Tag Archives: trademark

Brunei’s Intellectual Property Office Accession to Madrid Protocol

The Government of Brunei Darussalam on October 6, 2016 [1] deposited its instrument of accession to the Madrid Protocol for the International Registration of Marks in Geneva with the Director General of WIPO Francis Gurry [5]. The accession makes Brunei Darussalam the 98th member to the Madrid System. The aforementioned protocol came into force On January 6 2017 [1].

The local businesses and brand owners of Brunei Darussalam have already started using the Madrid System in order to ensure protection of their marks in 114 territories of the 98 member countries of the Madrid system [2]. This is achieved by filing a single international application in a single language and paying one set of fees in a single currency.

With the introduction of Madrid system in Brunei Darussalam, foreign brand and trademark owners can now easily seek protection for their marks & brands when they introduce their brands, products or services in Brunei Darussalam [2]. As WIPO celebrated 125 years of the Madrid System, the accession of Brunei Darussalam further displayed the System’s emergence as a key component for protecting marks internationally.

From its inception, the Madrid system has continued to develop according to the needs and requirements of the applicants thereby providing cost-effective and simple features for filing trademark applications across multiple territories. Today, the Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. Applicants can modify, renew or expand their global trademark portfolio through one centralized system with its evolving E-Services options [4].

Notably, Brunei Intellectual Property Office, in addition to the Madrid System, has already implemented two other WIPO-administered international registration systems namely, the Patent Cooperation Treaty (PCT) and the Hague System for the International Registration of Industrial Designs in 2012 and 2013 respectively [3].

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

 

References

[1] http://bruipo.gov.bn/Lists/News/NewDispForm.aspx?ID=1

[2] http://www.wipo.int/madrid/en/news/2016/news_0020.html

[3] http://www.energy.gov.bn/Lists/EDPMO%20Updates/NewDispForm.aspx?ID=70

[4] http://www.wipo.int/madrid/en/

[5] http://www.wipo.int/about-wipo/en/dgo/

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Energy and Industry Department at the Prime Minister’s Office (EIDPMO) Launches Trademark Search Kiosk

The Brunei Intellectual Property Office (BruIPO) is an office under EIDPMO and is responsible for the administration and registration of Intellectual Property (IP) including Patents, Trade Marks, Industrial Designs and Plant Varieties Protection (PVP) [2].  In its efforts to enhance its services to the public, BruIPO has recently introduced a trademark ‘Search Kiosk’ at the Business Support Centre (BSC) at the Design & Technology Building (D&T) in Anggerek Desa. This service of search Kiosk enables general public to allow searching for trade mark via the World Intellectual Property Organization (WIPO) Global Brand Database (GBD) and the ASEAN TMView database. These services are freely accessible.

Along with Singapore and the Philippines, Brunei Darussalam currently maintains one of the shortest turnaround times for trademark registration in the region at less than six months [1] and has also been looking at a further growth of its trade mark services by introducing an online portal for e-filing of trademarks in the coming time and has already implemented the Madrid Protocol for the International filing for Registration of Marks [3].

BruIPO along with Search Kiosk also offers other Intellectual Property related services for Subject Matter Experts through their Technology and Innovation Support Center (TISC) that allows inventors & innovators to easily access local, high quality technology information and related services, with the target of helping these innovators to exploit their innovative potential and to create, protect, and manage their intellectual property rights [2].  Few of the services BruIPO provides through TISC comprises of assistance in searching and retrieving technology information; training in database search and basic information on industrial property laws; management and strategy as well as advice on technology commercialization and marketing.

It should be noted that detailed information on BruIPO’s services especially ‘Search Kiosk’ is available at their helpdesk at the Business Support Centre whilst downloadable information such as forms and fee schedule can be obtained from BruIPO’s webpage on the EIDPMO’s website at www.ei.gov.bn.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References

[1] http://www.ei.gov.bn/Lists/Industry%20News/NewDispForm.aspx?ID=182

[2] http://www.energy.gov.bn/Lists/EDPMO%20Updates/NewDispForm.aspx?ID=73

[3] http://www.energy.gov.bn/Lists/EDPMO%20Updates/NewDispForm.aspx?ID=70

TATTOOS AS INTELLECTUAL PROPERTY- AN INDIAN PERSPECTIVE

INTRODUCTION:

Tim Parks in his book[1] wrote “You will only have copyright in a society that places a very high value on the individual, the individual intellect, the products of individual intellect.” In an overtly aware society like ours, there is no doubt that we not only value but are also more aware of our rights. In addition to our awareness, there is something else that is more peculiar about present times – our curiosity and our need to keep evolving with time. With this constant need for metamorphosis, our technology and art forms also are changing at a rapid scale, leading to the foundation and formation of various industries emerging from them including the Tattoo industry. This body graphics phenomenon, while may seem to have gained popularity very recently, has its roots inked all the way back in CA. 8000 BP where a ‘moustache’ was found tattooed on the upper lip of the South American Chinchorro mummy[2]. With the tattoo industry growing to become a $1 Billion industry[3], the legal framework to regulate this industry seeks evolution as well. With tattoos, the questions that need to be put to rest seem quite fundamental, beginning with – Do we have adequate laws and the legal framework to regulate and enforce the rights relating to tattoos? Are tattoos artistic enough to be copyrightable at all? If yes, who owns the rights? What is the extent of these rights? How do we enforce them?

This article tries to explore the answers to these questions while making an attempt to understand tattoo related jurisprudence across the world in comparison with current legal framework in India and its possible interpretations.

TATTOO – A COPYRIGHTABLE WORK?

Since copyrights are rights granted to artistic forms of expression on tangible mediums, tattoos ought to qualify, for copyright protection. Unlike in U.S. where the applicable statute[4] requires the “pictorial, graphic and sculptural” copyrightable work to be “original works of authorship fixed on a tangible medium of expression”, Indian law does not explicitly specify the need for tangible medium of expression. However, owing to the permanent nature of the tattoos and the human body being the “tangible medium of expression”, the reservations against tattoo not being copyrightable work, by definition, should be ruled out.  As if to prove Indian Copyright Office’s validation of tattoos as copyrightable works, the Indian Copyright Office, in 2011, granted Shahrukh Khan a copyright registration for his tattoo[5]. While there has not been a copyright infringement case for tattoos as yet in India, the news of the Warner Bros. making use of an unauthorized tattoo in their movie Hangover 2 in 2011 and then, being sued by the tattoo artist from Missouri[6] made quite a stir and has had the legal community thinking of the ramification of making the tattoos a copyrightable commodity. Though the case was discreetly settled, the million dollar question is still being debated as to who shall reap the benefits of the tattoo and can the standard injunctive damages apply, as they apply for paintings, books or other works of art.

To understand the applicability of copyrights to tattoos, one must recognize that it is only original and custom made tattoos that are the subject of this discussion. Standard tattoo in catalogues or on the walls of parlours are not to be considered thereto. Of all the ingredients, originality is the principal ingredient, without which a copyright does not exist. Having said that, the efforts made by the tattoo artists in inculcating the imagination of the tattoo bearer are worth marvelling about, it must be understood that if the copyrights of a tattoo are to remain in the possession of the tattoo artist, the rights to exploit the copyrighted ‘piece of art’ also rests with them. Among the various other rights of the copyright holder mentioned in the Indian Copyright Act, 1957, Section 14(c) (ii) specifies that the copyright holder has the right to communicate the piece of work to the public. It must be noted that this provision relating to the communication of the artistic work to the public speaks of ‘artistic work’ only implying that tattoo artist is entitled rights only of the “artistic work” i.e. the tattoo bearer’s body that has been imprinted with the tattoo while allowing the artist to restrict the replications of the artistic work in any other medium under Section 14. Thus, one may imagine the way in which a copyright holder, in this case the tattoo artist may incorporate the above mentioned right, considering that the ‘work of art’ which is to be communicated to the public is actually on somebody else’s body, unless the tattoo artist has tattooed himself. In other words, it may mean that the tattoo artist has the right to control and regulate the tattoo bearer’s activities which, by all means, violates the very right to freedoms promised to us by Art.19 and Art.21 of the Indian Constitution, to say the least. Another argument in the favour of the tattoo bearers holding the authorship rights is that the tattoo artist is a hired employee, in which case, S.17(c) of the Indian Copyright Act, 1957 may be interpreted as the tattoo bearer being a quasi-employer of the tattoo artist, is the first owner of the copyright, in the absence of a contract between the two. In practice, most tattoo artists, too, believe that once the customer pays for the tattoo, he owns the tattoo and all the rights that come with it.

