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.,
[email protected]., [email protected]., [email protected] 9394969898, 7674060336, 9059457336,
9059714336, 9885192716VVIT, Nambur, A.P
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