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8ome retailers and manufactures place their trademarks on the products
actually made by the foreign suppliers. Discuss the rationale for the actions
taken by these firms. Examples and case of 5 companies."




Presented by-
Himanshree Kohli-
Hina 8harma-
Rashi 8hahi- 41
Richa Goel- 42
%able of content

HISTORY OF TRADEMARK

The origin oI trademarks can be traced back as Iar as the beginning oI the
circulation oI goods. The history oI marks is nearly as old as the histories oI
mankind and religion. Scientists have come across excavated artiIacts Irom places
such as ancient Egypt with various symbols carved thereon Ior religious and
superstitious reasons. "Potters marks" appeared in relics leIt Irom the Greek and
Roman periods and were used to identiIy the maker (potter) oI a particular vessel).
Among those who specialize in researching the cultural heritage oI marks, the
studies surrounding "potters marks" are Iamous. It would be diIIicult, however, to
say that these marks are trademarks in the sense oI the modern meaning.
Over time, diIIerent methods oI identiIication and distinction developed. Loved
ones and pets were given names. "Proprietary marks" (in the Iorm oI a name or
symbol) were aIIixed to goods to enable one person to distinguish their own
possessions Irom those oI others. CraItsmen applied their names, unique drawings,
or simple inscriptions to identiIy goods they created. Even though these marks
surely helped in distinguishing goods, it is diIIicult to say that these marks were
trademarks with distinctiveness in the modern sense oI the word. Symbols on
goods used in ancient Rome and other countries near the Mediterranean sea had
similar characteristics to the trademarks oI today. Because this ancient region is
considered to be the Iirst to actively circulate goods, it is widely thought that
trademarks evolved in response to the emergence oI a society in which goods
circulate in commerce. However, even in those days, a trademark system based on
property rights did not yet exist.
Around the 10th century, a mark called a "merchants mark, 'appeared, and
symbols among traders and merchants increased signiIicantly. These marks, which
can be considered one kind oI "proprietary mark," essentially were used to prove
ownership rights oI goods whose owners were missing due to shipwrecks, pirates,
and other disasters. Even now, in every part oI the world, horses, sheep, and other
animals are still branded with a mark identiIying the owner. In Japan, a symbol is
aIIixed to lumber that is tied onto a raIt and sent down a river to its mouth. These
types oI marks are reminiscent oI the "merchant's mark" oI the past.
In guilds oI the middle ages, craItsmen and merchants aIIixed marks to goods in
order to distinguish their work Irom the makers oI low quality goods and to
maintain trust in the guilds. These marks, known as "production marks," served to
punish the manuIacturers oI low quality goods Ior not meeting the guild's standards
and to maintain monopolies by the guild's members. These production marks

helped consumers to identiIy and assign responsibility Ior inIerior products, such
as, goods short in weight, goods comprised oI poor quality materials, and goods
made with inIerior craItsmanship.


Because these marks were aIIixed out oI compulsion or obligation, rather than
one's own selI-interest, they also became known as "police marks" (polizeizeichen)
or "responsibility marks" (pIlichtzeichen). They acted not only to distinguish
between sources oI goods, but to serve as an indicator oI quality as well. While
modern marks work to ensure the quality and superiority oI certain goods, the
obligatory marks served to uncover deIective goods. "Responsibility marks" were
more burdensome than real property, and could not be changed easily once the
mark had been adopted. Furthermore, it is thought that this type oI mark did no
more than simply guarantee minimum quality. Finally, these symbols were
diIIerent Irom modern marks in that they emerged to beneIit the guilds, and were
not Ior the beneIit oI the production mark owner.

From the Middle Ages, through "police marks" and "responsibility marks," modern
trademarks slowly developed as the Industrial Revolution sparked the advent oI
what is now modern-day capitalism. Gradually, the guild systems disintegrated,
and Iree business was established. Marks began to actively identiIy the source oI
goods rather than obligatory guild membership. About this time, special criminal
laws protecting trademarks were also developed out oI early Iorgery,
counterIeiting, and Iraud laws. Civil protection was gradually and systematically
established against those who would use another's mark without permission
("inIringers").

TRADEMARK DEFINITION

A Trademark is the means by which a business makes itselI visible in the
marketplace. A Trademark can be any distinctive (not solely descriptive) name or
logo. The best Trademarks are instantly recognizable and conjure up in the minds
oI existing or potential customers things like quality, dependability, or at the very
least the source oI the goods or services being bought.