In the defence of the tattoo artists’ rights to obtain the copyright, it may be said that like painters, they, too, create art and have a right to copyright the same to retain their originality. Also, as in the case of art collectors, the tattoo bearer may merely own the piece of art and the copyrights of the designs may still rest with the tattoo artist and certain amount of royalty may be reimbursed to the artist for replication or incorporation of this piece of art on various mediums such as video games, as in case of THQ Inc.[7], where the gaming company was sued by Mr. Conduit’s tattoo artist for illegally and wrongfully using the mixed martial artist’s tattoo in the game. Taking a leaf from so many cases of tattoo artist’s suing gaming[8] and entertainment companies[9], and also having burnt its fingers once[10], EA Games played it safe by taking permission from the tattoo artists of the respective sportsmen before using their work in their new NFL 15[11].

TRADEMARKING TATTOOS :

Quintessentially, the function of a trademark is to distinguish one’s services or goods from the others selling or providing similar goods or services. So when one gets a trademark or logo tattooed on himself or herself, given the aforesaid logic, the chances of them intending to confuse any member of the public of being the originator of any particular goods or service are rare. However, in some organizations, employees are encouraged to get tattoos of the organization’s logos or taglines[12].

On the other hand, in some cases, one might end up welcoming a cease and desist notice for tattooing a trademark without prior permission, like in the case of a coffee shop owner in New York who was slapped with a cease and desist notice for infringing the trademark “I ♥ NY” for tattooing “I [coffee cup] NY” on his knuckles. [13] The coffee shop owner, in this case, to avoid litigation, settled and agreed to certain terms of the said rightful owner that included restrictions on having his tattooed knuckles photographed and censoring of the cafe’s logo, which happened to be the tattooed knuckle, from the window pane of his coffee shop. While it is essential to note here that not only was there no direct trademark infringement but also the coffee shop owner had not copied the design of the logo as it is. He had introduced the image of a coffee mug instead of the “♥” which could be proved as distinctive form of expression and could have stood his ground pointing the difference in the tattoo design from the allegedly infringed logo. Having said that, like the idiom “every coin has two sides”, every legal argument can be fought from both the sides as well, making this jurisprudence ever so interesting.

CONCLUSION:

There seems to be crystal clarity, with the Warner Bros. case[14] verdict and Shahrukh Khan’s tattoo[15] being granted copyright registration, that tattoos are indeed copyrightable property. The variable in the equation, however, is the extent of the rights that are to be granted to the parties and its enforceability. While the moral rights like endorsing the tattoos in the name of the tattoo artists and giving them their credits when they are due, are undoubtedly implicit, the debate that needs to be put to rest is the statutory rights that are to be bestowed on either party.

Another question that needs the legal community’s immediate attention is the enforceability of these rights once they are granted. In order to protect and execute these rights, we are in need of a strong precedent that will define the limit the extent of injunctive relief that may be sought by the copyright holders without violating the infringer’s fundamental rights. With a Catch-22 situation before us and no binding precedent to break this deadlock, one can see only two definite possibilities – either the tattoo artists are granted their much earned and awaited royalties for every picture, endorsement, and social media coverage given to their art, or the conscious tattoo bearers is to carry fresh, newly drafted contracts for their tattoo artists to have their rights assigned to them every time they enter a tattoo parlour!

Author: Amruta Mahuli, Legal Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at mumbai@khuranaandkhurana.com.

References :

[1] Where I’m Reading From: The Changing World of Books

[2] https://www.researchgate.net/profile/Aaron_Deter-Wolf/publication/275023614_The_Material_Culture_and_Middle_Stone_Age_Origins_of_Ancient_Tattooing/links/552ecd7f0cf2d495071a90b1/The-Material-Culture-and-Middle-Stone-Age-Origins-of-Ancient-Tattooing.pdf?origin=publication_detail

[3] https://www.ibisworld.com/industry-trends/specialized-market-research-reports/consumer-goods-services/personal/tattoo-artists.html

[4] 17 U.S. Code § 102

[5] http://archive.indianexpress.com/news/srk-registers-don-2-tattoo-in-his-name/817871/

[6]  S. Victor Whitmill Vs. Warner Bros., Civil Action No. 4:11-cv-752

[7]  Christopher Escobedo v. THQ Inc., Case No.: 2:12-cv- 02470-JAT, U.S. District Court, District of Arizona (Phoenix)

[8] Solid Oak Sketches, Llc V. 2k Games, Inc., U.S. District Southern District Of New York, No. 16-00724.; http://mitchellhamline.edu/wp-content/uploads/sites/37/2015/11/2-Copyrighting-Tattoos-Artist-vs.-Client-in-the-Battle-of-the-Wai.pdf

[9] Reed v. Nike, Inc, No. 05-CV-198 BR (D. Or. Feb. 10, 2005); http://www.brinksgilson.com/files/190.pdfl; Ibid. 5

[10]  Stephen Allen v. Electronic Arts Inc. et al., Case No.: 5:12-cv-03172, in the U.S. District Court for the Western District of Louisiana.

[11] http://www.barstoolsports.com/dmv/ea-sports-got-permission-from-colin-kaepernicks-tattoo-artists-to-use-his-ink-in-madden-15/;

[12] http://newsfeed.time.com/2013/05/02/employees-get-tattoo-of-company-logo-for-pay-raise/; http://www.bbc.com/news/business-28207945

[13] http://theconversation.com/who-owns-your-tattoo-maybe-not-you-56050

[14] Ibid. 4

[15] Ibid. 3

THE EXCLUSIVITY OF BRAND TAGLINES

Brand taglines are catch phrases which serve to draw a connection for consumers with the business’ products and services, and the concerned brand in general. A particular sequence of words repetitively used in the promotion of a brand or business in relation to its products and services often finds a place in the associative memory of the public. For example, when coming across the catch phrase “Finger lookin’ good”, one is instantly reminded of KFC’s sumptuous range of food products.Similarly, the tagline “Just Do It” is commonly associated with the brand NIKE and the phrase, “There are some things money can’t buy. For everything else, there’s MasterCard” connotes a connection with Mastercard.

Taglines are primarily used for advertising as they are memorable, differentiate the brand and impart certain emotions regarding the brand. The said exclusive association also flows from the mere mention of the brand, for example when one refers to Mc’donalds, the phrase “I’m Lovin’ It” automatically comes to mind, thereby indicating that some sort of intangible ownership of the particular phrase exists. This short note will attempt to elucidate upon whether and if so, what type of intellectual property protection is accorded to taglines or trade slogans with specific reference to the Indian context.

Scope of Brand Taglines as Trademarks

Section 2(m) of the Trademarks Act, 1999 defines “mark” as including a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. It is seen that the legislation provides for a tagline or combination of words to be included within the ambit of the definition of mark.

Trademark is defined under the Act as a mark capable of being represented graphically and of being able to distinguish the goods or services of one person from those of others in the course of trade.[1] Therefore, it is seen that a brand tagline is capable of being reduced to two-dimensional representation on paper. It is submitted that the distinctiveness criterion has a close nexus with Section 9(1) of the Trademarks Act under absolute grounds for refusal of registration.

In order for a brand tagline to qualify as a trademark, it must be distinctive,by acquiring secondary meaning and goodwill,and must not be descriptive of thefeatures of the products and services in respect of which it is used. The brand tagline by itself also must not indicate anything which has become customary in the established trade practices of that particular business.

Distinctiveness of the Generic

The Karnataka High Court in Reebok India Company v. Gomzi Active[2] has held that the person claiming the benefit of distinctive usage has to establish that over a period of time the concerned trade slogan has developed a secondary meaning and goodwill.[3] The Court accepted Reebok’s (Defendant) contention that the phrase “I AM WHAT I AM” is generic in nature and has not any acquired distinctive character in relation to the goods produced by Gomzi Active.[4]It was further held that both parties were operating under different and distinct trade names and by the mere use of the common phrase and expression “I AM WHAT I AM” it cannot be said that a customer with reasonable prudence would be misled to purchase the products manufactured by Reebok mistaking them for the products manufactured by Gomzi Active.[5] It is submitted that extensive advertisement through various modes and subsequent inherent association by consumers of the brand tagline with brand’s products and services would satisfy the test of distinctiveness even if concerned tagline is a common and generic phrase.

Descriptiveness and Commercial Features

The Hon’ble Supreme Court in a petition for special leave to appeal[6] upheld a Division Bench decision of the Delhi High Court in Procter & Gamble Manufacturing (Tianjin) Co. Ltd. &Ors. v. Anchor Health & Beauty Care Pvt. Ltd.[7], wherein the issue of distinctiveness and descriptiveness of brand taglines was discussed and elaborated.[8]The Court held that

  • The expression “ALLROUND PROTECTION” in Anchor’s advertisements and on its product is covered within the meaning of Section 2(m) & (zb) of the Act.

  • There is a difference between specific descriptiveness and generic descriptiveness.Forexample,a particular tagline may be descriptive of such features that are unique to the brand’s products but not generic features of the said products. (It is pertinent to note that Anchor was the first in the industry to use “ALLROUND PROTECTION”)

It is submitted that the Court in a way has interpreted a brand’s tagline or its“communicated commercial essence”tobe considered as a unique feature of its products and services, while deciding that is not a descriptive tagline.

