Professional Documents
Culture Documents
A PROJECT REPORT
2/20/2010
PROJECT
ON
BUSINESS ENVIRONMENT & LAW
TRADEMARKS
SUBMITTED TO SUBMITTED BY
Abhinav Rajput(39)
Yashpal Malik(53)
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Rachit Goyal(57)
GauravShukla(48)
Acknowledgement
Development of this project was a meticulous job and requires lot of commitment. It is a pleasure
for us to express our thanks and heartiest gratitude to all those who help us directly or indirectly
during the development of this challenging project. We would like to take this opportunity to thank
them all.
While we cheerfully share the credit for the accurate aspect of this project report. The mistakes and
omissions we have to claim as are our alone. Please bring them to our attention.
We would like to thank Ms. Shinu Viz for providing us the required useful
information and guiding us through this project. We would also like to express
our sincere gratitude to Amity Business School, Noida in general, for
providing excellent study material, with all facilities for project development.
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Table of content
contents Page No.
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WHAT IS A TRADEMARK
A ‘Mark` may consist of a word or invented word, signature, device, letter, numeral, brand,
heading, label, name written in a particular style, the shape of goods other than those for which
a mark is proposed to be used, or any combination thereof or a combination of colors and so
forth. Subject to certain conditions, a trademark may also be symbolized by the name of a
person, living or dead.
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Trademark in India: Registering Procedures & Laws and Challenging
Trademarks
The Indian law of trademarks is enshrined the new Trade Marks Act, 1999 came into
force with effect from September 15, 2003. The old Trade and Merchandise Marks
Act, 1958 was repealed at the same time. The new Trademarks Act of 1999 is in line
with the WTO recommendations and is in conformity with the TRIPS Agreement to
which India is a signatory.
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MAIN FEATURES OF NEW LEGISLATION IN INDIA
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chosen should be capable of distinguishing goods or services of one person from
those of the others. Further it should not be deceptively similar to an existing mark of
another person and not the one expressly prohibited under the Act.
The marks devoid of any distinctive character, or which are only indicative of the
kind, quality, quantity, purpose, value or geographical origin of the goods, or which
are marks already in vogue in the trade due to their customary use may not be
registered. But these disqualifications do not apply to marks, which have already
acquired distinction due to their popularity and consistent use. Internationally
acclaimed brand names are freely available for use in India.
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• Product trademarks: are those that are affixed to identify goods.
• Service trademarks: are used to identify the services of an entity, such as the
trademark for a broadcasting service, retails outlet, etc. They are used in
advertising for services.
• Certification trademarks: are those that are capable of distinguishing the goods
or services in connection with which it is used in the course of trade and
which are certified by the proprietor with regard to their origin, material, the
method of manufacture, the quality or other specific features
• Collective trademarks: are registered in the name of groups, associations or
other organizations for the use of members of the group in their commercial
activities to indicate their membership of the group.
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appointed by you is located.
In case of a company about to be formed, anyone may apply in his name for
subsequent assignment of the registration in the company's favor.
Before making an application for registration it is prudent to conduct a trademark
search in the Trademark office in context of the already registered trademarks to
ensure that registration may not be denied in view of resemblance of the proposed
mark to an existing one or prohibited one.
WHO CAN USE A TRADEMARK
The right to use a mark can be exercised either by the registered proprietor or a
registered user.
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more convention countries, the period of six months would be reckoned from the date
on which the earlier or earliest of those applications was made.
Although the recovery of damages for infringement of a trademark is possible only if
the infringement takes place after the date of filing application for registration with
the concerned trademark office in India, yet the deemed seniority in making
application in home country may entitle the applicant to initiate an action in India for
injunction, delivery of impugned labels and so on.
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end of this questionnaire on trade marks.
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that the mark is wrongly remaining on the register. The Registrar also can suo moto
issue Notice for removal of a registered trade mark. Non use of a registered trademark
for continuous period of 5 years is also a ground of removal.
The Indian trademark law provides for invalidation proceedings and you have the
right to initiate a cancellation action should a competitor have registered your
trademark in India. You also have the right to initiate either a civil or a criminal
action against any party that is violating your mark in India.
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Registration of trademarks is one of the important protections that businesses should
avail in India. Many foreign and domestic Applicants have been able to successfully
register their marks in India. Indian courts have upheld many of those registrations
and granted favorable decisions to rights holders.
In addition to the registering of their trademarks in India, businesses need to adopt
other strategies for protecting their trademarks. Some of them are mentioned below:
• Get trademark searches conducted in the Indian Trade Marks Registry in the
classes that are of interest to you including the ancillary classes.
• Get common law searches (this includes the internet, market surveys, yellow
pages and directories) conducted to ascertain whether third parties are using
your trademarks and if so, the extent of such use.
