products are linked to the person rather than a business offering them. For example, names like Ford, Mahindra, and Bajaj are used for both brands and individuals.
Trademark Protection: A name alone cannot be registered as a trademark solely to protect someone’s reputation or brand. For instance, “Sanjeev Kapoor Khazana” is trademarked under a specific category (Class 29) related to food products.
Section 14 – Consent: If someone else tries to trademark a famous person’s name, it can be objected under Sections 11(10) and 14 unless they have the person’s consent.
purpose of trademarks
TO IDENTIFY THE ORIGIN OF THE PRODUCT/SERVICE.
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TO DISTINGUISH THE PRODUCT/SERVICE OF THE PROPRIETOR FROM THOSE OF OTHERS.
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TO GUARANTEE THE QUALITY OF THE PRODUCT/SERVICE, AND
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TO ADVERTISE THE PRODUCT/SERVICE.
process of registering trademark in india
REGISTER WITH THE REGISTRAR OF TRADEMARKS IN INDIAN TRADEMARKS
REGISTRY - CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADEMARKS
check if chosen trademark is AVAILABLE
CLASSIFY AND PROPERLY SPECIFY THE GOODS AND SERVICES
APPLY TO THE APPROPRIATE TRADEMARKS REGISTRY WITH APPROPRIATE FORMS AND FEES
REPLY TO ANY OBJECTIONS AND QUERIES RAISED BY THE TRADEMARKS REGISTRY
Journal publication once app is accepted - ADVERTISEMENT (4 MONTHS FOR OPPOSITION)
respond to oppositions if any within 2 months of notice of opposition
Evidence in reply by Opponent Within 1 month of receipt of evidence and hearing
final: trademark registration
oppositions can be made by anyone
benefits of trademark registration
REGISTRATION IS PRIMA FACIE EVIDENCE OF PROPRIETORSHIP OF THE TRADEMARK
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IT GIVES THE EXCLUSIVE RIGHT TO USE THE TRADEMARK IN RESPECT OF GOODS/SERVICES; AND TO TAKE LEGAL ACTION IN CASE OF INFRINGEMENT
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THE REGISTERED PROPRIETOR MAY ASSIGN OR LICENSE THE TRADEMARK AS ANY OTHER PROPERTY
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THE REGISTERED PROPRIETOR CAN ENJOY THE GOODWILL ASSOCIATED WITH REGISTERED TRADEMARK FOREVER, IF THE MARK IS RENEWED FROM TIME TO TIME
The Nice Classfication
international system used for classifying goods and services for the purposes of registering trademarks across different countries
classes 1-34 are for goods, 35-45 are for services with broad header for each class
who can apply for TM
self-acclaimed PROPRIETOR OF TM USED OR PROPOSED TO BE USED
where to file TM
TM REGISTRY WITHIN WHOSE TERRITORIAL LIMITS THE PRINCIPAL PLACE OF BUSINESS IS CARRIED OUT
delhi, mumbai, kolkata, chennai, ahmedabad
2 grounds of refusal of TM registration
- absolute - intrinsic nature of the trademark itself, regardless of any other trademarks.
- relative - conflicts with existing trademarks
absolute grounds of refusal
- Lack of Distinctiveness: Trademarks that can’t distinguish one person’s goods or services from another’s.
- Descriptive Marks: Trademarks that simply describe the product or service, such as its type, quantity, quality, origin, or purpose.
- Common Terms: Marks that have become common language or are widely used in the trade.
Exception: A trademark can still be registered if, before applying, it has become distinctive through use or is a well-known trademark.
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Deception or Confusion: Trademarks that are likely to deceive the public or cause confusion.
- Example: “PATA” being too similar to “BATA.”
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Religious Sensitivity: Marks that could offend religious beliefs.
- Example: Using names like “Jesus,” “Ramayan,” or “Quran.”
- Scandalous or Obscene Marks: Trademarks that are offensive or inappropriate.
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Prohibited Marks: Marks that are prohibited by law, such as symbols protected under the Emblems and Names (Prevention of Improper Use) Act, 1950.
- Example: The “Ashoka Chakra.”
relative grounds for refusal
Identical or similar, either visually or phonetically, to mark in the same category of G/S, but also:
- if it resembles a very popular brand in another category
- likely, not just possible, that consumers will get confused
e.g. BOAT and BOULT headphones - Delhi High Court - likelihood of confusion
procedure for international registration under madrid protocol
- Applicant Files IA
- Office of Origin verifies & certifies IA and sends it to IB, WIPO.
- IB of the WIPO does formality examination.
- If OK, registers, publishes in WIPO gazette and sends to DCPs. Communicates Provisional refusal received from DCPs to OO & the applicant. Maintains portfolio.
DCP1, DCP2, DCP3 (Designated Contracting Parties)
Designated contracting parties examine IA as per their law.
In case of objection/opposition, communicate Provisional Refusal to WIPO for evaluation & the holder’s response.
In case of no objection, give protection of the trademark as registered with their office.
what is the madrid protocol?
international treaty that facilitates the process of registering trademarks in multiple countries through a single application
licensing trademarks
SEC 48 TO 55 - TM owner allows third party to use TM to sell goods/services under for a fee while retaining ownership
particulars needed:
1) is agreement exclusive
2) duration of agreemnent
benefit of increasing TM and brand exposure
may be cancelled if:
1) used in a way other than agreed
2) failure to disclose material facts
3) change of circumstance
THE SAID MARK AND MAKING BRAND POPULAR
assignment of trademark
ownership of TM transferred from one party to another either WITH or WITHOUT goodwill of the business, which is …. (reputation that draws consumers in)
With goodwill: assignee can use TM for ANY goods or services (even in diff category) including those already in use by assignor
without goodwill: cannot use it for g/s already being used by assignor
