Trademark

A visual symbol applied to articles of commerce with a view to indicate to the purchasing public that they are the goods manufactured (or otherwise dealt in) by a particular person as distinguished from similar goods manufactured (or dealt in) by other persons.

Trademark

A visual symbol

applied to articles of commerce

to indicate the source

to the purchasing public

Trademark

Word, device, brand, name, letter, numeral, shape of goods, packaging,

combination of colours

functions of a trademark

1. Identifies the product and its origin

2. Guarantees unchanged quality

3. Advertises the product

4. Creates an image of the product

Trademark - statutorily

Must be used or proposed to be used in relation to goods or services

Trademark - statutorily

Must be capable of being represented graphically

TM - statutorily

Right of proprietorship in trademark can be acquired by:

a. registration (statutory right)

b. use (common law right)

What is a good trademark

• Easy to pronounce and remember (word)

• Easy to spell and write; short

• (Device) that can be described easily, such as by a single word or phrase

• Appeal to eye as well as ear

• Satisfies requirements of registration

• Must be suggestive, but not descriptive

essentially

The law of trademarks is based largely on two concepts:

1. Distinctiveness

2. Deceptive similarity

Distinctiveness

a mark has to be distinct in order that the purchaser is able to clearly differentiate the product from other similar products

Distinctive vs non-distinctive

• distinctive (fancy names, invented words, lesser heard words, words unrelated to trade): pepsi, coke, EXXON, WINDOWS, MICROSOFT: (cycle, tractor, axe)

• non-distinctive (descriptive word, surname, geographical name): Bajaj, Usha, Kentucky Fried chicken

deceptive similarity

• ‘competition success review’ vs competition• time vs samay (time in hindi – very recent case)• ellora clocks vs elora time pieces• pearl appliances-pearle appliances• peacock brand plastic wares – mayur plastic

wares• rediff vs radiff• yahoo vs yahooindia• tata tea vs tatara tea

Property in a trademark

under common law a trader acquires a right of property in a distinctive trademark merely by using it

(irrespective of the length of use or size of business)

Property in a trademark

Property in a non-distinctive trademark can be acquired by extensive use of the mark in relation to some goods which has resulted in the mark becoming distinctive

What marks are registrable ?

The trademarks law does not define any categories of marks registrable.

What marks are registrable…

But basic qualification for registrability may be seen from the statutory definition:

• capable of graphical representation

• capable of distinguishing goods or services of one person from others

What marks are registrable…

It only defines 2 categories of marks that are not registrable:

• absolute grounds of refusal

• relative grounds of refusal

absolute grounds of refusal

a) devoid of any distinctive character (not capable of distinguishing goods or services of one person from others)

b) which indicates quality or other descriptive character of the goods or services

c) which have become customary in current language

d) marks not registrable

absolute grounds of refusal

devoid of any distinctive character

(not capable of distinguishing goods or services of one person from others)

[.]dot, [ ___ ]line

absolute grounds of refusal

which indicates quality or other descriptive character of the goods or services

{sweet chocolate},

{fast/reliable computers}

{best cellphones}

absolute grounds of refusal

which have become customary in current language –

{sweet sweets, computer computers}

{Laptop computers}

absolute grounds of refusal

Marks not registrable• a mark that will deceive or cause confusion• hurt religious sentiments ..eg nike sole, picture

of goddess Meenakshi for fertilizers • scandalous or obscene matter• emblems, flags, names prevented under

‘Emblems and Names (Prevention of Improper use) Act 1950’

• when shape of goods is purely functional

Relative grounds of refusal

a) a mark which is identical or similar to an earlier trademark and the respective goods and services are similar

(anyone starts making computers and wants KOMPAK, Compaq or HCL as trademark)

a) a mark which is identical or similar to an earlier trademark but the goods and services are differenteg Mercedes Benz –VIP Benz , Kodak Cycles

Relative grounds of refusal

These marks may be registrable if the proprietor of the earlier TM consents

or by ‘honest concurrent use’

Relative grounds of refusal

In considering second category of marks (same mark, different goods), factors to be considered are:

• Extent to which the earlier trademark is a well-known trademark in India

• Whether use of the applicant’s mark would take unfair advantage of the earlier trademark

• Whether use of the applicant’s mark would be detrimental to the distinctive character or repute of the earlier mark

Concurrent Use

…of same mark by 2 persons, honestly and independently, without knowledge of each other’s marks, in different regions, with minimum or no confusion.

Character Merchandising

Character merchandising can be defined as the secondary exploitation by the creator of a fictional character by a real person or by one or several authorized third parties of the essential personality features (such as the name, Image or appearance) of a character in relation to various goods and/or services with a view to creating in prospective customers a desire to acquire those goods and/or to use those services

because of the customers’ affinity with that character.

Character Merchandising

Examples:

• Mickey Mouse and many other popular Disney characters.

• Harry Potter

• Krissh

• Superman, Batman, Hulk, Chota Bheem!