session 3 trademarks 1

8/4/2019 Session 3 Trademarks 1

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Trademarks-any sign...capable ofdistinguishing the goods or

services produced or provided byone enterprise from those of otherenterprises.


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TRADEMARKS

A trademark provides protection to the ownerof the mark by ensuring the exclusive right touse it to identify goods or services


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Trademark

Any distinctive words, letters, numerals,

drawings, pictures, shapes, colors,

logotypes, labels or combinations

Advertising slogans, audible signs, threedimensional signs (in some countries)


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Examples


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TERM OF TRADEMARK

The period of protection varies, but a trademarkcan be renewed indefinitely beyond the timelimit on payment of additional fees


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What are Trademarks for? Identify a product

Distinguish it from other identical or similar

products Branding and Marketing strategies

Image

Reputation

Trust Goodwill

Emotional attachment


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Why should a company protect itstrademark(s)?

Exclusive right to prevent others from marketing

identical or similar products under the same or

confusingly similar mark

Easier to license and franchising network


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How can a company protect itstrademark(s)?

Registration

use


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Is the registration of trade name ofcompany sufficient?

Trade name is full name of business

It identifies company Trademark is the sign that distinguishes the

products of company

Registration of trademark is not compulsory but highly advisable


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Reasons for rejection of application

Absolute Grounds Generic terms (CHAIR to sell chair)

Descriptive terms (SWEET for chocolates) Deceptive trademarks (COW for margarine) Marks considered to be contrary to public order or

morality

Flags, armorial bearings, official hallmarks,emblems of states and international organizations

Relative Grounds Conflict with prior trademark rights


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Selecting or Creating Trademark

Legal requirements

Trademark search

Easy to read, write, spelland remember

Undesired connotations

Domain name


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Coined or fanciful words

Invented words without any intrinsic

Or real meaning


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Arbitrary marks

Words that have a meaning that has no relationto the product they advertise


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Suggestive marks

Marks that hint at one or some of the

Attributes of the product


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Registering a trademark step-by-step

The application

The trademark office

Formal examination

Substantive examination

Publication and opposition

Registration renewal


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Costs associated with Trademarkcreation, protection & use Creation of logo or word to be used as trademark

Conducting a trademark search

Registration process


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Validity of Trademark

In a large number of countries, registeredtrademarks are protected for 10 years and are

renewable on chargeable basis


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Trademark classification system

INTERNATIONAL CLASSIFICATION OF GOODSAND SERVICES

International Patent Classification (IPC) Nice Classification

Locarno Classification

Vienna Classification

Most widely used system is Nice Classification.

34 classes for goods

11 classes for services
http://www.wipo.int/classifications/ipc/en/http://www.wipo.int/classifications/nice/en/http://www.wipo.int/classifications/locarno/en/http://www.wipo.int/classifications/vienna/en/http://www.wipo.int/classifications/vienna/en/http://www.wipo.int/classifications/locarno/en/http://www.wipo.int/classifications/nice/en/http://www.wipo.int/classifications/ipc/en/http://www.wipo.int/classifications/ipc/en/


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34 classes for goods

Class 1--- For Chemical

Class 2----Paints and preservative

Class 3----Bleaching preparations and othersubstances for laundry use

Class 4---- Industrial oils and greases; lubricants

Class 5----- Pharmaceutical and veterinarypreparations; sanitary preparations

Class 6------ Common metals and their alloys;metal building materials


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Class 7 Machines and machine tools; motors and

engines (except for land vehicles); Class 8 Hand tools and implements (hand-

operated);

Class 9 Scientific, nautical, surveying,photographic, cinematographic, optical,weighing

Class 10 Surgical, medical, dental and veterinary

apparatus Class 11 Apparatus for lighting, heating, steam

generating

Class 12 Vehicles; apparatus for locomotion by

land, air or water


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Class 13 Firearms; ammunition and projectiles;

explosives Class 14 Precious metals and their alloys and

goods in precious metals

Class 15 Musical instruments

Class 16 Paper, cardboard and goods made fromthese materials

Class 17 Rubber, gutta-percha, gum, asbestos,

mica Class 18 Leather and imitations of leather,

Class 19 Building materials (non-metallic);

Class 20 Furniture, mirrors, picture frames;


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Class 21 Household or kitchen utensils andcontainers

Class 22 Ropes, string, nets, tents, awnings,tarpaulins, sails

Class 23 Yarns and threads, for textile use.