Expressions of Customary Trade Practice

In Stokely Van Camp Inc v. Heinz India Pvt Ltd.[9], the Delhi High Court Division bench held that the trade slogan “Rehydrate Replenish Refuel” used in respect of Gatorade, even though a registered slogan mark, cannot be granted protection since in the energy drink market it has become customary and in fact necessary to describe products as such. Therefore, the Court held the defendant’s use of the expression “Rehydrates fluids, Replenishes vital salts, Recharges glucose” will fall within the ambit of Section 30 (2)(a) of the Trademarks Act, wherein a registered trademark is not infringed when the alleged infringing mark/expression is used to indicate features and characteristics of the products in respect of which it is used.

Therefore, it is seen that brand taglines have been recognised as trademarks in India provided they have acquired distinctiveness through goodwill and secondary meaning. It is also seen that trade slogans can be used to describe particular unique commercial features of the brand’s products and services.

Scope of Brand Taglines as Copyrights

Copyright subsists in original literary, dramatic, musical and artistic works, cinematographic films and sound recordings.[10]The Delhi High Court in Pepsi Co. Inc. and Anrv. Hindustan Coca Cola and Ors.,held that advertising slogans are not to be accorded protection under the Copyright Act and they may be protected under the law of passing off.[11] The Court also opined that although the task of devising advertising slogans often requires a high level of skill and judgment but they will usually not qualify as original literary works.Law of passing off is not limited to names but is wide enough to encompass other descriptive materials including slogans, as part of goodwill built by extensive advertisement.[12]

Further, in Godfrey Phillips India Ltd. v DharampalSatyapal Ltd. & Another[13], the Delhi High Court followed the ratio of Pepsi Co and held that the advertising slogan “ShauqBadiCheezHain” is a mere combination of common words and hence cannot be granted protection as a literary or artistic work under the Copyright Act since they are as such not an outcome of great skill, and at best can be given protection under the law of passing off provided the requisite case is made out for passing off.

It is submitted that the reason as to why advertising slogans or brand taglines are usually not granted copyright protection is due to the generic use of words in such taglines. Brand taglines are often arrived at after much deliberation and exercise of intellectual activity and hence it may be argued to come under the ambit of originality and creativity in order to be treated as literary or artistic works.

Conclusion

In conclusion, it is submitted that a particular brand tagline may be accorded protection as a trademark if it satisfies the distinctiveness and non-descriptiveness criteria. In case of Tagline comprising of common words or generic phrase, it is through extensive use, advertising and campaigning that a tagline or slogan acquires secondary meaning to the extent consumers and the general public start associating it exclusively with the concerned brand or business. Therefore, proper documentation and detailed records regarding the use and advertising of brand taglines are essential for the purpose of preventing the dilution of goodwill created with the public.

It is also to be noted that brand taglines are usually not granted copyright protection due to the use of generic common-place words and the Courts are reluctant in considering them to be original literary or artistic works.

About the Author: Pratik Das, Legal Intern at Khurana and Khurana, Advocates and IP Attorneys and can be reached at abhijeet@khuranaandkhurana.com.

References:

[1] Section 2(zb), Trademarks Act, 1999

[2] 2007 (34) PTC 164 (Karn)

[3]Ibid at paragraph 11

[4]Ibid at paragraph 12

[5]Ibid at paragraph 16

[6]C. Nos. 15928-15929/2014

[7]2014 (59) PTC 421 (Del)

[8]Ibid at paragraph 10

[9]MIPR 2010 (3) 273 at paragraph 9

[10] Section 13(1)(a), Copyright Act, 1957

[11] 94(2001)DLT 30 at paragraph 70

[12]Ibid at paragraph 68

[13] 2012 (51) PTC 251 (Del) at paragraph 14

2016 – Trademark Act of Thailand – The amendments

The Government of Thailand has made several new amendments in their trademark act [1], which have become effective on July 28 2016. These amendments have brought significant changes in structural policy of Thailand. This includes Thailand’s ratification of the Madrid protocol, which allows an application for registration of sound marks. Other changes introduced via these amendments in the Trademark act, include the procedure and prosecution of trademark registration in Thailand, and, thus, the change in Intellectual Property (IP) strategy. Anticipatoryamendments to the registration and prosecution process are mention below.

  1. Multi-Dimensional Applications for Trademarks Allowed[2]

Previously, Thailand did not accepted multi-dimensional, multi-class filings using a single application, but multiple applications of single-dimensional, single-class filings were used instead. The changes via the amendments in the Trademark act of Thailand effective from July 2016, now allows multiple-dimensional, multi-class filings in a single Trademark application. This does not mean that the single class filing applications will not be accepted. They are still accepted.

There are both advantages and disadvantages of multiple-dimensional, multi-class filings [3]for the amended Trademark act. The main advantageis the ease inthe registration process for Trademark filing – same/single application can now be usedfor filing for protection in multiple-dimension, multiple-classes, which results in less paperwork, registration fees, and a more structured/streamlined process.

However, the majordrawback of the amendments is the possibility that complexitiesregarding one of the, multiple-dimensional, multiple-classes applied for could affect the approval process for the entire application as a whole. This is due to the factthat an application for multi-class, multi-dimensional filingsis treated as a single application, with each dimension being only a single component part of the application. This means that, at worst, an opposition or other objections in single class can delay the entire application to lapse altogether.

Because of the Pros and Cons of filing multiple-dimensional, multiple-classes trademark applications under the new Trademark act of Thailand; it has now become very important to devise a well-assessed IP strategy for selecting the type of Trademark application to be used. Some Trademarks can get the benefit of filing a single-class application when the main objective is the timeliness and the priority date of registration, or if the business plan is for short-time monetary gain and does not include future IP portfolio expansion. However, certain other trademarks with the potential for business as far as expanding IP portfolio is concerned would enjoy benefits of these amendments in the new Trademarks Act of Thailand. Therefore, a mixture of pros such as ease and timeliness of registration process and portfolio expansion may prompt IP owners to go for multi-dimensional, multi-class Trademark applications for potential business growth and portfolio expansion.

  1. No requirement of associated marks

In the previous Trademark Act of Thailand, i.e. the single-class filing process, the Intellectual Property department of Thailand used to ask IP owners to associate related/similar marks filed across various other classes. In other words, previously under Trademark Acts section 14 the Trademark registrar wasallowed to order the Trademark applicant of associating identical or similar trademarks [4] that relate to products or goods in same or different classes. This provision was required to avoid misunderstanding in pubic that different IP holders, which are similar or related as judged by the registrar, but, in fact, they belong to the same IP owner.The main drawback for IP holders due to this requirement was that the associated marks cannot be transferred or assigned separately, but must be assigned as a collection of registered “associated” marks, which required additional fees.

The amendments in the new Trademarks act of Thailand have removed the requirement of associated marks completely. After thesechanges have become effective, thetrademarkowners of associated marks are able to transfer and assign each mark single basis. [5]

Other amendments [6]

There has been a reduction in the period for filing amendments, appeals or opposition from previously 90 days to currently 60 days which is calculated from the day of receipt of related order from the Trademark Office.

Increase in time-period – from 30 to 60 days with respect to paying the registration fees.

Introduction of Grace Period for renewals– Renewal is possible within six months from the expiry date against a 20% surcharge.

About the Author: Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

Footnotes 

[1] “Trademark Act Amendments Usher in Thailand’s Accession to the Madrid Protocol.” Trademark Act Amendments Usher in Thailand’s Accession to the Madrid Protocol | Tilleke&Gibbins. Tilleke&Gibbins, 3 June 2016.

[2] “Thailand Update: Trademark Amendment Act Brings Changes for Trademark Law.” Spruson&Ferguson.Spruson& Ferguson, 16 June 2016.

[3]1, 2016 August.”UPDATING NEW THAILAND TRADEMARK ACT.”IP NEWSLETTER (n.d.): n. pag. ILCT, 1 Aug. 2016.

[4] Mirandah. “Thailand – When Trade Marks Must Be Associated.” Mirandah Asia. Mirandah, 19 May 2017.

[5]”Hailand: Amendments to the Trademark Act Information Is Provided by Www.ip-coster.com.” Thailand: Amendments to the Trademark Act. IP Coster, 26 July 2016. Web

[6] European Patent Office: Comprehensive Amendment to the Trademark Act 

Google AdWords Giving a Good Wallop to Trademark Law

Introduction

In this era of globalization, we use Internet on a regular basis in our daily lives. People are continuously trying to gain more profits and for this they sometimes adopt illegal practices for promotion of their goods and services. These practices include unauthorized use of a registered name or mark owned by their competitor. This misuse leads to infringement of rights of legitimate owner of the name or mark. A specific kind of software is generally used by search engines, called spider or crawler to gather information of web pages available on the Internet. In order to attract customers towards their websites, owners are continuously making use of “Google AdWords”, “Meta-Tags”, “Hyper- Linking”, “Deep- Linking”, etc.

