TRADEMARK REGISTRATION

 

TRADEMARK REGISTRATION

u  Advantages of Trademark Registration

u  Term/Duration of a Trademark in India

u  Indian Trademarks Act 1999 talks about the  grounds of refusal of the trademark registration.

u  The law regarding the refusal is laid down in  different sections.

u  Section 9

   – Absolute Grounds of Refusal

u  Section 10

-Limitation  as to colour to decide the distinctive character

u  Section 11

   – Relative Grounds of Refusal

u  Section 12

-Registration in the Case of Honest Concurrent Use

u  Section 13

-Chemical Names

u  Section 14

-Names and representation of Living or dead persons

u  Section 15

-Parts of Trademark

u  Section 16

-Associated Trademark

u  Section 17

-Effect of Parts of TM

u  Grounds of   Refusal

u  Section 9 in The Trade Marks Act, 1999

u  (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

u  (b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

u  (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered:

u  Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

u  9. Absolute grounds for refusal of registration.—(1) The trade marks—

u  (2) A mark shall not be registered as a trade mark if—

u  (a) it is of such nature as to deceive the public or cause confusion;

u  (b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;

u  (c) it comprises or contains scandalous or obscene matter;

u  (d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).

u  (3) A mark shall not be registered as a trade mark if it consists exclusively of—

u  (a) the shape of goods which results from the nature of the goods themselves; or

u  (b) the shape of goods which is necessary to obtain a technical result; or

u  (c) the shape which gives substantial value to the goods.

u  Explanation.—For the purposes of this section, the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration.

u 
The First Rule – [sub-section (1)] 

A. The mark lacks distinctiveness; 

B. The mark is descriptive of the characteristics of the goods or services; 

C. The mark consists exclusively of marks or indications which have become customary or in the bona fide and established practices of the trade. 

u  Absolute Grounds –
 (Section 9 of the Act) 

u  Sec 9 (1) The trade marks

u  (a) which are devoid of any distinctive  character, that is to say, not capable of  distinguishing the goods or services of one  person from those of another person;

u  Factors to be taken into consideration

     (1)Too Descriptive

     (2)Too commonplace

u  The More aptly it describes the goods, less distinguishing it becomes

u  (b) which consist exclusively of marks or  indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

u  Absolute Ground

u  For a sign to be distinctive of a persons goods  or services in the required manner, it must be,  generally speaking, incapable of application  to the goods or services of anyone else.

u  If people exposed to it are not generally likely  to regard it as something which provides an  indication as to the characteristics of the goods or services with reference to which it is used.

Jack Wills Limited v House of Fraser 2014

u  Some Examples

u  Arbitrary words or invented words are inherently  distinctive

u  Signature prima facie distinctive.

u  Personal names or surnames are not considered to be inherently distinctive.

u  Geographical origin is also not distinctive.

u  But where the use of the geographical name is completely arbitrary or where the area is small village or non industrial town or where the word has some other better meaning also it may be regarded as distinctive.

u  Laudatory words are not considered as distinctive, e.g.  PERFECTION for soap was refused registration.

u  Jeryl Lynn Trade Mark Application, 1999 FSR 491

u  The registration was sought for medicinal/pharma  preparation used for mumps vaccine, the name was chosen  in honour of Jeryl from whom the original mumps virus was  isolated. The Mumps virus was also known under the same  name.

u  Colgate Palmolive Co. trademark application

u  Two dimensional pictorial mark consisting of the image of a  slug of stripped toothpaste was refused registration on the basis of non distinctiveness.

u  American Online Corp. Application

u  ‘You’ve Got mail’ was sought to be registered.  Court held that it is completely descriptive and any other service provider has an equal  right to use the same words while dealing  with its customers, hence the phrase must  remain free of monopoly.

u 
In ELGI Ultra Industries Limited v The Assistant Registrar of Trade Marks, the Intellectual Property Appellate Board [IPAB], MANU/IC/0062/2008, the IPAB held that the words “ultra” and “perfect” are highly descriptive and laudatory. 

