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TRADE MARKS

TRADE MARKS

INTRODUCTION

Success in the business world depends largely on the message you convey and the image you
project. This was the case 50 years ago and is even truer in the competitive global market place of today.
You may have an excellent product or service to offer, but if people cant pick you out easily in the
crowd, you will be probably over looked in favour of a firm with a stronger presence.

Certain brand names that dominated the market 50 years back still are leaders today. Thats
why company spend millions of dollars to increase their corporate images. They research, design,
market and protect a name, logo or package design as much as the physical product itself.

A key way of protecting your corporate identity is through a registered trademark. It verifies
the exclusive right you have established through use of a word, symbol, style or combination of these.

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DEFINITION

A trademark is any word, name ,symbol or device that a manufacturer places on his
goods manufactured or sold by others
(or)
A trademark is a distinctive word ,phrase ,logo ,internet domain ,graphic symbol ,slogan or other device
that is used to identify the source of a product and to distinguish a manufacturers or merchants
products from others.

FUNCTIONS

Indicates the origin of goods


May serve as a guarantee of the quality of goods
It creates and maintains demand for a product. Thus, it may enhance the market potential.
In pharmacy, trade marks on a preparations and brandings develop brand loyalty among the
physicians and patients.

FOR REGISTRATION THE REQUISITES ARE

Should not be similar to the already registered to avoid confusion.

Should help in identifying the goods and also in distinguishing from other goods.
Should be neither descriptive nor informative.
Should not be immoral or deceptive in nature.
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SALIENT FEATURES OF TRADEMARK
Multi class applications are allowed in India. However, statutory filing fees will be applicable for
each class.

Classification of goods and services is according to NICE classification (45 classes).


Prior use of the trademark is not mandatory for filing. Therefore, applications can be filed on a
'proposed to be used' basis.

Power of attorney is required (if filed through an agent/attorney)


Applications are examined as to registrability and availability based on existence of prior filed
applications. Once accepted, it is published in the Trademarks Journal and an opposition may be
filed by a third party within 3 months (extendable by one month). If no opposition is filed, the
registration certificate is issued thereafter.

A trademark may be subject to removal on the grounds of non-use, if it is not used for a
continuous period of 5 years.

The registration is valid for 10 years from the date of application and can be subsequently
renewed every 10 years by payment of renewal fees.

Priority can be claimed provided the application is filed within 6 months from the date of the
filing in the convention country.
VALIDITY OF A TRADE MARK
As long as they are in use, trade marks are protected. Trade marks can be lost in case
of non use or when it becomes a generic name of the product.
The validity of trade mark is tested by its proper use, not by the fact of registration.
Ownership of a trade mark is transferable by assignment and use there is able to be licensed.
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OTHER TYPE OF MARKS

These are of 4 types


1. Service marks
2. Certification marks
3. Collective marks
4. Trade dress

1. SERVICE MARK:

A service mark is the same as a trade mark ,but while trademarks promote products ,service
marks promote services and events. When a business uses its name to market its goods or services in the
yellow pages, on signs or in advertising copy, the name qualifies as a service mark
Eg- Amazon.com (retail website), jack in the box (fast food service), blockbuster (video rental
service), CBSs stylized eye in a circle (Television network service) and the Olympic games multi
colored inter locking circles (international sporting event).

2. CERTIFICATION MARK

A certification mark is a symbol, name or device used by an organization to give guarantee for
products and services provided by others. This type of mark may cover characteristics such as regional
origin, method of manufacture, product quality and service accuracy.
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Eg stilton cheese (a product from the stilton locale in England), carneros wines (from grapes
grown in the carneros region of Sonoma/napa countries)

3. COLLECTIVE MARK

A collective mark is a symbol, label, word, phrase or other mark used by members of a group
or organization to identify goods, members, products or services they render. Collective marks are often
used to show membership in a union, association or other organization.

The use of a collective mark is restricted to members of the group or organization that owns
the mark. If the group wants to identify its product or service, it must use its own trademark or service
mark.
Eg: The letters ILGWU on a shirt label is the collective mark that identifies the shirt as a
product of a member of the International Ladies Garment Workers Union. If, however, the ILGWU
wanted to start marketing its own products, it could not use the ILGWU collective mark to identify
them; the union would have to get a trademark of its own.