The present article outlines relation between “Use of Google AdWords” and “Trademark Infringement”. Basically, Google AdWords are keywords to search for a particular category of goods and/or services required by a person. When a person types a particular keyword on a search engine, the search engine matches the keyword entered by the person with the Google AdWords of various web-pages, and accordingly displays the most prominent results. By using the competitors name and/or mark with various permutations and combinations, search engine results are effortlessly manipulated to lure the visitors to one’s website. Google AdWords are used to set the web links in a prioritized manner based on the queries of user. They act as a code for providing information about the web page, which helps in diverting Internet traffic to their websites, causing considerable commercial loss to the legitimate registered owner.

 

What is a Google Ad-Word?

Google AdWord is a successful and client capturing advertisement option that is also a misleading source with respect to the Trade Mark rights of a trademark owner. Google AdWords are basically keywords that are used by an advertiser of certain goods and services to advertise their products, wherein when a specified keyword is searched for, the search engine shows the advertisements/websites of various advertisers. Hence, in this way, Google AdWords are used to divert Internet traffic towards a particular advertisement/website. The keywords used, generally denote someone’s area of business. It is an intelligent system that highlights ads/website depending on the keyword search. Its use is very simple and Google is paid by the website owner for each and every click on their website. AdWords is a paid referencing service started by Google for business promotion.

 

Misuse of Google AdWords leads to Trade Mark Infringement

This is a very important question as to how the use of Google AdWords may lead to Trade Mark infringement. If a person selects any word to be used as an AdWord, which is either similar or identical to a third party’s trademark, does the person infringe the rights of the trademark owner?  It was held in the very famous Consim- Google AdWords controversy[1] that if these AdWords are used by the person which is similar or identical to the third party’s trademark, then this amount to diluting/tarnishing the goodwill or reputation of the third party as this creates confusion in the mind of the customers of the person whose trademark is allegedly infringed. Therefore, this should not be allowed and becomes a case of trademark infringement.

Let us understand this with the help of an illustration: Suppose ‘A’ is the registered trademark owner of certain brand. Now ‘B’ is using AdWords which is in competition to the business owned by ‘A’, and uses Trade Mark of A as one of the paid keywords in the Google Adwords. ‘B’ is therefore diverting the internet traffic towards his own advertisement by using Trade Mark of A such that when users search for A, advertisement of B would also be shown, thereby causing damage to the goodwill/reputation owned by ‘A’, which is not allowed under Trade Marks Law. Hence, selection of Google AdWords becomes very relevant in the eyes of Trademark Law.

A case, Matrix Cellular (International) Services Limited v TSIM Communication Services Private Limitedand IP Attorneys, which represents the plaintiff in the Delhi High Court, wherein the Plaintiff, Matrix Cellular (International) Services Limited, is the proprietor/ owner of the trademark MATRIX since 1995 in respect of ‘International roaming Sim cards’. The defendant is accused of dishonestly using plaintiff’s trade mark i.e. MATRIX as Google AdWords to divert the users to their website by creating a confusion in their minds. The Court recognized that the defendant has engaged in dishonestly using Plaintiff’s trademark to gain profits and the same has resulted in infringement of Plaintiff’s trademark, as a result of which the Court was pleased to grant an interim injunction in the favor of the Plaintiff.

 

Exemplary Landmark Cases

  1. Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd. & Ors. [2]

In this case, Appellant was a private limited company that provided online matrimonial services. In the course of its business, it had adopted several trademarks including Bharat Matrimony, Tamil Matrimony, Telugu Matrimony, Assamese Matrimony, etc. It had registered several domain names with these word marks. The respondents, Google India and its parent company were in the business of offering an advertisement program called AdWords. It generates ‘Sponsored Links’ on the right-hand side of any organic search results produced by Google, closely corresponding to the term searched for.

Google allows the Key Word to appear as a part of the advertisement as well. Therefore, the more the term is searched for, more the chances that it is a heavily demanded Key Word. The competitors would thus bid for the Key Words of other players in their business to catch the attention of user and thereby divert the business meant for such other players. The appellant filed a suit for permanent injunction restraining Google from infringing their trademarks by using them in the AdWords Program and Key Word suggestion Tool. It also restricted Google from passing off their services using the appellant’s trademarks and their closely resembling variants. The issue in question was whether such use of appellant’s trademark by Google’s Ad program amounted to trademark infringement.

Madras High Court thus concluded that the appellant had made a prima facie case and the balance of convenience lied in its favor and thus eventually granted an injunction.

  1. Rescuecom Corp. v. Google Inc. [3]

This is a very interesting case where the main question before the court was whether the use of trademark as keywords amount to Trademark infringement. The US Court of Appeal held that the use of trademark as keywords can be equated to the use of trademark as Meta –Tags. Therefore, Google was held liable for using the trademarked words in its Keyword Suggestion Tool. [4]

Conclusion

Thus, summarizing, use of Trademarks as a Google AdWords can be allowed if it comes under fair use, otherwise the same is restricted. Google is everywhere and it is estimated that approximately 80-85% of the world’s population uses it. If a person wants to mislead someone from the actual website of the proprietor to the impugned one it is the best platform available. Thus, customers are lured and are often misguided by the person violating by increasing the traffic and demand towards his/their website. The use of such Google AdWords is entirely dependent upon the facts and circumstances of case. Google AdWords being special keywords are embedded in web-pages and are often used by search engines in deciding the relevant websites to show in a search result. Therefore, the unfair and illegal use of the Google AdWords with respect to the Trade Marks leads to the Trademark infringement and irreparable damage to the legitimate owner. Choice of keywords becomes very important in this regard otherwise it would lead to infringement of other person’s rights. The concept of Google AdWords in relation to Intellectual Property should be understood and their misuse should be prevented.

About the Author: Ms. Yogita Agrawal, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

 

References

  1. Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd. & Ors. 2013 54 PTC 578 (Mad).
  2. 2013 54 PTC 578 (Mad).
  3. 562 F.3d 123 (2nd Cir. 2009).
  4. Mattel Inc. and Others vs. Jayant Agarwalla and Others 2008 (38) PTC 416; Samsung Electronics Company Limited & Anr. vs. Kapil Wadhwa & Ors. C.S. (OS) No.1155/2011.

NEPAL’S IP LAW: AN ENCAPSULATION

Intellectual property law in Nepal is comparatively new and it enjoys the extension provided for under the TRIPS agreement to the least developed country. The Patents, Designs and Trademarks are protected under one head, and the governing act/ legislation is known as “The Patent, Design and Trade Mark Act, 2022 (1965)” (hereinafter referred to as “Act”).

Trademarks

Section 2: Definitions: Unless the subject or the context otherwise requires in this Act:

“Trade-mark” means word, symbol, or picture or a combination thereof to be used by any firm, company or individual in its products or services to distinguish them with the product or services of others.

FILING PROCEDURE:

Step 1: Filing

  • Who may apply: Section 17:
  • Any person desirous to register the trademark of his business shall submit an application to the Department in the format specified in Schedule 1(C).
  • Document: Four specimens of the Trade Mark sought to be registered.
  • Fees: NPR 2000.

Trademark Application in Nepal can be filed in a single class only. Mutli-class Application cannot be filed.

Step 2: Investigation:

  • Section 18: When an application is received by the department, it conducts necessary investigation/examination and provides an opportunity of being heard to the applicant in case of any concerns/objections.
  • Examination is done with regard to distinctiveness, possibility of distinctiveness and conflicting trademarks.

Step 3: Grant/ Refusal:

  • If the department is satisfied with the application for registration, it shall register the trademark in the name of the applicant and grant him a certificate. Registration fees: NPR 5000.
  • It may conduct further inquiry/ investigation.
  • The mark shall not be registered/ registration is liable to be cancelled when the subject mark:
  • Hurt the prestige of individual/ institution
  • Adversely affect public conduct or morality
  • Undermine the national interest
  • Undermine the reputation of another’s trademark
  • Found to have already been registered in the name of another person.
  • If the registered trademark is not used within 1 year from the date of registration, the department may cancel the registration after conducting necessary inquiries.
  • The term of the registered trademark shall be 7 years from the date of registration.

Step 4: Publication:

  • Section 21A: The department shall publish the trademarks registered under section 18. Such publication is made in the Trademark Journal.
  • Anyone who has any objection to the same shall file a complaint to the department within 3 months from the date of such publication in Trademark Journal.
  • Necessary actions shall be taken by the department after conducting inquiries.

Step 5: Renewal and Cancellation

  • Renewal: Section 23B:
  • A trademark holder needs to renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same.
  • The prescribed form is Schedule 2(F) and the fee is NPR 500 each time.
  • When the time limit of renewal expires, renewal may be done within 6 months from the date of expiry of the time limit for the same along with a fee of NPR 1000.
  • A trademark can be renewed indefinitely for a period of 7 years each time after a payment of renewal fee.