A trademark is oIten deIined as: "a word, name, symbol or device that is used in
trade with goods to indicate the source of the goods and to distinguish them from
the goods of others". A service mark is the same as a trademark except that it
identiIies and distinguishes the source oI a service rather than a product. The terms
"trademark" and "mark" are commonly used to reIer to both trademarks and
service marks.
Trademarks provide their owners with the legal right to prevent others Irom using a
conIusingly similar mark. They cannot be used stop competitors Irom making the
same goods or Irom selling the same goods or services under a clearly diIIerent
mark.

Examples oI well-known Trademarks are: Coca-Cola, Rolls-Royce, The Apple
logo and the Nike 'swoosh.



REGISTRATION OF TRADEMARK

Prudent business people register their Trademarks with Patent OIIices to gain an
oIIicial record oI their rights to a particular mark. A Trademark registration also
grants a statutory right, subject to certain conditions, to prevent others Irom using
the trademark without the registered owner's permission - i.e. to prevent
inIringement.

One oI the principal aims oI a business is to build up the reputation oI its goods or
services and by applying Ior and gaining a Registered Trademark accelerates the
process as it serves notice on would-be copiers oI the serious intent oI a business to
deIend its position in the marketplace.

II a Trademark is properly promoted and protected it can be a very valuable asset
Ior any business and can in some circumstances be worth more than the bricks and
mortar oI a business. Generally, Registered Trademarks are protected Ior speciIic
classes oI products and services Ior periods oI 10 years, which are renewal
indeIinitely.

In some jurisdictions, trademark rights can be established through either or both
means. Certain jurisdictions generally do not recognize trademarks rights arising
through use. II trademark owners do not hold registrations Ior their marks in such
jurisdictions, the extent to which they will be able to enIorce their rights through
trademark inIringement proceedings will thereIore be limited. In cases oI dispute,
this disparity oI rights is oIten reIerred to as "Iirst to Iile" as opposed to "Iirst to
use." Other countries such as Germany oIIer a limited amount oI common law
rights Ior unregistered marks where to gain protection, the goods or services must
occupy a highly signiIicant position in the marketplace where this could be 40
or more market share Ior sales in the particular class oI goods or services.
In the United States the registration process entails several steps prior to a
trademark receiving its CertiIicate oI Registration. First, an Applicant, the
individual or entity applying Ior the registration, Iiles an application to register the
respective trademark. The application is then placed in line in the order it was
received to be examined by an examining attorney Ior the U.S. Patent and
Trademark OIIice. Second, Iollowing a period oI anywhere Irom three to six
months the application is reviewed by an examining attorney to make sure that it
complies with all requirements in order to be entitled to registration. This review
includes procedural matters such as making sure the applicant's goods or services
are identiIied properly. It also includes more substantive matters such as making
sure the applicant's mark is not merely descriptive or likely to cause conIusion with
a pre-existing applied-Ior or registered mark. II the application runs aIoul oI any
requirement, the examining attorney will issue an oIIice action requiring the
applicant to address certain issues or reIusals prior to registration oI the mark.
Third, and aIter the examination oI the mark has concluded with no issues to be
addressed or an applicant has responded adequately to an examining attorney's
concerns, the application will be published Ior opposition. During this 30-day
period third-parties who may be aIIected by the registration oI the trademark may
step Iorward to Iile an Opposition Proceeding to stop the registration oI the mark.
II an Opposition proceeding is Iiled it institutes a case beIore the Trademark Trial
and Appeal Board to determine both the validity oI the grounds Ior the opposition
as well as the ability oI the applicant to register the mark at issue. Fourth, provided
that no third-party opposes the registration oI the mark during the opposition
period or the opposition is ultimately decided in the applicant's Iavor the mark will
be registered in due course.
Outside oI the United States the registration process is substantially similar to that
Iound in the U.S. save Ior one notable exception in many countries: registration
occurs prior to the opposition proceeding. In short, once an application is reviewed
by an examiner and Iound to be entitled to registration a registration certiIicate is
issued subject to the mark being open to opposition Ior a period oI typically 6
months Irom the date oI registration.
A registered trademark conIers a bundle oI exclusive rights upon the registered
owner, including the right to exclusive use oI the mark in relation to the products
or services Ior which it is registered. The law in most jurisdictions also allows the
owner oI a registered trademark to prevent unauthorized use oI the mark in relation
to products or services which are identical or "colourIully" similar to the
"registered" products or services, and in certain cases, prevent use in relation to
entirely dissimilar products or services. The test is always whether a consumer oI
the goods or services will be conIused as to the identity oI the source or origin. An
example may be a very large multinational brand such as "Sony" where a non-
electronic product such as a pair oI sunglasses might be assumed to have come
Irom Sony Corporation oI Japan despite not being a class oI goods that Sony has
rights in.
Once trademark rights are established in a particular jurisdiction, these rights are
generally only enIorceable in that jurisdiction, a quality which is sometimes known
as territoriality. However, there is a range oI international trademark laws and

systems which Iacilitate the protection oI trademarks in more than one jurisdiction.