• Based on this information and after seeking the local counsel’s opinion decide
if the trademark is available for use or not.
• Should the trademark be available for use, immediately apply for the
registration.
• The rights holder should also consider hiring a watching service to monitor
the trademark journals in order to alert them to any published, deceptively
similar trademarks or descriptive trademarks that might be of concern.
• Should the rights holder own a trademark that has been used and has acquired
goodwill and reputation, it is advisable that along with filing of the trademark
application in India, they should also make press releases, publish cautionary
notices and advertise the mark to ensure that the relevant section of the public
is aware that they are entering the Indian market and are protecting their
trademark from any kind of third party violation.
• The rights holder should also take immediate steps to register their domain
names including country coded top level domain names in India, as there have
been many instances of third parties registering domains for certain well
known marks with the intention of extracting money by selling these domain
names to the rights holders.
• Should the rights holder discover that their trademark is being infringed, they
should take immediate steps to protect their trademark, either by the means of
filing oppositions, cancellations, conducting investigations, sending cease and
desist notices or initiating appropriate civil and criminal actions.
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and services.
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THE INDIAN TRADEMARK ACT 1999
The enactment of the Indian Trademark Act 1999 was a big step forward from the
trade and merchandise Mark Act 1958 and the Trademark Act 1940.The newly
enacted Act has some features not present in the 1958 Act and these are:
3. Allowing filling of single application for registration in more than one class
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7. Constitution of an appellate board for speedy disposal of appeals and
rectification applications which at present lie before the Highcourt
• FOREIGN TRADEMARKS
• The CTM system is administered by the Office for Harmonization in the Internal
Market (Trade Marks and Designs) (OHIM), which is located in Alicante, Spain
(see also trade mark law of the European Union).
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Intresting Questions
Suppose a situation where you want to start using an old trademark that your former company
use to own. When you left the company my partner moved all of the intellectual property into
his own name. We're on great terms.
The question is now that the trademark expired (he didn't need it any more) would it be quicker
for him to reclaim it and then license it to me or for me to simply start the process of securing it
for my new venture.
I am in the process of searching for a name for a small local video channel and came across a
perfect one. However, there is currently a trademark held by a large technology company for
this exact same mark. The mark specifies "computer hardware, graphics cards, and related
software." We will not be producing hardware or software but I am slightly concern that using
the name could lead to potential problems. I am wondering if you think our use of the mark
might be an issue. If it is okay to use this mark, do you think it would be possible to file for a
mark that covers our specific service?
If I register the name as a trademark, do I then own it and have full rights to use it?
Can I allow the other person to continue making the product as long as it does not compete
with our commercial product?
When an artist paints a picture that incorporates another company's trademark (eg. Andy
Warhol's Campbel's Soup) does it become an original piece owned by the artist or can the
trademark owner intervene if the artist tries to sell the work for commercial gain, or if they
don't approve of the way their logo/product is being depicted in the art?
Thinking about it, Andy Warhol may not be the best example, as I am quite sure that
Campbel's would have been all too happy to see their name imortalised forever by a famous
artist, but as a point of law what is the legal standpoint?
For instance, sports artists who make paintings of world famous superstars like Tiger Woods
often include the Nike cap that he wears, so could Nike object the use of their TM without
authorisation?
Or as another example, take paintings of world famous racing drivers who are depicted in their
cars, which carry a multitude of registered marks. Is the artist not exploiting those marks to sell
his work, as without those logos on the car or overalls the authenticity would be lost?
When can you copy a registered mark in a piece of art and use it to make money?
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Case study
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The High Court referred a number of cases for arriving at the judgment. Considering the facts
of the case, the Court distinguished between house mark and product identification mark. The
Court held that Parle is a mark that belongs to both Plaintiff and Defendant as after the division
of the companies belonging to the brothers, the companies continued to use the mark Parle
without any objection from the other. The mark Parle is the company identification mark that is
used by both parties. Thus Parle is a house mark that is used by both the companies. It was
further held that each product manufactured by the Plaintiff and the Defendant had a distinct
product name, by which the customer identifies the products. These product names are product
identification marks that distinguish one product from the other inspite of having the same
house name. The mark Parle which is used on all the products of the Plaintiff and the
Defendant is their house mark. For each product a separate mark, e.g. Glucose, Mango-Bite
including Mintrox and Buttercup etc. that is given, is the product mark.