 

Patents

Section 2: “Patent” means any useful invention relating to a new method of process or manufacture, operation or transmission of any material or a combination of materials, or that made on the basis of a new theory or formula.

FILING PROCEDURE:

Step 1: Filing:

  • Who may apply: Section 3 and 4:
  • Any person desirous of having any patent registered in his name shall submit an application to the Department in the format prescribed in Schedule 1(A) containing the following particulars, along with all evidences related to the same in his possession:
  • Name, address and occupation of the inventor (person inventing the patentable subject matter)
  • If the applicant is not the inventor, then information as to how and in what manner has he acquired title thereto from the inventor
  • Process of manufacturing, operating or using the patent
  • If the patent is based on any theory or formula, then the same needs to be mentioned.
  • Maps or drawings, if any.
  • Application fees: NPR 2000

Step 2: Investigation:

  • Section 5: On receipt of an application for registration, the Department shall conduct all investigation or study to ascertain two things:

(a)  Whether the patent claimed in the application is a new invention or not

(b)  Whether it is useful to the general public or not.

 

  • Section 6: The Department shall not register any patent under this Act in the following circumstances:

(a) In case the patent is already registered in the name of any other person, or

(b) In case the applicant him/herself is not the inventor of the patent sought to be so registered nor has acquired rights over it from the original inventor, or

(c) In case the patent sought to be registered is likely to adversely effect the public health, conduct or morality or the national interest, or

(d) In case it is contradictory to the prevailing laws (the registration of the patent) will constitute a contravention of existing Nepal law.

The Examination/Investigation is of two kinds namely;

  1. Formality Examination- It is done to determine whether the application for patent fulfills the requirements of the same.
  2. Substantive Examination- It is done to determine the patentability of the invention, whether;

–  The claimed product/process is patentable or not.

–  The claimed invention is new i.e passes the test of Novelty.

–  The claimed invention is capable of Industrial Application.

– The invention involves a ‘innovative step’

Step 3: Grant/ Refusal:

  • If the Department is satisfied with the findings under Section 5, it shall register the patent in the name of the applicant.
  • In case, the Application does not fulfill the statutory requirements, a notice to the applicant is sent regarding the Rejection of Application.
  • Section 7: Issue of registration certificate:
  • When the registration of the patent is granted, the Department shall issue a certificate of registration in the name of the applicant in the format prescribed in Schedule 2(A).
  • The fee for the same is NPR 10,000.
  • Section 8: The term of the patent granted shall be 7 years from the date of registration.

Grounds of refusal/ cancellation of registration: Section 6:

  • The patent is already registered in the name of other person
  • The applicant is not the inventor of the subject matter of the patent and has not acquired rights over it from the original inventor
  • The patent sought adversely affects public health, conduct or morality, or national interest
  • The patent sought is contradictory to existing Nepalese laws.
  • The applicant will be provided a reasonable opportunity of being heard before the department cancels the registration of the patent.

Step 4: Publication:

  • Section 7A: All patents registered under the Act, except those that are kept secret in the national interest, shall be published in the Nepalese Gazette by the department.
  • In case of objections, the complaint may be filed within 35 days from the date of seeing or copying the Patent, and thereafter, the Department shall conduct necessary inquiries and take further action. The fee for complaints and objections is NPR 1000.
  • In case anyone wants to see or copy the particulars, maps or drawings of a patent, he can do so by paying the prescribed fee of NPR 750.

Step 5: Renewal

  • Section 23B: Renewal:
  • A patent holder shall renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same.
  • The prescribed form is Schedule 2(D) and the fee for
  1. First time: NPR 5000
  2. Second time: NPR 7500.
  • When the time limit of renewal expires, it may be done within 6 months from the date of expiry of the time limit for the same along with a fee of NPR 1000.
  • A patent can only be renewed twice for a period of 7 years at a time.

 

FILING CONVENTION PATENT APPLICATIONS IN NEPAL:

Nepal being party to Paris Convention since June 2001, an applicant desirous of filing patent application in Nepal claiming priority from one or more convention countries based on same invention may file such application within 12 months from the date of earliest priority. Pertinently, Nepal is not a member of PCT (Patent Cooperation Treaty).

 

Designs

Section 2:

“Design” means the form or shape of any material manufactured in any manner.

FILING PROCEDURE:

Step 1: Filing:

  • Who may apply: Section 12 and 13:
  • A person desirous to register the design of any article manufactured or caused to be manufactured, shall submit an application in the format specified in Schedule 1 (B) to the Department.
  • The applicant shall also furnish four copies of such design and maps, and drawings and particulars thereof.
  • Fees: NPR 1000.

Step 2: Examination

This involves “Formality check” and “Substanstive check” –

  1. Formality Check- An application is submitted to check if the statutory formalities and procedural requirements are fulfilled.
  2. Substantive Check- After the formality check, a substantive examination is carried out, weather ;

–  There is existence of a prior application or registration of the same.

–  Such design will hurt the prestige or interest of an individual or institution or conduct of public or morality of undermines national interest.

If either of the above mentioned points are

Step 3: Grant/ Refusal:

  • Section 14: On receipt of the application filed by any person under Section 13, the Department shall register the design in the applicant’s name and issue a certificate of registration in the format specified in Schedule 2(A). i.e If it has passed the stage of Examination.
  • In case, the Application is rejected, a Notice of Rejection is sent to the Applicant.
  • Registration fees: NPR 7000.
  • The term of a registered design is five years from the date of registration.
  • Renewal: Section 23B:
  • A design holder shall renew the registration within a period of 35 days from the date of expiration of the term for which he is entitled to use the same.
  • The prescribed form is Schedule 2(E) and the fee for
  1. First time: NPR 1000
  2. Second time: NPR 2000.
  • When the time limit of renewal expires, it may be done within 6 months from the date of expiry of the time limit for the same along with a fee of NPR 1000.
  • A design can only be renewed twice for a period of 5 years at a time.

Step 4: Publication:

  • Section 21A: The department shall publish the designs registered under section 14, along with their particulars of renewal or cancellation.
  • Anyone who has any objection to the same need to file a complaint to the department within 35 days from the date of such publication.
  • Post receiving the complaint, Department takes necessary actions after conducting inquiries.

Step 5: Renewal/ Cancellation

Grounds of refusal/ cancellation: Design is liable to be refused or cancelled, if the design or design registration, as the case may be:

  • Hurt the prestige of individual/ institution
  • Adversely affect public conduct or morality
  • Undermine the national interest
  • Found to have already been registered in the name of another person.
  • The design holder will also get an opportunity to show cause as to why his registration must not be cancelled.

Simplified account of Trademark Registration in India

We had written an article giving a simplified account of Patenting procedures in India to enable readers who are new to the Patents. Similar attempt is being made here to provide answers to the Trademark FAQs so as to enable readers who are new to the Trademark.

  1. What is trademark? What is mark? What are some examples?

Answer: Trademark can be defined  as “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;..”.

“Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

Below are some examples of trademarks:

  1. Word: IBM, Google
  2. Fanciful designation: Kodak
  3. Names: Disney
  4. Slogan: Hum hain na! (ICICI bank limited)
  5. Device: pepsi_2007
  6. Number: the 4711 cologne

7.Picture:   lacoste-logo-880x660 Lacoste logo

Registering your trademark helps you secure exclusivity over your mark, helps you get geographical coverage throughout country/region of registration, gives you a complete defence that you are not infringing rights of other person, helps you create brand value.

  1. What does trademark-logo1 and  registeredtm-svg  signify, when can we use them?

Answer:  trademark-logo1 is used to indicate that the trademark is unregistered but this mark is used for promote goods. trademark-logo1 can be used even for trademarks for which registration is not applied to claim use over it.

 registeredtm-svg is used to represent a registered trademark/ service mark that provides the applicant complete ownership and legal rights over the trademark/ service mark.

  1. Who can apply for trademark? Where should trademark application be filed?

Answer:  An application can be made for registration of trademark actually used or proposed to be used by any person claiming to be proprietor of the trademark. In India, for facilitation of the registration of the trademarks, Trademark registry operates from five locations i.e. Delhi, Mumbai, Ahmadabad, Kolkata, and Chennai.  In case of Indian applicants, jurisdiction is decided based on the principal place of business of applicant and in case of foreign applicants, jurisdiction is based on where applicant’s agent or attorney is situated.

More info about jurisdiction and locations of Trademark registry can be obtained from by visiting http://ipindia.nic.in/tmr_new/location_jurisdiction.htm .

For e-filing, manual available at https://ipindiaonline.gov.in/trademarkefiling/UsefullDownloads/User_Manual_etrademarkfiling.pdf may be referred.