What does a trademark do?
A trademark provides protection to the owner oI the mark by ensuring
the exclusive right to use it to identiIy goods or services, or to authorize another to
use it in return Ior payment. The period oI protection varies, but a trademark can be
renewed indeIinitely beyond the time limit on payment oI additional Iees.
Trademark protection is enIorced by the courts, which in most systems have the
authority to block trademark inIringement.
In a larger sense, trademarks promote initiative and enterprise worldwide by
rewarding the owners oI trademarks with recognition and Iinancial proIit.
Trademark protection also hinders the eIIorts oI unIair competitors, such as
counterIeiters, to use similar distinctive signs to market inIerior or diIIerent
products or services. The system enables people with skill and enterprise to
produce and market goods and services in the Iairest possible conditions, thereby
Iacilitating international trade.

Maintaining rights
Trademarks rights must be maintained through actual lawIul use oI the trademark.
These rights will cease iI a mark is not actively used Ior a period oI time, normally
5 years in most jurisdictions. In the case oI a trademark registration, Iailure to
actively use the mark in the lawIul course oI trade, or to enIorce the registration in
the event oI inIringement, may also expose the registration itselI to become liable
Ior an application Ior the removal Irom the register aIter a certain period oI time on
the grounds oI "non-use". It is not necessary Ior a trademark owner to take
enIorcement action against all inIringement iI it can be shown that the owner
perceived the inIringement to be minor and inconsequential. This is designed to
prevent owners Irom continually being tied up in litigation Ior Iear oI cancellation.
An owner can at any time commence action Ior inIringement against a third party
as long as it had not previously notiIied the third party oI its discontent Iollowing
third party use and then Iailed to take action within a reasonable period oI time
(called acquiescence). The owner can always reserve the right to take legal action
until a court decides that the third party had gained notoriety which the owner
'must' have been aware oI. It will be Ior the third party to prove their use oI the
mark is substantial as it is the onus oI a company using a mark to check they are
not inIringing previously registered rights. In the US, owing to the overwhelming
number oI unregistered rights, trademark applicants are advised to perIorm
searches not just oI the trademark register but oI local business directories and
relevant trade press. Specialized search companies perIorm such tasks prior to
application.
All jurisdictions with a mature trademark registration system provide a mechanism
Ior removal in the event oI such non use, which is usually a period oI either three
or Iive years. In the U.S., Iailure to use a trademark Ior this period oI time, aside
Irom the corresponding impact on product quality, will result in abandonment oI
the mark, whereby any party may use the mark. An abandoned mark is not
irrevocably in the public domain, but may instead be re-registered by any party
which has re-established exclusive and active use, and must be associated or linked
with the original mark owner. II a court rules that a trademark has become
"generic" through common use (such that the mark no longer perIorms the
essential trademark Iunction and the average consumer no longer considers that
exclusive rights attach to it), the corresponding registration may also be ruled
invalid


What kinds of trademarks can be registered?

The possibilities are almost limitless. Trademarks may be one or a combination oI
words, letters, and numerals. They may consist oI drawings, symbols, three-
dimensional signs such as the shape and packaging oI goods, audible signs such as
music or vocal sounds, Iragrances, or colors used as distinguishing Ieatures.
In addition to trademarks identiIying the commercial source oI goods or services,
several other categories oI Collective market-share owned by
an association whose members use them to identiIy themselves with a level oI
quality and other requirements set by the association. Examples oI such
associations would be those representing accountants, engineers, or
architects. Certification marks are given Ior compliance with deIined standards,
but are not conIined to any membership. They may be granted to anyone who can
certiIy that the products involved meet certain established standards. The
internationally accepted "ISO 9000" quality standards are an example oI such
widely-recognized certiIications.


How valuable is a Trademark?

There is much talk today about 'the shop Iront and 'the High Street. These terms
are used colloquially to reIer to business visibility and to company proIile. To
provide some indication oI the value oI a trademark one needs to look no Iurther
than Coca-Cola. Coca-cola is immediately recognizable. It is an icon Ior capitalism
and private enterprise - and it is the most valuable piece oI intellectual property in
the world today.