In Imperial Tobacco Company of India Ltd v. Registrar of Trademarks, AIR 1968 Cal 582, the Calcutta High Court held that the trade mark “Simla” with the label is composite in character. It is a well known hill– station of India. Its geographical signification is, therefore, plain and unequivocal. 

u  IHHR Hospitality Pvt. Ltd. V Bestech India Ltd. 2012 (50) PTC 535 (Del)(DB)

u  Ananda

u  Parsons Bros. &Co. v. John Gillespie & Co. (1898) 15 RPC 57

u  Flaked Oatrmeal

u  Reuter v. mulhens (1954) Ch. 50

u  4711 eau-de-cologne

u  Britannnia Industries Ltd. V. Cremica Agro Foods Ltd. 2008(38) PTC 89(Del.)

u  Greetings

u  Cadila Healthcare Ltd. V. Gujarat Co-operative Milk Marketing Federation Ltd. & Others (36) PTC 168 (Del)(DB)

u  (1) The extent of its use qua the product

u  (2) The expenditure incurred by the plaintiff in marketing and promotion

u  (3) Profit & Sales Revenue

u  (They reflect popularity, usage, consumer recognition and market strength)

u  Descriptive Words v. Suggestive Words

u  Eastman Photographic Materials Company Limited v. The comptroller general of Patents, Designs & Trademarks (1898) AC 571

u  Solio

u  Campagnic Industraille Des Petroles’s Application

u  Motorine Case

u  Ketstone Knitting Mills Ltd.’s Application

u  Charm Case

u  Marico Ltd. V. Agro Tech Foods Ltd. 2010 (44) PTC 736 (Del)(DB)

u  Sugar Free

u  Re Leopold Cassella & Co. (1910)2 Ch. 240

u  Diamine

u  F. Hoffmann La Roche & Co. Ltd. V. Geoffrey Manner &Co. Ltd Dropovit

u  Geographical Names

u  Geepee Ceval Proteins and Investment Pvt. Ltd. V. Saroj Oil Industries 2003(27) PTC 190 (Del.)

u  Eboline Case (1894)3Ch.166

u  Liverpool Electrical Cable Co. Ltd. (1929)46 RPC 99

u  A. Bailey & Ltd. V. Clark, Son & Mortland Ltd. (1938) 55 RPC 253

u  Hi-Tech Pipes Ltd. V. Asian Mills Pvt. Ltd 2006(32)PTC 192(Del.)

u  Tijuana Smalls

u  Re Magnolia Metal Company’s Trademarks Case (1897)2 Ch.371

u  Baby Dry case: In this case the trademark baby  dry was used for nappies. In opposition to the  trademark it was said that it tells that function of  the product and hence should not be registered.  It was held that syntactically unusual  juxtaposition is not familiar expression in English language for designating babies nappies or for describing their essential characteristics. Hence the attack was struck down.  Procter & Gamble Company v. Office for Harmonisation in the Internal Market, Case C-383/99 P, 2001 Eur. Ct. Rpts. 0000 (Eur. Ct. Just. 20 September 2001)

u  ITC Ltd. V Registrar of trademarks AIR 1997 “Simla”

      The issue was regarding the registrability of the geographical names.  Court held that if the name is such as would never occur to any other trader in such goods to use , then it may be registered. Name of a major industrial area or city would  be completely un-registrable.

u  “Day by day” mark was rejected registration for  milk products on the grounds that It designate the time of delivery of the goods. It was said that the message of the mark was that don’t rely on a weekly shop, have it delivered fresh day by day. Hence it was the Right of every such trader to convey to the consumers to rely on day by day delivery.

u  (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.

     Example – stars in hotel industry as Representation of Chef for food or restaurant

     PROVIDED that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well known trade mark. Hence personal name or surname which otherwise is not inherently distinctive can acquire  distinctiveness over a period of time if people start associating it with the particular goods or services.