  1. What are the general stages of trademark registration?

trademark-flowchart

  1. An optional initial trademark search (identical search or similarity search) may be conducted on the government
  2. Once there is a go ahead for trademark filing, an application for Trademark will be made through relevant forms provided by the trademark office/ Registrar of
  3. In the next step, the trademark office will issue an examination report and formality check report to communicate objections or to request clarifications with the There is no need to file request for examination i.e. examination of trademark is automatic. In this examination report, mark is examined basically on three grounds i.e. distinctiveness, descriptiveness and similarity to the prior marks. To qualify for registration, mark should be distinctive, non-descriptive, and there should not be any similar prior marks.
  4. A reply has to be made to the trademark office in lieu of the reports that may be accepted or may be followed by a The applicant or agent if appointed is required to respond to the examiner’s objection(s) within a period of one month from the date of receipt of Examination Report. Failure to respond to examination report within this specified period can lead to abandonment of application.
  5. If the trademark office is satisfied that the trademark request complies with all the necessary provisions under the act, the mark is advertised before
  6. Once the mark is advertised in trademark journal, it is open for a period of 4 months for third parties to
  7. If no opposition is received during the specified period, the Trademark is deemed to be
  8. Once registered, there is no post-grant opposition.

 

  1. Is the registration of trademark compulsory?

Answer: No. Registration of a trademark is not compulsory. However, the registration is the prima facie evidence of the proprietorship of the trademark under registration. However,  it is to be noted that no suit can be instituted for infringement of unregistered trademarks. For unregistered marks, action can be brought against any person for passing off goods or services as the goods of another person or as services provided by another person. The latter is said to be common law right.

  1. Can a registered trademark be amended at later date?

Answer: Yes, the filed mark is allowed to be amended as per the provision of Section 22 of the Trademarks Act, which allows the amendment of the mark provided it does not amount to a substantial change in the character of the mark as such. It is practice of the Registrar of Trade Marks that if the mark applied as a label mark, any superficial or insignificant character or feature of the said mark, is allowed to be amended, if a request filed in the prescribed format along with 16 copies of the amended label mark.

  1. What is collective Trademark?

The collective mark is owned by an association of persons not being a partnership. It belongs to a group and its use therefore is reserved for members of the group. The primary function of a collective mark is to indicate a trade connection with the association or organization who is the proprietor of the mark. Section 63 of Trademarks Act, 1999 and Rule 128 of the Trademarks Rules, 2002 deal with this.

  1. What is Certification mark?

The purpose of a certification trade mark is to show that the goods or services in respect of which the mark is used have been certified by some competent person in respect of certain characteristics such as Origin, mode of manufacture, quality etc. Section 74 of Trademarks Act, 1999 and Rule 135 of the Trademarks Rules, 2002 deal with this.

  1. What are the modes of filing trademark internationally? Can a foreign applicant claim the priority based on earlier application?

Answer: International registration of trademark is facilitated through Madrid Protocol which allows trademark application in one country/region to take priority from trademark application filed in other country/region. This priority has to be claimed within six months. India is member of the Madrid Protocol with effect from July 08, 2013.

  1. Once registered for what period of time, a trademark is effective? Can a trademark registration be renewed?

Answer: The registration of a trademark is valid for a period of 10 years. It can be renewed every 10 years, perpetually. In India, renewal request is to be filed in form TM-12 within six months before the expiry of the last registration of trademark. If renewal fee is not paid till the expiration of last registration, surcharge has to be paid along with prescribed fee accompanied to form TM-10. If renewal fee along with surcharge is not paid till the expiry of six months after expiration of last registration, trademark is liable to be removed. Once removed, restoration of trademark can be requested in form TM-13 along with prescribed fees and applicable renewal fees. TM-13 can be filed from six months of expiration of last registration till the expiry of 1 year from the expiration of last registration.

  1. Is the trade mark liable for removal on the ground of non-use?

Answer: Yes, a registered trademark can be removed on the basis of non use. Except as excused in clause 3 of section 47 of trademarks act, 1999, a trade mark may be removed on the ground of non-use if:

  1. that the trade mark was registered without any bona fide intention and was not used till a date three months before the date of the application for removal; or
  2. trademark was not used for a continuous period of five year from the date of registration of trademark and application was made after three months from the expiry of five years.

  1. Is the sound or smell registrable as trademark? How are these marks specified?

Answer: Yes, sounds or smells are registrable as a mark. However, they should be capable of being reproduced graphically and should be distinctive. Sound can be represented as musical notations along with the sound recording Smell can be represented as chemical formula along with the sample.

  1. Is a three-dimensional mark registrable?

      Answer: Yes, a three-dimensional mark is registrable.

  1. What is classification of goods adopted in India?

Answer: International Classification of goods and services (Nice Classification) is adopted in India.

  1. What are the grounds for refusal of registration of trademark?

Answer:  Section 9 of the trade marks act, 1999 provides absolute grounds and section 11 provides relative grounds for refusal of registration of India. Trademark laws mandates trademark to be distinctive and non-descriptive in order to get registered. Rationale behind this provision is that non-distinctive or descriptive marks can’t be granted monopoly being generic to the trade and are open for public use without any exclusive rights over the same. Some of the examples of non-distinctive or descriptive marks are give below:

  1. Dalal street for financial services
  2. Best restaurant for food services
  3. Strong furniture for furniture
  4. High tech for technology related goods/services

  1. Can a registered user restrain third party from using identical or similar mark if third party is continuous and prior user of the mark?

Answer: A registered user can’t restrain third party from using identical or similar mark if third party has been continuously using the mark in relation to the same goods or services for which mark of registered user is registered provided third party has been using the mark from a date prior to date of use of registered mark or date of registration, whichever is earlier.

 

  1. Before applying for registration, where can search be done to check if identical or similar marks already exist?

Answer:  In case you wish to carry out your own search (identical as well as similarity), following are the recommended steps for the same:

At the first step, you may check your mark’s availability on a free government portal using the following steps:

  1. Go to the government search portal : https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
  2. Select the relevant class of search from a list of 45 different business classes listed here: http://ipindiaonline.gov.in/tmrpublicsearch/classfication_goods_service.htm

For  Wordmark:

  1. Search using the “Contain” in the drop-down instead of “Start With” to have a broader
  2. Please note that Trademark Registry will also object if the name is similar Thus, for better results, search similar sounding words as well. Example: A keyword like Kryzal can have following terms that are similar sounding: Crizal, Cryzal, Creezal, Crisal, Crysal, Creesal, Krizal, Kreezal, Krisal, Kreesal, Krysal.
  3. Also note that the website often encounters downtime error, and sometimes shows “no record found” while that is And thus a minimum of 2 time confirmation is recommended if such a scenario occurs.
  4. Please note that the normal update in the portal is done on an average period of one Thus recent filings will not reflect in the search.
  5. If you find any result similar to your mark and the same/ similar class or same similar business description, the name is recommended to be changed to avoid any objection/opposition during the trademark registration

For Logo:

  1. For a logo, Vienna code classification search is to be carried The relevant Vienna code class can be searched on this interface: http://www.wipo.int/classifications/nivilo/vienna/index.htm#  by clicking on the search button (top left) and then enter the keyword (top right), followed by browse through the category to identify relevant Vienna Classification.
  2. Once the relevant Vienna code is found out, please enter the same in the Search interface using dropdown to select Search Type as “Vienna Code” instead of “Wordmark”
  3. Enter the Relevant Vienna Code in the following format: 1.1.1 will become 010101 while 1.2.12 will become 010212.
  4. Enter the relevant class and Relevancy criteria will be similar to the wordmark

THE ORIGIN STORY OF “SUPERHERO”