On the contention of Plaintiff to restrain Defendant from using the mark Parle Confi on their
products, the Court held that as Parle Confi is not a registered trademark of the Plaintiff, hence
its use by the Defendant cannot per se be forbidden. The product mark as well as house mark
may appear side by side on a product. The Court held that the mark Parle Confi does not
amount to any misrepresentation of the product as a product of the Plaintiff as it does not create
any confusion in the mind of the public who would, at best, think that it is a product of the
Parle Group of Companies. A customer while buying a product of Parle shall not only ask for
the house name of Parle but shall specify the product one wants to purchase like Glucose,
Monaco, Mango Bite, and also Buttercup or Mintrox, etc. On the objection of the Plaintiff that
the trademark Parle was registered to market biscuits and confectionaries manufactured by
them, the Court held that there is no prior memorandum between the parties that bars the use of
the word Parle on each others products. In the absence of such memorandum, either party can
use the word Parle singly or in combination with any other word.
In the present case, as the Defendants have separate product identification marks for each of its
products, i.e. Mintrox and Buttercup, hence it was held that, it shall not create any confusion in
the mind of the public. The Court held that the Defendants shall not be restrained from using
the word Parle/Parle Confi on their products as they have a distinct product identification mark
for each product. However the Court has ordered the Defendant that for selling its products,
Mintrox and Buttercup under the Parle and Parle Confi names, it has to specify in clear font on
the package of Mintrox and Buttercup that the product belongs to the Jayantilal Group and is
not related to Parle Products Private Limited.
The judgment in this case is one of the first trademark cases in India that has given, in clear
words, the distinction between house mark and product identification mark. The judgment
certainly, shall bring more clarity in the concept of house mark in India.
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Articles
If you are a writer, publisher, web site designer, site owner and if you own, claim to
own, use or want to use intellectual property on the Internet, then you must have at least
a short but functional knowledge of how the United States trademark, copyright and
other laws, as well as various state laws, may apply to you. There is an intimate
relationship among your rights and the rights of others. At any moment, you may be
both a user of other’s protected materials and a creator of your own. Both they and you
deserve to have your intellectual property rights protected.
In addition to the more traditional logos and designs that are the subject of
trademark law, domain names are now also subject to being trademarked if they
otherwise qualify as marks. Indeed, the rules for what may and may not qualify for
trademark status are not all that different except that the Internet presents additional
issues.
Some Of The Issues
But before discussing the issue of how one can obtain a trademark in a domain
name, it might be helpful to first explain how the Internet impacts upon regular, real
world marks. If a mark in the hard copy world is also being used in relation to goods or
services provided via the Internet, the United States Patent and Trademark Office
(USPTO) policy is that any registration for such Internet use is to be filed under
the same classifications as apply to the use of the mark in the hard copy world. In other
words, the registration is classified under the same categories as the subject matter of the
goods or services. How the applications are filled in vary with the subject matter of the
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goods or services, but in essence the use on the Internet is another version of the
underlying, real world uses. So when applying for a mark that is used in both the real
world and on the Internet, the classifications would be the same but the manner of use
would have to be expanded to include use via the Internet.
On the other hand, if a mark is used solely in relationship to the Internet and there is
no corresponding use in the hard copy world, such as a domain name, then it appears
that a separate registration classification may be available to offer further protection to
the mark as it is being used on the Internet. However, the use of a domain name
must not simply be as an address or location but must be used to identify the goods or
services of the person or firm claiming the mark which goods or services are provided via
the Internet. Thus, the mark must be used not only as a domain name but in advertising,
marketing materials on the Internet and perhaps in the hard copy world as well. Thus,
the domain name must become an integral part of the goods or services so provided in
order for it to be the subject of a registration. This of course is in keeping with the
purpose of marks, which is to identify the goods and services of a particular source.
So, for example, since many publishers want to have domain names that track the
name of their company, those publishers should plan on marketing their company name
in the form of the domain name via the Internet as well as including the domain name in
all hard copy advertising and marketing materials as well, including their books.
Moreover, since publishers may run into conflicts with the names of other
publishers, it is very wise for those publishers, before choosing a name for their company,
to do a trademark search in addition to perhaps checking books in print or other more
traditional sources. A thorough search performed by a search firm will also search
Internet domain names to see if there are others who are using the name, if for another
company purpose.
Additionally, one of the key factors in determining whether any mark is registerable
is the distinctiveness of the mark. Thus, in contemplating a domain name, whether as a
publisher, site owner, web designer on behalf of a site owner or otherwise, the more
distinctive the domain name the more chance there is that it will qualify as a mark. Even
though someone has a domain name, if it is merely descriptive, non-unique and otherwise
merely provides information as opposed to identification, the less chance there will be to
claim it as a mark.
Furthermore, it is very advisable to seek federal registration for the domain name as
a mark since that may then provide protection not only on the Internet but in the hard
copy world as well. In other words, like all other trademark owners, should someone off
line seek to market and promote a product or service that may lead to confusion in the
minds of the public with your domain name, you may be able to prevent that conflicting
use. Such registration provides many other benefits. (see Trademark Law: An
Overview )
Domain Names As Infringing Marks
Conversely, to the extent that you have obtained a unique domain name but have not
obtained a federal registration for it with the USPTO, you may find yourself at the wrong
end of an infringement claim. The holder of a mark in the real world may notify you that
your domain infringes upon their use of their mark in that your mark has the potential of
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confusing the public as to the origin of your web site and creates an implication that the
mark’s holder is somehow involved in or with your site.