Class 24 Textiles and textile goods, not includedin other classes; bed and table covers

Class 25 Clothing, footwear, headgear.

Class 26 Lace and embroidery, ribbons and

braid; buttons, hooks and eyes

Class 27 Carpets, rugs, mats and matting

Class 28 Games and playthings; gymnastic and

sporting


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Class 29 Meat, fish, poultry and game; meatextracts

Class 30 Coffee, tea, cocoa, sugar, rice, tapioca,

Class 31 Agricultural, horticultural and forestryproducts and grains

Class 32 Beers; mineral and aerated waters andother non-alcoholic drinks

Class 33 Alcoholic beverages (except beers).

Class 34 Tobacco; smokers' articles; matches


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11 Classes for Service Class 35 Advertising; business management;

business administration; office functions

Class 36 Insurance; financial affairs; monetaryaffairs; real estate affairs.

Class 37 Building construction; repair;installation services.

Class 38 Telecommunications. Class 39 Transport; packaging and storage of

goods; travel arrangement.

Class 40 Treatment of materials.


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Class 41 Education; providing of training;entertainment; sporting and cultural activities

Class 42 Scientific and technological servicesand research and design relating thereto

Class 43 Services for providing food and drink;

temporary accommodation. Class 44 Medical services; veterinary services;

hygienic and beauty care

Class 45 Legal services; security services for the

protection of property and individuals


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Protecting trademark abroad

Trademark is territorial right

Registering trademark abroad

National route

Apply to each country

Regional route

Member countries of regional trademark system

International route

Madrid system administered by WIPO


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Advantages of Madrid system

A single international application

In one language

Subject to one set of fees and deadlines

http://www.wipo.int/madrid


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Types of MarksTrademark Marks used to distinguish certain goods as

those produced by a specific enterprise.

Service marks Marks used to distinguish certain services as those

produced by a specific enterprise.

Collective marks Marks used to distinguish goods or servicesproduced or provided by members of an association

Certification marks Marks used to distinguish goods or services thatcomply with the set of standards and have been

certified by a certifying authority

Well-known marks Marks that are considered to be well known in themarket and as a result benefit from strongprotection.


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Service marks

Marks used to distinguish certain services as thoseproduced by a specific enterprise.


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Collective marks

Marks used to distinguish goods or servicesproduced or provided by members of an

association

the "CA" device used by the Institute of Chartered Accountants.the mark "CPA", used to indicate members of the Society of Certified PublicAccountants. + for Doctors and + for .


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Certification marks

Marks used to distinguish goods or services thatcomply with the set of standards and have been

certified by a certifying authority


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Certification marks are used to define standards.The issue of certification marks indicates that

the product has gone successfully gone throughcertain standard of test specified for a particularproduct. It assures the consumer that themanufacturers have gone through regularprocess of audit to ensure the standard ofproduction. For example- Toys, Electrical goods,etc. have such marking.


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Well-known marksMarks that are considered to be well known in the

market and as a result benefit from strong

protection.

Well-known international trademarks such asCoca-Cola, Microsoft, IBM and Google


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Using Trademarks - service mark

- trademark

- registered trademark


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PROCESS OF TRADEMARKS

REGISTRATION For registration of a trademark must be filed an

application with the appropriate national or

regional trademark office The application must also contain a list of goodsor services to which the sign would apply.

Finally, the rights applied for cannot be the sameas, or similar to, rights already granted to

another trademark owner. Through search and examination by the

national office


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FILING REQUIREMENTS Applicant :-

Applicant means any individual or legal entity.

Application :-

One application in prescribed form for one design in one class with prescribed fee.

Representation:-Four sets of Representation with the different views of the article for clearunderstanding the nature of article.

Declaration :-

Statement of novelty and disclaimers.

Power of Attorney:-(If required).


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Filing of Design Application KOLKATA H.O. (Receiving &

Examination)

DELHI (Receiving Centre)

MUMBAI (Receiving Centre)

CHENNAI (Receiving Centre)


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Particulars required for application

Application form 1 with requisite fee ofRs. 1,000/-

Four sets of Representation sheets indurable paper of A4 size, pasted with thephotographs/drawings of the article fromdifferent angles.

Power of attorney (if required)


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The Trade Marks ActThe Trade Marks Act 1999

The Trade Marks Rules 2002


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BRAND


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DECEPTIVELY SIMILAR


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FAMILY RESEMBLACE


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HEALTHY COEXISTANCE

session 3 trademarks 1

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