TRADE MARKSTRADE MARKS

Prof. Puttu Guru Prof. Puttu Guru

PrasadPrasad

VVITVVIT

TRADE MARKSTRADE MARKS

Any word , name , symbol or device or any combination thereof, used or intended to be used , by a person to identify and distinguish goods from those manufactured or sold by other.

There fore , a mark can be anything. A mark does not have any limit. Trade marks are usually used to distinguish the products or services of one entity from other.

PURPOSE AND FUNCTION OFPURPOSE AND FUNCTION OF TRADE MARK TRADE MARK

Giving a guarantee that the products maintain a level and consistency

Helping the consumers in deciding which product they have to purchase.

Trade marks ensure healthy competition in the market.

The value of a business entity developed by providing quality products and services to the consumers under a mark is known as goodwill.

VARIOUS TYPES OF VARIOUS TYPES OF TRADE MARKSTRADE MARKS

Names, words, numbers, domain names.

Logos, symbols, and devices,

Colors and Scents, Multiple marks.

Characters, certificate marks.

Service marks, collective marks

Any marks joined with the goods or products.

VARIOUS ATTRIBUTES OF TMVARIOUS ATTRIBUTES OF TM

Slogans, letters, Numbers

Trade dress, domain names., names of the artists

Foreign terms, Literary Title.

Logos and symbols

Designs and ornamentation

Shapes and containers

Fragrances, sounds, Moving Images.

VARIOUS ATTRIBUTES THAT ARE VARIOUS ATTRIBUTES THAT ARE EXCLUDED FROM TRADE MARKSEXCLUDED FROM TRADE MARKS

Generic terms

Functional features

Descriptive marks

Disparaging or falsely suggestive marks.

Mere Surnames

Deceptive Matter

Insignia, name sand portrit of living persons

Immoral or scandalous matters

TM REGISTRATION PROCESS TM REGISTRATION PROCESS

Application process

Preparing the application

Filling the application

Examination by PTO

Post examination Procedure

Publication in the official gazette

Opposition proceedings

Intent and statement of use , Abandonment and Revival of Application.

BENEFITS OF REGISTRATIONBENEFITS OF REGISTRATION

Right to use ‘O’ symbol

Right sue in the courts

Right to claim damages

Prima facie evidence

Constructive notice of date of first use

Constructive notice of ownership claim

BENEFITS OF REGISTRATIONBENEFITS OF REGISTRATION

Criminal penalties

Right to stop important of infringement marks

Incontestability

Basis for foreign application

Limited ground for attacking trademark after 5 years.

BASES FOR TM APPLICATIONBASES FOR TM APPLICATION

Use in commerce

Bonafide intention to use the mark

Bonafide intention to use the mark along with importance as a foreign application

Bonafide intention to use the mark along with acquisition of certificate or copy of foreign registration.

TM INFRINGEMENTTM INFRINGEMENTT

rade mark infringement is a violation of exclusive rights of a trademark. V

arious factors determining the infringement of TrademarkS

trength of the TMS

imilarity of the TMS

imilarity of the product, or goodsS

imilarity in the channels of tradeE

vidence of actual confusionD

efendant's intent in selecting the TM

REMEDIES FOR TM INFRINGEMENTREMEDIES FOR TM INFRINGEMENT

Injunctions

Temporary restraining order

Preliminary injunctions

Permanent injunctions

Damages

Impoundment and destruction of the articles

Fraudulent representation in TM registrations

TWO TYPES OF SYMBOLSTWO TYPES OF SYMBOLS

‘TM’ indicates that a trademark application has been filed for that particular mark, but trademark is not yet granted.,

@ indicates that the trademark is registered .

It creates owner ship

Prevent unlawful use

Crete brand value, or intellectual wealth

VARIOUS DEFENCES TO VARIOUS DEFENCES TO TM INFRINGEMENT TM INFRINGEMENT

Generic Terms

Abandonment

Lack of Secondary meaning

Fraud

Estoppel

Unclean hands

Laches

Acquiescence , functional, fair use, free speech.

RESOLVE THE RESOLVE THE INFRINGEMENT LITIGATIONINFRINGEMENT LITIGATION

The Infringement litigation can be resolved in the following manner.

The cease and desist letter

Alternative dispute resolution

Settlement

DILUTION OF TMDILUTION OF TM

Dilution is nothing but an authorized act to Blur the distinctiveness of a famous trade mark. The best example for dilution is the user of TIFFANY mark by a jewelry store in New York, which made consumers believe that it was founded by the TIFFANY Restaurant owners.

Types of Dilution: 1. Blurring and 2. Tarnishment

TYPES OF DILUTIONTYPES OF DILUTIONB

lurring :- this refers to the dilution which effects or impact on the sale of the popular trademark products and services. This is usually done by using the mark upon dissimilar products. For example, using Cello juice, Nokia clothing.

Tarnishment:- when the trade mark is diluted and affixed on products with low quality or used in embarrassing context or being displayed in a wrongful manner it is known as Tarnishment. Example, obscenity, sexual activity or illegal activity.

LIKELIHOOD OF LIKELIHOOD OF CONFUSIONCONFUSION

Registration, inter parties proceedings and infringement litigations are the three ways in which issues of likelihood of confusion occurs.

In every case, the standards are same- under each situation it is expected that consumers of related goods will get confused, because of related goods, Using the almost same type of trademarks.

STRENGTH OF TMSTRENGTH OF TM A

trade mark is said to be weak when it is descriptive and lacks appropriate secondary meaning. Likewise it is said to be strong if it is arbitrary, fanciful or suggestive and has appropriate secondary meaning.

The weak trade mark owners find it difficult to prove likelihood of confusion. For example, the American trade mark “Maid in America” for cleaning services was found to be descriptive. The owner of this TM failed to demonstrate advertising or sales to prove secondary meaning.

SIMILARITY OF TMSIMILARITY OF TMI

n general, add prefix or suffix, change letters or using clarifying information cannot prevent the claim of similarity of the trademark. Example:- Platinum puff Vs Platinum Plus

Magnavox Vs Multivox,

Bata Vs Beta

Lexus Vs Lexis

Honda Vs Hyundai

Samsung Vs Sansui

INTERNATIONAL TM INTERNATIONAL TM LAWSLAWS

TRIPS- Trade related Aspects of Intellectual Property Rights

Multilateral Intellectual Property Agreement by WTO

Enforcement of IPR by WTO

Paris Convention

Trademark Law Treaty,1994, Geneva.

Madrid Protocol

NAFTA, WIPO, INTA

THANKING THANKING YOUYOU

Professor & Lawyer Professor & Lawyer Puttu Guru PrasadPuttu Guru Prasad

M.B.A., M.Com., M.Phil., PGDFTM., APSET., DFTM., PhD at JNTUK.,

pgpjntuk@gmail.com., puttuvvit@gmail.com., pgp4149@gmail.com 9394969898, 7674060336, 9059457336,

9059714336, 9885192716VVIT, Nambur, A.P