Ms. Sakshi Sharma, an intern at Khurana & Khurana looks into recent opposition matters pertaining to the Trade Mark Superhero of DC and Marvel.
Upon uttering the word Superhero, pretty obviously all you can picture are comic books or movies, the characters themselves or the two comic book giants which are constantly at loggerheads with each other, Marvel and DC. Hence, it comes as no surprise that the trademark of Superhero is registered by both of them. Yes, you read it right, both of them.
The instances of jointly registering trademarks are rare but not unknown and the words “Superhero” or “Superheroes” (and the diametric opposite i.e. Super villain) and all alternate versions involving these words are all registered as trademarks of Marvel and DC both. In fact, if usage of the trademark in this very article could amount to trademark infringement, provided that it is used for commercial purposes and unjust enrichment by means of free riding on the good will of the owner of the marks.
Through the years, Marvel or DC has pursued litigation against people for infringement of their trademark, the most recent being where a British Businessman was sued for the title of his book, “Business Zero to Superhero” and he won the suit. More about this can be read from here . But this suit has led to looking closely into the very existence of this trademark and on whether this is actually beneficial or not, both to the consumers and the owners of the mark.
Although joint ownership is not recognized in trademarks, in the year of 1979, Marvel and DC had applied for the mark and were granted so by the United States Patent and Trademark Office in the year 1981. The mark governs publications, but basically comic books and magazines. Also, cardboard stand-up figures, playing cards, paper iron-on transfers, erasers, pencil sharpeners, pencils, notebooks, stamp albums, and costumes. Since the ‘80s, they have owned the mark, and were granted renewal in 2009 last . Now, one can’t just register and renew the mark but must also take progressive steps to protect the mark from parties infringing, thus avoiding an opportunity of Trademark Office or the courts to state instances where the Comic Book houses (DC and Marvel) have failed to restrict the usage of the mark to themselves and thus use it against them.
There had been few popular instances which are noteworthy, apart from the above mentioned case of the British author’s book are, Superhero Cleaners, a house cleaning service where the employees were supposed to be dressed in the traditional tights and capes of a Superhero but Marvel and DC had sent them a notice when they attempted at registering their service under the Trademark of Superhero Cleaners, and their registration was subsequently abandoned.
Superhero Donuts, where two students aimed at selling donuts inspired not from comic books (and to avoid Marvel/DC from holding them for trademark infringement and to skip the line of usage permission) but from the heroes of the Bible. However, the term Superhero is still used by them.
Other instances include – Cup O’ Java Studio Comics being sued for their book, “A world without Superheroes” or how “Superhero Happy Hour” was changed to “Hero Happy Hour”. More cases can be read here
Now, the problem with the registration of the term “Superhero” with these two companies is that, firstly, the trademark and resultant rights arising from this are highly generic in nature. Take instances of Xerox or Frisbee, which unique terms in themselves have been so oftenly used that they are now used to denote a photocopy and a flying disc based toy and common association by the consumers is an essential to note here. Thus, in my opinion, the term Superhero, is neither an invention of a new term or any element of uniqueness, thus making the mark generic, not only by means of common usage but because of lack of the new creative element as well.
However, if the term superhero is considered to be generic then why hasn’t the Court struck it down yet. Further, drawing from the examples of Xerox and Frisbee itself, the companies still do own the trademarks, despite them becoming really common among the public. To decide on whether the mark is generic or not, what must be looked at, is the way it is used as in the registration of the mark itself, it is defined as descriptive and has been used that way by both the houses. In addition to this, there exist other superheroes that are famous and do not belong to either DC or Marvel, like Hell Boy or Spawn or Teenage Mutant Ninja Turtles and all of them are pretty famous amongst the masses as comic books or licensed movies. Therefore, though Marvel and DC comics are associated with “superheroes” the claim that the public associates the term “Superheroes” with these two houses only, in my opinion, is a feeble ground, thus rendering the claim of the mark as invalid.
Secondly, the concept of trademarks works in the way of protection of the product name and goodwill of companies by means of consumer recognition and since there are two competing houses registering for the same mark, it goes against the very nature and essence of trademarks being identification of a single source for the good. Apart from this, this registration can also be viewed as a market strategy by means of two houses monopolizing on the mark, thus eliminating competition. This registration thus, just seems unfair to small businesses, which is explained in detail in this article by Ross D. Petty where he states instances as to how Marvel and DC comics often bombard the smaller businesses with notices, thus leading to them abandoning their registration application.
The concept of joint ownership in trademark law is not new, but still is rare. There are three instances where the joint ownership of a mark is permitted. The first is in the context of a “composite mark” used by a joint venture where two unrelated entities may form a single joint venture, licensing their intellectual property, including trademarks, to that joint venture for use in the market. The second situation is “concurrent use,” whereby two parties are granted separate registrations, permitting them to use the same mark in connection with a similar product albeit in different geographic markets. The third scenario is when joint ownership is permitted and appears to extend logically from the classic Menendez doctrine: a trademark registration may be jointly owned by, and the goodwill associated with the mark apportioned among, the heirs of a unitary owner.
The joint ownership of the mark by DC/Marvel was not evolved overnight and in fact, both the competing houses had originally decided to battle for the owning the mark as well, by filing separately for the same. However, both these houses (and their smart lawyers) realized that the other would be using the mark as much as the one owning it, thus competing against one another in the courts for something as simple as the name of the book that they are publishing as well. To minimize this and the confusion at the source, joint registration of the mark was allowed and the rest they say is history.
In conclusion, whether or not this mark is actually a means of eliminating competition by limiting their usage of the term “Superhero” or is exploitative to smaller businesses or is what two owners of a registered mark do as their genuine duty for the protection of the mark is something that needs to be decided by the courts as and when disputes arise on a case to case basis but the recent case is a glimmer of hope, an exception to the usual rulings and stands true to one of the principles that “Superheroes” embody, nothing is impossible.

SEVEN TOWNS V. KIDDLAND: DELHI HIGH COURT ON TRADE DRESS PROTECTION

The concept of trade dress, although closely associated with trademarks is not explicitly recognized in Indian legislations unlike its U.S.A. counterpart. In Indian context, upon looking closely at the definitions of “mark” and “package” under S. 2 of the Trade Marks Act, 1999 we see that the trade dresses are also protected.

To define it, trade dress is the visual or sensual experience of a product and is inclusive of the packing, shape and combination of colours used in packaging, such that it distinguished the product from the ones of its competitors. So anything from the wrapping of Cadbury chocolates to the design of flagship stores of Apple Inc. would fall within the ambit of trade dress now.

A landmark case discussing the concept is the case of Walmart Stores v. Samara Brothers[i] where trade dress was defined as “a category that originally included only the packaging, or ‘dressing,’ of a product, but in recent years has been expanded by many courts of appeals to encompass the design of a product.”

However, the case of Vision Sports Inc. v. Melville Corp.[ii] draws a distinction as to the protection of trade dress and trademark protection wherein it was held that – In contrast, trade dress involves the total image of a product and may include features such as size, shape, colour combinations, texture, or graphics. Trade dress protection is broader in scope than trademark protection, both because it protects aspects of packaging and product design that cannot be registered for trademark protection and because evaluation of trade dress infringement claims require the court to focus on the plaintiff’s entire selling image, rather than the narrower single facet of trademark. This was also reiterated in the case of Colgate Palmolive v. Anchor Health[iii].

In the recent case, Seven Towns v. Kiddland[iv], the concept of trade dress is discussed in detail along with comments on the previous case laws discussing the same subject matter. The dispute is with regard to infringement of trade dress of the Rubik’s cube by the product of the defendant called Rancho’s cube, in terms of not only the product in itself but also the packaging and labeling.

Brief Facts of the case:

The plaintiff in this case, Seven Towns and Funskool are the original manufacturers and distributors of the product called “Rubik’s cube” which has been sold since 1975, all across the globe. The inventor of the cube, Mr. Rubik had the invention of the toy patented, in addition to the product being trademarked after his own name, after an amendment to the original name of “Magic Cube”. The plaintiffs allege that the defendants have used a deceptively similar trade dress to that of their product in order to confuse the consumers and take undue advantage of their goodwill. Hence Plaintiff filed suit for permanent injunction, restraining infringement of copyright, passing off, dilution, and various other reliefs against the defendants along with the application for seeking various interim reliefs against the defendants.

Arguments of the Petitioner:

In order to prove that the defendants have used a deceptively similar trade dress to that of Plaintiff’s  product in order to confuse the consumers and take undue advantage of their goodwill, plaintiffs in the form of a table shown the similarities in the packaging of their product with that of the defendant like – copying of the diagonal shape of packaging which gives an impression of a 3D triangle bulging out, the usage of 6 primary colors to denote the product’s name, its font and a label that denotes the appropriate age for the product being placed at the lower left hand of the label to name a few. The Plaintiffs did not claim rights over the cube per se, but the expression of the cube i.e. a cube comprised of 36 smaller cubes, 3X3X3 cube with black as its base and green, red, blue, yellow, white and orange being the different colors on each surface of the cube. The petitioners also rely on the fact that they have obtained considerable goodwill and reputation in the market as manufacturers of the cube and how they have been vigilantly acting against any company that infringes their product, in addition to the worldwide recognition and reputation wherein the toy in itself is referred to “Rubik’s cube”. This petition is thus presented before the High Court against the defendants for the tort of passing off and infringement of trade dress, which has resulted in considerable loss to the plaintiff. The plaintiff further relied on the case law of Ideal Toy Corporation v. Plawner Toy Mfg. Corp.[v] where the U.S. Court of appeals relied on acquired distinctiveness and trade dress serving the purpose of identification of source, apart from determining the trade dress of the plaintiffs and how it was considerably reputed and recognized. Further reliance is also placed on the case law of Heinz Italia v. Dabur India Ltd.[vi] which states that an injunction must follow where it prima facie appears that the adoption of the mark in itself was dishonest, thus praying for the interim relief of an injunction against the defendants.