The legal issues in this area are not all that different from those that would be
involved in a real world trademark dispute. The claimant must show that your use of the
domain and the site to which it points are likely to create the above confusion and/or, in
certain instances of “famous” marks, dilute the value of their mark.
Additionally, you may be subject to a claim by a trademark holder that a domain
that you have obtained, even if you are not using it, should belong to that holder. The
general rule is that first to register owns a domain. However, under certain
circumstances, the holder of a mark that was a registered mark before you obtained your
domain may be able to prevent your use of that domain, at least on a temporary basis,
until it is decided by a court whether or not you should be allowed to do business under
that domain. That decision would of course be made on the basis of the above trademark
law issues such as confusion in the minds of the public, dilution and so on. Pending that
court determination or a settlement of the matter, if the situation fits the criteria
established by Network Solutions, Inc., NSI may suspend your use of the domain and that
action may be the de facto end of the matter even without a judicial determination.
Conclusion
There are many other issues that trademarks of all sorts present and this article is
certainly not intended to be exhaustive of those issues. However, domain names are an
area of Internet law that is rife with potential for litigation. By knowing your rights and
obligations as both a trademark holder and domain name user, you may be able to avoid
the expense of such litigation. Doing the research before making commitments to a name,
mark and the like, may help you avoid unnecessary cost and trouble.
© 1999 Ivan Hoffman
2nd article
However, registering the mark and affixing the required notice, much as registering a
copyright, affords the owner some very substantial legal benefits and so registration
should be actively pursued and is highly recommended. And one of the key benefits to
registering a mark is that it provides for national exclusion from others using the same or
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similar mark after you in a confusingly similar manner. The owner of an unregistered
mark is limited to using that mark only in the geographic area in which the unregistered
mark is actually being used. In such an instance, the unregistered mark can be prevented
by the registered mark from expanding into other territories.
Unlike rights of patent or copyright which have finite terms of duration, trademarks
actually have the potential of growing more valuable as time passes. Marks can,
accordingly, last indefinitely.
ENFORCEMENT OF RIGHTS
Trademarks must be aggressively protected by the owner to keep them from falling into
the public domain and the owner losing the protection of the mark. This means that if the
owner fails to protect its mark and allows it to be used in unauthorized ways or in ways
that may cause it to cease being identified in the mind of the public solely with the goods
and services of the owner, the protection may be lost. This is because the trademark is
based upon identification of the mark with a particular source and if the owner of the
mark shows an indication that it does not care much about protecting that source
identification, the mark may lose its value to that owner and the court may strip that
owner of the protection the mark originally afforded.
Additionally, a mark may be lost if it becomes "generic." The classic example of the loss
of such a mark and its becoming generic is the word "cellophane." When it was first
coined, it identified a brand of that sort of wrapping paper. But it became so widely used
to identify all forms of that wrapping paper that the courts determined that it had
become generic for all such forms and ceased to be a valid mark. It was no longer
associated in the mind of the public with a particular company making that paper.
Another example might be "Xerox." It is a brand name, a trademark, that is used to
identify a particular form of photocopying. To refer to making copies as "xeroxing" runs
the risk of making the mark generic and would likely be aggressively protected.
In sum, owners of trademarks are not necessarily "evil" if they rigorously enforce their
intellectual property. They must do so if they are to protect their commercial asset. And
while, if you are not the owner of such a mark may object to what you deem to be
"restrictive" policies, keep in mind that you too benefit from the protection afforded by
trademark law. If you want a particular brand of a product or service, you want to be
assured that what you are buying is what you are getting. If the owner of that mark does
not protect the mark, at some point you too may be a victim of the confusion that may
result.
When you contemplate using a name, mark or such, you should strongly consider doing a
trademark search to determine if it is claimed as a mark by someone else. Unfortunately,
since not all marks are registered anywhere, such a search is not conclusive. And a
trademark search merely in the United States may simply not turn up any registration
for the mark may be registered in another country.
CONCLUSION
As in all areas of the law and especially when it comes to the vast complexity that is
intellectual property law in general and trademark law in particular, you are best
advised to seek out an attorney familiar with these areas before you proceed to either file
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a claim to a mark, when you contemplate using a mark belonging to another party or
otherwise when you deal in this area of the law.
Refrences;
www.indianlaws.com
www.scribd.com
www.wiki-answers.com
www.indlawnews.com
bigadda.com
www.wikipedia.com
www.e-books.com
BOOKS;
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Articles;
Magazines;
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Business Today,august
Appendices
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