4. TRADE DRESS:
In addition to a label, logo or other identifying symbol, a product may come to be known by
its distinctive packaging.
Eg: Kodak film or the Galliano bottle and a service by its distinctive dcor or shape, such as
the dcor of Banana Republic Clothing Stores. Collectively , these types of identifying features are
commonly termed trade dress.
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FACTS TO BE CONSIDERED IN TRADEMARKS OR SERVICE MARKS:

Trademarks are words or phrases that are clever or unique enough to stick in a consumers
mind. Logos and graphics that become strongly associated with a product line or service are also typical.
But a trademark or service mark can also consists of letters , numbers, a sound, a smell, a color, a
product shape or any other non functional but distinctive aspect of a product or service that tends to
promote and distinguish it in the market place. Titles, character names or other distinctive features of
movies, television and radio programs can also serve as trade marks or service marks when used to
promote a service or product.
Eg sound of harley Davidson motorcycle, pink color of housing insulation manufactured by
owens corning and the shape of the Galliano liquor bottle.

DIFFERENCE BETWEEN A BUSINESS NAME AND A TRADE MARK OR SERVICE MARK:

The name that a business uses to identify itself is called a trademark. This is the name the
business uses on its stock certificates, bank accounts, invoices and letterhead. A business uses its name
to identify a product or service produced by the business from then the name is considered as trade or
service mark and used to protect the business if it is distinctive enough.
Eg; Apple computer corporation uses the trade name Apple as a trademark on its line of
computer products.

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Although trade names by themselves are not considered trademarks for purposes of legal protection,
they may still be protected under federal and state unfair competition laws against a confusing use by a
competing business

INTERNET DOMAIN NAME AS A TRADE OR SERVICE MARK:

A domain name, such as nolo.com, qualifies as a mark when it is used in connection with a
website that offers goods or services to the public. This includes all sites conducting e-commerce and
sites such as Yahoo.com which provide web-related services.

PROTECTION OF TRADEMARKS

The law protects trade marks by authorizing a trade mark owner to file a law suit to :
1) Prevent others from using it in a context where it might confuse consumers
2) Recover money damages from a some one who used the mark knowing that it was already owned by
some one else.

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The law also protects famous marks by allowing owners to take legal action to prevent others from
using the same or similar mark, and to avoid confusion to the customer even by chance .All trade marks
are not to meant to protect business since some trade marks does not concern with protection

INHERENTLY DISTINCTIVE MARKS:

Trademarks that are unusually creative are known as inherently distinctive marks. Typically, these
marks consists of
1) Unique logos or symbols

eg Mc Donalds golden arch and IBM symbol

2) Made-up words, such as Exxon or Kodak (called coined marks).


3) Words that create imaginative images in context of their usage called fanciful marks. Eg double
rainbow ice cream
4) Words that are surprising or unexpected in the context of their usage called arbitrary marks. Eg Time
magazine or Diesel for a book store.
5) Words that cleverly relate qualities about the product or service called as suggestive or evocative marks.
Eg - Slenderella diet food products.
TRADE MARKS OR SERVICE MARKS RECEIVING LEAST PROTECTION
Trade marks and service marks consisting of common or ordinary words are not considered
inherently distinctive and receive less protection under federal and state laws. Typical examples of trade
marks using common or ordinary words are
1) Peoples names such as Petes muffins or Smith graphics.
2) Geographic terms, such as Northern dairy or central insect control.

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TRADE MARKS
3) Descriptive terms that is, words that attempt to literally describe the product or some characteristics of
the product, such as Rapid computers, Clarity video monitors or Ice cold ice creams.

PROTECTION FUNCTIONS :

Serves as a link between the customer and the manufacturer. It enables the consumer to get closer with
the manufacturer and also demand damages if his reasonable expectations are not fulfilled. The famous
case of an Australian lady who consumed DISTIVAL, a new drug during her vacation in UK and later
gave birth to a deformed child in Australia is a case that illustrates the need for the customers to be able
to identify the manufacturer and expect some assurance of quality from the manufacturer.
Enables the manufacturer to distinguish his products from that of the others there by the customer is
aware of the advantages of using that particular product.

LAW OF TRADE MARKS


It deals with
1. Basis of acquisition of the rights that can be acquired in respect of the trade marks.
2. The mode of acquisition of such rights.
3. The method of transfer of those rights to others.
4. Nature of infringement of the above rights. And
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5. Remedies available for the infringed person.