Arguments of the Defendants:

The defendants denied that the trade dress of the plaintiff is distinctive or well recognized and hence, the same cannot acquire goodwill or be reputed. They also claim that the product is not of superior quality and that they have substantially invested in the advertising of their product. A dissimilarity table is produced on behalf of the defendants and reliance is placed on the sale of units, the difference in price to show that the plaintiffs wish to eliminate the serious competition that they fact from the defendants. The defendants also mention the difference in name, in the place of manufacture as points of distinction in addition to stating that the trade dress of the plaintiff fails to be a well known mark as specified under s. 11(6) and s. 2(zg) of the Trade Marks Act, 1999 as the plaintiffs have failed to provide any documentary proof of the same.  The defendants further bring forth the concept of trans-border reputation stating that “The trademark registrations in other countries would show that the trade dress of the Rubik’s Cube enjoys statutory protection, recognition and popularity in a significant number of countries worldwide. The goodwill and reputation as part of products of plaintiff No.1 in India and its recognition and popularity has seeped into India on account of transborder reputation.”[vii] The defendants further rely on several judgments to show that trade dress must be examined in its entirety and not looking at specific elements like L’oreal India Pvt. Ltd. v. Henkal Marketing India Ltd.[viii] and Kellogg Company v. Pravin Kumar Bhadabhai[ix] and the case law of Frito Lay India v. Uncle Chips Pvt. Ltd.[x] which states that competition must be free. Additionally, reliance is placed on s. 15(2) of the Copyright Act, 1957 and the case of Microfibres Inc v. Girdhar Co.[xi] which states that copyright ceases to exist when more than 50 copies of the product are made. In addition to this, the defendants also state that only colors cannot be monopolized as they are not distinctive and lack creative or artistic input, relying on Colgate Palmolive v. Anchor Health.[xii] Further, the primary colors of the cube are a functional element of the puzzle and cannot be monopolized. The defendants also allege that the patent to the invention of “Magic Cube” has expired and the product is now in the public domain. Furthermore, reference to the puzzle as “Rubik’s Cube” is not an indicative of the reputation and good will that the product carries, quoting the examples of packaged drinking water being known as ‘Bisleri’ commonly and photocopies being called ‘Xerox’. The defendants also rely on Cipla v. M.K. Pharmaceuticals[xiii] to indicate as to how the trade dress of medicine worked in favour of the second entrant to the market.

Observations & Conclusions of the Court

Manmohan Singh, J. decided the matter on September 6, 2016 making interesting observations with regard to the general nature of trade dress, deciding on the test against which passing off and deceptive similarity must be determined, the extent of unfair trade practice by the second or subsequent entrant in addition to the actual dispute of granting of an interim relief to the plaintiff on the existence of a strong prima facie case.

In the case of Hodgkinsons and Corby v. Wards Mobility[xiv], the English courts had held that the test for determination of passing off was a 3 step process where – the plaintiff must have considerable goodwill in the market, there must be misrepresentation by the respondent and there must be consequent damage caused to the plaintiff. Justice Singh relies on Microlube India Ltd. v. Rakesh Kumar Trading as Saurabh[xv] to state that regardless of subsistence of design right or its exhaustion, a passing off action can lie in given cases and discusses the observations of the case of Laxmikant V. Patel v. Chetanbhat Shah and Another[xvi], to state that passing off would be when a competitor initiates sale of goods and services in the same name or imitates the name causing injury to the business of the one who has property in that name. While commenting on the general nature of trade dress and thus what would comprise of passing off, Justice Singh uses the case of William Grant and Sons v. McDowell & Co. Ltd.[xvii]which further states for injunction there must be material disclosing that the public associates the object in question only with the plaintiffs. The case of William Edge & Sons Limited v. William Niccolls & Sons Limited[xviii] is relied on to explain that simply naming a product that was previously unnamed but had considerable popularity in the market as belonging to the subsequent entrant would not be distinguishing of the goods but would give the impression as belonging to the original manufactures and hence, passing off. The case of Anglo Dutch Paint Colour and Varnish Works Pvt. Ltd. v. Indian Trading House[xix] is also reiterated to explain that the subsequent entrant had no reason to use the applicant’s color arrangements save as with the improper motive of benefitting from his good will and the essential question that needs to be asked is why the same colours would be used but to attract the plaintiff’s goodwill and trade reputation which would amount to passing off. Justice Singh also uses the case law of Reckitt & Colman Products Ltd. v. Borden Inc. & Ors.[xx] to reiterate that the question that needs to be asked here is not whether the plaintiff can sell his product the way he does but why the defendant would deliberately adopt the same and the case of Colgate Palmolive v. Anchor Health[xxi] which states that “Trade dress is the soul of identification of a product” and the test for passing off is likelihood of confusion or deceptiveness and it is the duty of the subsequent comer to avoid unfair competition and become unjustly rich. This is also explained in the case of Cadbury v. Neeraj Food Products[xxii]where it is stated that deception is the essence of the tort of passing off.

Justice Singh clarifies the position with respect to where similarities or dissimilarities are to be considered in the case of the tort of passing off, stating that it was the points of similarity that need to be considered rather than the points of dissimilarity thus taking into consideration the judgments of S.M.Dyechem v. CadburyIndia Ltd.[xxiii]and Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd[xxiv]. Relying on the judgment of Sanjay Kapur v. Dev Agri Farms[xxv] and several other judgments cited within the case, the learned judge in this judgment states that affixing their own label does not amount to exclusive trade dress capable of distinction and there must be clear distinctions and the duty lies on the second entrant to ensure that he is not indulging in unfair trade practices or free riding the goodwill and reputation of an existing competitor. Justice Singh also states that monopoly over a single colour can surely not be enjoyed but that is certainly not the case here as it is the combination of colours that the plaintiff allege as infringed and is protected as their trademark. There exists considerable goodwill on the side of the plaintiff and they do have a huge reputation in the market, thus ensuring that the mark is well known under s. 11(6) of the Trade Marks Act. In arguendo, although the defendants claim that they can change the shape of the cubes to make them distinctive of the plaintiff’s product, Justice Singh states that this question can be answered later, when such case arises. The defendants relying on the case of Cipla v. M.K. Pharmaceuticals[xxvi] is also declared as wrong as the purchase of toys is distinct from that of medicines which is elaborated in the judgment.

Therefore, the Delhi High Court in this case ruled in favour of the plaintiff finding a prima facie case and granted them an injunction against the product of the defendants while also clarifying significant changes with respect to trade dress protection. This case is certainly an essential to understand the concept of trade dress and the extent of protection in the light of monopoly over colours, the test of similarities and labeling products if indicative of distinctiveness. However, Hon’ble Court has also specifically mentioned that the findings are tentative in nature and the same shall not have any bearing when the same would be decided on merits. It would be interesting to note the final outcome of the suit.

About the Author: Ms. Sakshi Sharma, Intern at IIPRD and Khurana & Khurana, Advocates and IP Attorneys.

References:

  1. Wal-Mart Stores vs. Samara Bros., 529 U.S. 205, 120 S. Ct. 1339 (2000).
  2. Vision Sports, Inc. v. Melville Corp. 12 USPQ 2d 1740.
  3. Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51.
  4. Seven Towns v. Kiddland, I.A. No.13750/2010 in CS(OS) No.2101/2010, as decided on September 06, 2016.
  5. Ideal Toy Corporation v. Plawner Toy Mfg. Corp, 685 F.2d 78 (3rd Cir. 1982).
  6. Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1.
  7. Seven Towns v. Kiddland, Para 16.
  8. L’oreal India Pvt. Ltd. v. Henkal Marketing India Ltd, 2005 (6) BomCR 77.
  9. Kellogg Company v. Pravin Kumar Bhadabhai, 1996 (36) DRJ 509.
  10. Frito Lay India v. Uncle Chips Pvt. Ltd., (2000) 86 DLT 31.
  11. Microfibres Inc v. Girdhar Co, (2006) 128 DLT 238.
  12. Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51.
  13. Cipla v. M.K. Pharmaceuticals, MIPR 2007 (3) 170.
  14. Hodgkinsons and Corby v. Wards Mobility, [1997] FSR 178.
  15. Microlube India Ltd. v. Rakesh Kumar Trading as Saurabh, (2013) 198 PTC 120.
  16. Laxmikant V. Patel v. Chetanbhat Shah and Another, (2002) 3 SCC 65.
  17. William Grant and Sons v. McDowell & Co. Ltd., 55 (1994) DLT 80.
  18. William Edge & Sons Limited v. William Niccolls & Sons Limited, (1911) AC 693 at 709.
  19. Anglo Dutch Paint Colour and Varnish Works Pvt. Ltd. v. Indian Trading House, AIR 1977 Delhi 41.
  20. Reckitt & Colman Products Ltd. v. Borden Inc. & Ors., 1990 R.P.C. 341 at page Nos.414 to 416, 422, 426.
  21. Colgate Palmolive v. Anchor Health, 108 (2003) DLT 51.
  22. Cadbury India Ltd. v. Neeraj Food Products, 142 (2007) DLT 724.
  23. S.M.Dyechem v. Cadbury India Ltd., (2000) 5 SCC 574.
  24. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 783.
  25. Sanjay Kapur v. Dev Agri Farms, 2014 (59) PTC 93 (Del).
  26. Cipla v. M.K. Pharmaceuticals, MIPR 2007 (3) 170.