The following are the factors to be considered in determining whether a mark has acquired distinctiveness or not

u  Whether the mark contains any descriptive elements of the goods or services?

u  How intensive and geographically widespread the use of the mark is?

u  Whether the mark is having a longstanding use?

u  The amount invested in promoting the mark

u  The proportion of the relevant public which identifies, the goods/services having the mark, as originating from a particular company

u  Statements from the chambers of commerce/industry /trade bodies etc

u  Clause 2 of section 9 provides

u  A mark shall not be registered as a trade mark if

u  (a) it is of such nature as to deceive the public or cause confusion;

u  The public might be deceived as to the nature, quality or geographical origin of the goods or services

u  Swiss Miss Trade Mark Application, 1997 RPC 219  Application to register “Swiss Miss” for chocolate,  cocoa drinks and other milk preparations by a US company was refused because it was likely to cause some people to think that the product originated in Switzerland

u  (b) it contains or comprises of any matter  likely to hurt the religious susceptibilities of  any class or section of the citizens of India; In England “Hallelujah Trade Mark” application, 1976 RPC 605, was refused

u  (c) it comprises or contains scandalous or obscene matter;

u  (d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

u  Eg-The name, emblem or official seal of the United Nations Organisation.

u  The name, emblem or official seal of the World Health Organisation.

u  The Indian National Flag.

u  The name, emblem or official seal of the Government of India or of any State, or any other insignia or coat-of-arms used by any such Government or by a Department of any such Government.

u  Any name which may suggest or be calculated to suggest

u  (i) the patronage of the Government of India or the Government of a State; or

u  (ii) connection with any local authority or any corporation or body constituted by the Government under any law for the time being in force.

u  The name, emblem or official seal of the United Nations Educational, Scientific and Cultural Organization.

u  The name or pictorial representation of Rashtrapati, Rashtrapati Bhavan, Raj Bhavan.

u  The name or pictorial representation of Mahatma Gandhi, Pandit Jawaharlal Nehru Chhatrapati Shivaji Maharaj or the Prime Minister of India

u  Clause (3) of section 9:

u  A mark shall not be registered as a trade mark if it consists exclusively of 

u  (a) the shape of goods which results from the nature of the goods themselves; or

u  (b) the shape of goods which is necessary to obtain a technical result; a bar of soap with indentations along its sides to allow a better grip is a shape consisting exclusively of a shape necessary to achieve that technical result.

u  (c) the shape which gives substantial value to the goods.

u  This Section was aimed at preventing a trader from monopolizing registration of shapes which added a substantial value to goods over other shapes,

u  Ex: a lampshade, a telephone designed to appeal to the eye... such designs should be protected as design protection or the like, not by trademark registration

u  The Third Rule – [9 sub– section (3)] 

u 

The use of the mark in India should be prevented by virtue of any law in particular the law of passing off protecting an unregistered trademark or by virtue of the law of copyright. 

The Supreme Court in Parle Products (P) Ltd. v. J.P. & Co. Mysore AIR1972SC1359 held that

u  “in order to ascertain whether one mark is deceptively similar to another, the broad and essential features of the two marks have to be considered. It would be enough if the impugned mark bears an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one, to accept the other if offered to him.” 

u  RELATIVE GROUNDS SEC 11

u  Identical marks on similar goods

u  Similar marks on identical or similar goods

     In the above two conditions if there is likelihood of confusion then the trademark registration would be denied. If the marks are identical and goods are also  identical confusion would be presumed to be  there and hence registration would be denied TM 

u  Normally likelihood of confusion requires an appreciation of the Visual, phonetic or  conceptual similarity.

u  The global appreciation of the likelihood of confusion must as regards the visual, aural or conceptual similarity of the marks in question be based upon the overall impression created by them, bearing in mind, in particular their distinctive and dominant components.

u  If the mark is more distinctive the chances of confusion are very high.

u  Degree of similarity between goods and  services is also to be judged.

u  It is a question of fact 

u  One must look at the trade and must look at it from practical business and commercial  purpose.

u  An average consumer perceives the mark as a whole and doesn't proceed to analyze its various details.

u  Average consumer only rarely has the chance to make a direct comparison between different marks but must place his trust in the imperfect recollection of them he has kept in his mind.  But an average consumer is reasonably well informed,  reasonably observant and reasonable circumspect.

u  So in considering confusion courts reject confusion by a ‘moron in a hurry’ in favour of ordinary sensible member of public

u  Society Des Products v V.M. confectionary limited 2004 (29) PTC 508 (IPAB)

u  ZERO V AERO-The marks shall be held to be similar as the slight phonetic dissimilarity does not equip, illiterate class of people to make out such subtle distinction and select the goods.

