Trademarks Lecture (Students)

Trademarks
What is a  A Trademark is any word,

Trademark? name, symbol, or device or
any combination used by a
person
The term trademark is
 To identify and distinguish the
often used when goods of such person,
referring to a service including a unique product,
mark but the two from those manufactured or
words have different sold by others
meanings and  To indicate the source of the
requirements. goods, even if that source is
unknown.
 A trademark isn’t a verb (or
noun), it’s an intangible asset.
 Definition of a Trademark
 Trademark is any mark capable of being represented graphically and which is capable of
distinguishing the goods and services of one person from those of others.
 Mark, its meaning and its categories
 Section 2(1)(m) of the Trade Marks Act defines what a mark is. It states that a mark
includes ‘a device, brand, heading, label, ticket, name, signature, word, letter,
numeral, packaging, or combination of colors, or any combination thereof’.
 Other types of Trademarks
 Beyond the definition of ‘Mark’ covered under Section 2(1) (m) of the Trade
Marks Act 1999, there are other types of trademarks which are recognized under
the Act.
 1. smell – chemical formula not the distinctive feature

 2. Sound marks – first one- YAHOO, nokia ringtone, sound of Harley-Davidson
bike
 3. Well-know marks
 4. Service Marks – organization providing a service e.g SBI
What is a  A Service mark is any word, name,
symbol, or device or any
Service Mark? combination thereof used by a
person,
 To identify and distinguish the
A service mark is services of one person, including a
registered for a non unique service, from the services of
tangible service. others
 To indicate the source of the
services, even if that source is
unknown.
 Titles, character names used by a
person, and other distinctive
features of radio or television
programs may be registered as
service marks notwithstanding that
they, or the programs, may
advertise the goods of the sponsor.
Can a mark be both a
trademark and a  Tiffany & Co. is a service
service mark? mark of Tiffany and
Company to identify its
YES – If the mark meets services of providing online
the criteria for both. retail sales of jewelry and
accessories.
 Tiffany & Co. is a trademark
for jewelry produced by
Tiffany and Company.
What cannot be registered as a Trademark?
 Section 9 of the Act deal with the absolute grounds for rejecting a trademark
registration.
 1. marks which are not distinctive

 2. Marks which are descriptive – charm, sugar-free
 3. Marks which are deceptive in nature or cause confusion in the minds of
customers
What Is The Procedure To Register A Trademark In
India
The registration process in India is a ‘first to file’ basis. Therefore, it is important to

apply for registration as soon as possible.
A trademark usually takes 2-3 years to get registered, if the trademark is not being
opposed by a third party.
Trademark applications are handled by the Office of the Controller General of Patents,
Trade Marks, Industrial Designs and Geographical Indications. Branches for these
offices are available in Mumbai, Kolkata, Ahmedabad, Delhi and Chennai.
To register a trademark in India the following steps must be followed:-

Renewal
 Under section 25 of the Act, the initial duration of the registration is 10

years.
 Can be renewed by paying the requisite renewal fees before 6 months from
the date of the expiry of the trademarks.
Rights granted by registration of
Trademarks
 Right to use – not used in commercial activities for a period of more than 5
years, then under the provisions of Section 47 of the Act, competitors can file
an application with the Registrar of Trademarks for the removal of the
trademark from the register.
 Negative right – prevent others from copying the mark
 Right to license – KFC, McDonald’s

 Assignment of Trademark
 Transmission of Trademark
What is the purpose of a
Trademark/Service mark?
 Allow the public to make informed decisions and to differentiate between competing
products and companies.
 To protect the providers’ investment in their reputation.
 The Supreme Court held in Qualitex Co. v. Jacobson Products Co (1995) that:
 “Trademark law, by preventing others from copying a source-identifying mark, 'reduce[s]

the customer's costs of shopping and making purchasing decisions,' for it quickly and
easily assures a potential customer that … the item with this mark … is made by the
same producer as other similarly marked items that he or she liked (or disliked) in the
past. At the same time, the law helps assure a producer that it (and not an imitating
competitor) will reap the financial, reputation related rewards associated with a desirable
product."
Infringement of Trademarks
 Section 29 of the Act deals with the infringement of registered trademarks
 1. Deceptive Similarity
 ‘Sonny’ and ‘Sony’
 Fruiti and Frooti
2. Passing Off
3. Using Trademark in Advertising
4. Confusing Similarity
5. Using Trademark as a Name
 5. Trade Dress
 A trade dress includes identifying features of a product or company such as
packaging elements, décor items, and other similar concepts. Product features
don't usually fall under a type of trademark for legal protection, but instead under
trade dress protection. If a consumer identifies a specific feature or features with
a brand or company instead of the actual product, the case for trade dress
protection is strong.
 One example of trade dress is the bottle of Listerine mouthwash. The unique flat
shape of the bottle is easily identifiable to customers looking for Listerine, so it
qualified for protection, which restricts others from producing a confusingly similar
bottle design.

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Trademarks

What is a  A Trademark is any word,

 1. smell – chemical formula not the distinctive feature

 1. marks which are not distinctive

The registration process in India is a ‘first to file’ basis. Therefore, it is important to

To register a trademark in India the following steps must be followed:-

 Under section 25 of the Act, the initial duration of the registration is 10

 Negative right – prevent others from copying the mark

 Right to license – KFC, McDonald’s

 “Trademark law, by preventing others from copying a source-identifying mark, 'reduce[s]

 Section 29 of the Act deals with the infringement of registered trademarks

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