Use of the trade mark is in itself an adequate proof of owner ship of the mark. However,
statutory registration gives additional protection for the trade marks. The main advantage of registration
under the act is that it serves as primary proof before investigation of trade mark of owner ship.

ATTRIBUTES THAT A TRADE MARK SHOULD POSSESS

a. It should be an invented work.


b. It should be distinctive.

ATTRIBUTES THAT A TRADE MARK SHOULD NOT POSSESS


a. It should not be deceptively similar to any other existing mark.
b. It should not be a descriptive of the goods.
c. It should not be a word that defines the nature of the product.
d. It should not be the name or surname of a person.
e. It should not be a geographical name.

The rights once acquired in a trademark are proprietary in nature. Such proprietary
Rights can also be acquired in a non-distinctive mark that is used in trade by the extinctive use of the
mark in relation to the goods in which the marks are being used, resulting in the mark becoming
distinctive of the goods and the manufacturer.
Eg: Marks /brands like Nagarjuna , Nilgiris fertilizers, Tajmahal tea etc.
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ESSENTIAL REQUIREMENTS FOR TRADE MARKS

a) Invented word:

One of the essential requirements for a trademarks to be registered is that the mark/ word has to
be an invented word. A mark that describes the product or the quality of the product cannot be registered
as a trademark.
Eg, the name TEA cannot be registered for coffee
The Indian courts have taken the view that for a word to qualify as an invented word must be:
1. Newly coined, so that it is unique and therefore can easily be identified and attached to the goods
in which it is used
2. It should convey no meaning
3. It should not give an indication of the type of goods to which the word relates

b) Distinctiveness:

A trade mark in order to qualify for registration should also be distinctive. That is to say that, it
must be adapted to distinguish the goods of the applicants from the goods of the others. Distinctiveness
should be apart of the mark itself. Sometimes the distinctiveness is acquired by the use of the mark

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itself. Basically, distinctiveness is a feature of originality of the mark. It ensures customers identification
of the mark with the specified product.

c) Deceptive Similarity:

Where the mark lacks distinctiveness, the natural effect is that it resembles or causes to
resemble with another mark. A trade mark is said to be deceptive similar to another mark if it slightly
resemble the another mark ,which cause confusion .If two marks are so deceptively similar that the
consumer is unable to distinguish one from the other, the whole object of the law of trade marks is lost.
Hence, if the mark is deceptively similar to a mark that is already in use, the register will not allow the
registration of the mark.

SOME OF THE FACTORS THAT HAVE BEEN IDENTIFIED TO CAUSE DECEPTIVE


SIMILARITY ARE:

1. Phonetic Similarity:

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It is said to occur if the names/sound of the mark are so similar that a customer who is well known of
the product only by name will not be able to appreciate the difference between the two names or marks.
Examples: Wipro and Epro, Arista and rysta, Lakme and likeme.

2. Visual Similarity:

Visual similarity is where two marks of two products are so similar that a consumer is lead to
believe that the good bearing both the marks belongs to same manufacturer. The similarity sought here is
distinguishable from a mere resemblance between two marks.
Examples: the most famous cases of visual similarity is that of the bounding cheetah and bounding
puma. Puma AG is the register proprietor of the mark of a bounding Puma. The trade mark was used in
respect of jewellery, leather goods, clothing and other fashion accessories. The company had filed a case
in the German courts against an application by Sabel BV to register a bounding cheetah device
together with the name Sabel in respect of similar goods.

3. Similarity in idea :
The object of disallowing marks bearing similar ideas is to ensure that one manufacturer does not
copy the idea of another manufacturer intelligently and pass it off, there by acquiring benefits on account
of illiterate or ill informed customers. Eg watermatic and acquamatic, surya and sun.

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4. Nature of marks :
In most situations, the court considers the type and nature of the industry and of the product, the
market for the goods, the competition and nature of customers and the impact of marks on the customers
before it concludes whether two marks are deceptively similar.
Eg the Delhi high court granted an exparte injunction to SmithKline Beecham Ltd which was the
registered owner of the mark Crocin against the use by Apar pharma of Hyderabad and Cyper pharms of
Delhi against the use of the word Crocinex. Both the marks were sought to be used for Paracetamol
tablets. The court held that the words were so similar that the attempt was to deliberately mislead the
public.

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