Trademark Act 1999

Dr. Anil Pethe

Dr. Anil Pethe

Trademark

Trademark is a visual symbol or representation in the form of word, device or label attached to the goods or applied to the articles of commerce for the purpose of indicating their trade origin & distinguishing them from similar goods manufactured by others. Trademark also includes shape of goods, their packaging & combination of colors.

Pharmaceutical Trademarks

Pharmaceutical Trademarks

Objectives of the Act

Providing for registration of TM for services, in addition to goods. Prohibition of registration of imitation of well known TM Amplification of factors to be considered for defining a well known mark To provide only a single register with simplified procedure for registration. Providing for registration of collective marks owned by association. Prohibiting use of someone else TM as part of corporate names.

Definition of Mark

It Includes device, word, brand, letter, heading, shape of goods, label, packaging or ticket, combination of colors, name, numerical shape of goods signature,

Definition of Trademark
TM as a mark capable of being represented graphically & which is capable of distinguishing the goods or services of one person from those of others & may include shape of goods, their packaging & combination of colors.

Types of TM

Words: Apple for computers; Arbitrary or fanciful designations: Coca-Cola, Nikon, Sony, NIKE, Easy Jet. Names: Ford, TATA, Hilton (hotel), Godrej Slogans: Fly me , for an airline; Devices: the star for Mercedes Benz, the flying lady for Rolls Royce Number: the 4711 cologne, Letters: GM, FIAT, BMW, KLM Pictures or symbols: Lacoste (small crocodile)

Trademarks can also be dependant on images or designs or indeed the combination of images and words. For example the Logo of the Open University in the UK is:

Functions of TM

It identifies the product & its origin eg. Brooke Bond It guarantees its quality. Eg. Brooke Bond tea is different from Taj mahal. It advertise the product. Eg. TM SONY is associated with electronic items, SONY represents quality of particular class of goods. It creates an image of the product in the minds of the public particularly consumer or the prospective consumers. Eg. M stands for the food item from American fast food chain MACDONALDS

Essentials of TM
Distinctiveness (It should be distinctive) A TM would be considered a good TM when it is Distinctive. It should not be deceptive.

Distinctive
It must by its very nature be able to distinguish goods & services. a good example would be the word apple. While Apple is a very distinctive TM for a computer, because it has absolutely nothing to do with computers, it would not be distinctive for actual apples. In other words, someone who grows & sells them could not register the word apple as a TM & protect it, because his competitors have to be able to use the word to describe their own goods. A TM is not distinctive if it is descriptive. It is descriptive if it describes the nature or identity of the goods or services for which it is used.

Types of Distinctiveness
Inherent Distinctiveness means the mark or get up is distinct itself from everything else & no one can claim the right to use it. Eg. A mark in the shape of an invented word like RIN

Acquired Distinctiveness means through use. Most of the TM acquire Distinctiveness through use.

Characteristics of Acquired Distinctiveness

Most of the TM acquire Distinctiveness through use. The TM Yashika, Hawkins, surf & LUX have acquired Distinctiveness through use & also distinctive due to inherent quality of their being invented words. The TM should preferably be an invented word. In fact the best TM are invented words. The TM, if a word or name, should be easy to pronounce & remember. For instance BATA for shoes, ZEN for car, SONY for electronics, FORD for car, HUTCH for mobile services. In case of device mark, the device should be capable of being described by single word.

Cont.

It must be easy to spell correctly & write legibly. It should not be descriptive but may be suggestive of the quality of goods. For eg. A mark A-1 would suggests superior quality. Avon cycles. It should be short, like RIN, ZEN, DEW, AXE

It should appeal to the eye as well as the ear.

It should satisfy the requirements of registration.

It should not belong to the class of marks prohibited for registration. Eg. A mark against the law or a mark prohibited under the emblems & names. (Prevention of inproper use act 1950.)

Deceptive

A deceptive trademark would be one that says that the goods for which it is used have certain qualities when they dont. An example would be the trademark Real Leather for goods that are not made of genuine leather.

Protection of TM in India

Registered TM are protected in India by 1. Civil remedies 2. Criminal proceedings 3. Administrative remedies

Protection of TM in India

Civil remedies When infringement occurs, then court (not lower than district courts) seal the property & profit & account. Criminal proceedings Complaint may be made against the person causing infringement. The actions under civil & criminal law can be initiated simultaneously. Administrative remedies Opposes the registration of deceptively similar TM. Even deceptively similar TMs registry can be cancelled.

Case Studies related to TM

Vs

Malaysias Federal Court has ruled that McDonalds trademark name was not violated by McCurry, a local Indian restaurant which is popular in Kuala Lumpur. McCurry, which opened in 1999, was sued by McDonald's in 2001. According to the owners of McCurry, the Mc prefix in the restaurants name stands for Malaysian Chicken Curry. The ruling by a three-member panel of the Federal Court ends all legal avenues for McDonald's to protect its name from what it said was a trademark infringement.

McDonald's will have to pay 10,000 ringgit ($2,900) to McCurry, a popular eatery in Jalan Ipoh on the edge of Kuala Lumpur's downtown. McDonald's lawyers refused to comment, except to say the company will abide by the judgment. McCurry lawyer Sri Devi Nair said the ruling means McDonald's does not have a monopoly on the prefix 'Mc,' and that other restaurants could also use it as long as they distinguish their food from McDonald's. "This is a precedent for everyone to follow," he said. A three-member Appeal Court panel had ruled in favor of McCurry Restaurant in April this year when it overturned a 2006 high court ruling that had upheld McDonald's contention.

Pepsi BLUE STROMed by Lanye

Lanye, a small beer producer
Local small-sized brewery to won claim of 3 million yuan as compensation against Pepsi Cola over trademark infringement its trademark named blue

storm
Pepsi made public statement to clarify Lanye is the original user of the trademark

Trademark Dispute, Cricket Beats GSM Cellular

Cricket Wireless, a low-cost mobile telephone service, recently won a trademark suit against GSM Cellular. GSM Cellular had been using the name Kricket and displaying is prominently on advertisements, banners, and retail displays. GSM failed to appear at hearings and has been accused of providing false testimony during the trial, leading the judge to issue summary judgment in favor of Cricket. Cricket was awarded $77,349.70 in compensation and a permanent injunction was issued against GSMs use of the Kricket name. On what would otherwise be a standard infringement case, the judge found that full compensation could be awarded, a move only allowed under federal law in exceptional trademark infringement cases, where the defendant acted maliciously, fraudulently, deliberately or willfully

LOreal in trademark dispute with Indian company

Indian wellness and beauty company VLCC is locked in a high court dispute with LOreal over the use of the Fuel brand to promote mens skin ranges in India. Both companies are now trying to sue one another over rightful ownership of the Fuel brand name in India, following VLCCs announcement back in October 2010, that it would take legal action against LOreal. The dispute hit the Delhi High Courts, and a hearing is expected in the next two weeks to determine who is the legitimate owner of the Fuel brand name in India, according to a report in The Economic Times. (09-Feb-2010)

VLCC has also hit New Delhi-based entrepreneur Mahesh Chehary with a lawsuit, claiming that it bought the trading rights to the Fuel name from him in 2006 after he trademarked the name in 2001. The brand currently generates annual sales of Rs 1bn ($215m) per year for the range that includes hair gel, shaving products and deodorant, VLCC claims. LOreal claims it also bought the trading rights to the name from the same entrepreneur in 2009, to promote its Fuel mens skin care range.

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