u  Punjab Tractors v. Pramod Kumar Garg 2000 PTC The opposition of plaintiffs to the registration of SWARAJ trademark for diesel oil engines and hand pump sets was upheld when the mark was already registered for tractors.

u  The broad question is whether the goods are such that by virtue of some similarity, affinity or other circumstance, the purchasing public will  consider them as coming from the same source if marketed under similar trade marks.

u  The whole dispute has to be judged from the commercial and business point of view.

u  It is not enough that seeing the mark the earlier mark is called to mind, if there is no possibility of confusion.

u  Corn products v. Shangrila food products. 1960 SC Court held:  Marks to be considered as whole 

u  We have to approach it from the point of view of a  man of average intelligence and imperfect recollection.

u  To such a man the overall structural and phonetic  similarity and similarity of idea is likely to cause confusion.

u  Hence  gluvita was held to be deceptively similar to glucovita

u  The Supreme Court in Parle Products (P) Ltd. v. J.P. & Co. Mysore AIR1972SC1359 held that

u  “in order to ascertain whether one mark is deceptively similar to another, the broad and essential features of the two marks have to be considered. It would be enough if the impugned mark bears an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one, to accept the other if offered to him.” 

u  Amritdhara Pharmacy v. Satyadeo Gupta AIR 1963 SC449

u  Lakshmandhara / Amritdhara

u  William Bailey (Birmingham) Ltd Application (1935) 52 RPC 137

u  Erectiks/Erector

u  Fox’s Application (1920) 37 RPC 37

u  Motrate/ Filtrate

u  BDH Industries Ltd. V. Croydon Chemical Works Pvt. Ltd. AIR 2002 Bom 361

u  PV-DINE/PIODIN

u  A. Structural Visual Phonetic similarity-Dissimilarity

u  B. POV of man of av intelligence

u  C. Considered as a whole

u  D. Question of Impression

u  Test for Whether Goods were of same Description

u  Nature & Composition of the Goods

u  Respective Use of Goods

u  Trade Channels through which the respective goods were bought and sold

u  Jelink’s Application (1946)63 RPC 59 (Shoe & Shoe polish)

u  Lyon and Co. Ltd. Application (1959) RPC 120

u  Sweets-Ice-cream & Jelly

u  Section 11(2) – Well Known Trademarks

u  An identical or similar trademark shall not be registered even on dissimilar goods if the use of the later mark without dues cause would take unfair advantage of or be detrimental to the distinctive character or repute or the earlier trademark.

u  Rolex SA v. Alex Jewellery Pvt. Ltd.  2009 (41) PTC 284 (Del.)

u  Relevant factors:

u  The knowledge or recognition of that  trademark in the relevant section of the public

u  The duration, extent and geographical area of  any  use of that trademark or promotion of the trademark 

u  The record of successful enforcement of the rights in that trademark

u  Factors not relevant:

u  The use of the trademark in India

u  The registration or application for that trademark in India

u  Is well- known in or has been registered or application for registration has been filed in any country outside India.

u  That it is well known to the public at large in India.

u  ICICI Bank Ltd v. Chaundong XU 2012 (49) PTC 291 (Del.)

u  Section 11(3)

u  A trademark shall not be registered if, or, to the extent that,

u  its use in India is liable to be prevented

1. by virtue of any law in particular law of passing off

2. By virtue of law of copyright

u  Honest concurrent use (Sec 12)

u  In case of honest concurrent use trademarks which are  identical or similar on identical or similar goods may be permitted, upon such conditions and limitations imposed by the Registrar

u  In  London Rubber co. v. Durex Products AIR 1963 SC  SC held that likelihood of confusion is not relevant when there is honest and concurrent use.  It has been held that the use must not only be  concurrent but also honest

u  In  Club Europe trade mark case, the dispute was  between British airways and a travel agency in England.  It was proved that the agency had started the use of  the mark even before BA and had honestly continued  its use. BA’s objection to registration was set aside and the mark was allowed to be registered.

u 
Honesty is an Exception – [sub-section (4) of Section 11 read with Section 12! 

Section 12 of the Trademarks Act, 1999 permits registration of “honest concurrent users”. For availing this benefit, the applicant must be bonafide prior or concurrent user.

u  Kores (India) Ltd.v. M/S Khoday Eshwara and Sons and Another

u  1984 Arb. L.R.213 (Bom).

u  1. the honesty of the concurrent use

u  2. The quantum of concurrent use (duration, area and volume of trade)

u  3. The degree of confusion likely to follow from the resemblance of the applicants’ mark and the opponents’ mark

u  4. Whether any instance of confusion have in fact been proved

u  5. The relative inconvenience which would be caused to the parties and the amount of inconvenience which would result to the public if the applicants’ mark is registered.

u  Procedure/Steps for Trademark Registration

u  Trademark Search

u  Before beginning the trademark registration process, the entrepreneur or a trademark professional must conduct a trademark search of the trademark database. A trademark search will provide information about identical or similar trademark that has already been filed with the trademark registry.

u  A trademark search can be conducted by visiting the Trademark Registrar Website. 

u  Trademark Filing

u  Once a trademark search is completed, the application for trademark registration can be filed with the Trademark Registrar. The application for registration of trademark must be made in the prescribed manner and filed along with the fee for trademark registration.

u  Trademark application can be filed at one of the five Trademark Registrar Office having jurisdiction over the State or online.

u  A trademark registration application must contain the following information:

1. Logo or the Trademark
2. Name and address of the trademark owner
3. Classification or Trademark Class
4. Trademark used since date
5. Description of the goods or services

u  Trademark Application Allotment

u  Once the Trademark registration application is filed with the Trademark Registrar, a trademark application allotment number is provided within one or two working days.

u  The trademark application can also then be tracked online through the Online Trademark Search facility.

u  Typically, on obtaining trademark application allotment number, the owner of the trademark can affix the TM symbol next to the logo.

u  Vienna Codification

u  The Vienna Classification or Vienna Codification, established by the Vienna Agreement (1973), is an international classification of the figurative elements of marks.

u  Once the trademark registration application is filed, the Trademark Registrar will apply the Vienna Classification to the trademark based on the figurative elements of marks.

u  While this work is in progress, the trademark application status usually reflects as “Sent for Vienna Codification”.

u  Trademark Examination

u  Once Vienna Codification is completed, the trademark registration application will be allotted to a Trademark Officer in the Trademark Registrar Office.

u  The Trademark Officer would then review the trademark application for correctness and issue a trademark examination report. The Trademark Officer has the ability to accept the trademark registration application and allow for trademark journal publication or object the trademark registration application.

u  If the trademark registration application is objected by the Trademark Officer, the trademark applicant has the right to appear before the Trademark Officer and address the objections.

u  If the Trademark Officer is satisfied with the justifications of the trademark applicant, the trademark would be allowed for trademark journal publication.

u  In case the Trademark Officer is not satisfied with the justifications, the trademark applicant has the right to appeal the decision of the Trademark Officer before the Intellectual Property Appellate Board.

u  Trademark Journal Publication

u  Once the trademark registration application is accepted by the Trademark Registrar, the proposed trademark is published in the Trademark Journal.

u  The trademark journal is published weekly and contains all the trademarks that have been accepted by the Trademark Registrar. Once the trademark is published in the trademark journal, the public have an opportunity to object the trademark registration, if they believe they will be damaged by that registration.

u  If there are no objections filed within 90 days of that publication, the mark will typically be registered within 12 weeks – months time.

u  If the trademark registration application is opposed by a third-party, hearing will be called for by the Trademark Hearing Officer.

u  Both the trademark applicant and the opposing party have the chance to appear at the hearing and provide justifications for registration or rejection of the trademark application.

u  Based on the hearings and the evidence presented, the Trademark Hearing Officer will determine if the trademark registration application should be accepted or rejected. The decision of the Trademark Hearing Officer can also be challenged by escalating to the Intellectual Property Appellate Board.

u  Trademark Registration

u  Once there are no objections or oppositions for the trademark registration application, the trademark manuscript and trademark registration certificate will be prepared and sent to the trademark application office.

u  Once the trademark registration certificate is issued, the trademark is considered to be a registered trademark of the owner, granting the trademark owner exclusive use of the mark. The ® symbol can now be placed next to the logo or trademark.

u  Trademark Registration Process Flowchart

 

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