The president oI Coca-Cola has even publicly remarked that iI all oI the company`s
buildings, vehicles Iactories and equipment were destroyed Coca-Cola Inc would
immerge Irom the ruins and rebuild itselI provided that the Trademark survived.
The loss oI the Coca-Cola mark however, would damage the company beyond
repair.

It is estimated that Coca-Cola Inc has a stock value oI about 160 billion dollars,
with the value oI the physical assets being put at around 20 billion dollars. The
value remaining is thereIore about 140 billion dollars. This is made up oI its
goodwill or the intangibles oI the business. So, Ior a company like Coca Cola, the
most valuable intangible that they have is the Coca Cola trademark, the Coca Cola
brand. Even iI the brand makes up only halI oI the intangibles oI the business then
the Brand alone is conservatively worth 70 billion dollars.

Should you wish to learn more about good will and valuing IP please go to the
Articles section oI the Virtual IP library and click onto Franchising and Valuing IP
Articles.




How is a trademark registered?

First, an application Ior registration oI a trademark must be Iiled with the
appropriate national or regional trademark office. The application must contain
a clear reproduction oI the sign Iiled Ior registration, including any colors, Iorms,
or three-dimensional Ieatures. The application must also contain a list oI goods or
services to which the sign would apply. The sign must IulIill certain conditions in
order to be protected as a trademark or other type oI mark. It must be distinctive,
so that consumers can distinguish it as identiIying a particular product, as well as
Irom other trademarks identiIying other products. It must neither mislead nor
deceive customers or violate public order or morality.
Finally, the rights applied Ior cannot be the same as, or similar to, rights already
granted to another trademark owner. This may be determined
through search and examination by the national oIIice, or by the opposition of
third parties who claim similar or identical rights



Trademark classification
A trademark classiIication is a way the trademark examiners and applicants'
trademark attorneys arrange documents, such as trademark and service mark
applications, according to the description and scope oI the types oI goods or
services to which the marks apply. The same trademark or service may be (or in
many cases MUST be) classiIied in several classes, and some countries permit
several classes to be registered in the same document. There are Iees ordinarily
associated with each classiIication, whether Ior initial application or later renewal.
An application Iiled Ior descriptions covering more than one class oI goods or
services may also be divided later (Ior a Iee) into several diIIerent applications Ior
synchronization with a phased roll-out oI multiple classes oI products. Because oI
international priority claim issues, classes may be deleted Irom an application but
not added aIter the initial Iiling date. There are oIten disputes regarding the exact
classiIication to apply in an application, partly because prior registrations may
already occupy broad areas that overlap the products described by a later applicant.
Many countries permit marks to cover an entire class without regard to speciIic
descriptions oI goods or services.
There is a general classiIication oI marks into trademarks, service marks,
certiIication marks and collective marks, each oI which have slightly diIIerent
rules. Within the broad categories oI trademarks and service marks there are
dozens oI international classes deIined Ior each category.
For the purpose oI obtaining a trademark clearance, it is advisable to search all
related classiIications oI goods and services that could interact with or be supplied
by a potentially conIusing mark that already exists.
In the United States, the USPTO maintains the Acceptable IdentiIication oI Goods
and Services Manual to assist applicants and examiners to distinguish between
classiIications properly and consistently. SpeciIic descriptions must be submitted
Ior each type oI goods and services to be covered by the registration, and overly
broad terms will be rejected, depending upon how "crowded" a classiIication may
be.

Trademark dilution
Trademark dilution is a trademark law concept giving the owner oI a Iamous
trademark standing to Iorbid others Irom using that mark in a way that would
lessen its uniqueness. In most cases, trademark dilution involves an unauthorized
use oI another's trademark on products that do not compete with, and have little
connection with, those oI the trademark owner. For example, a Iamous trademark
used by one company to reIer to hair care products might be diluted iI another
company began using a similar mark to reIer to breakIast cereals or spark
plugs.|1|. Dilution is a basis oI trademark inIringement that only applies to Iamous
marks. With non-Iamous marks, the owner oI the mark must show that the
allegedly inIringing use creates a likelihood oI conIusion as to the source oI the
product or service being identiIied by the allegedly inIringing use. With non-
Iamous marks, it is highly unlikely a likelihood oI conIusion will be Iound iI the
products or services are in unrelated markets. However, with Iamous marks, any
use by another person oI the mark has the potential Ior conIusion since a Iamous
mark is so well-known among the consuming public that people will assume
aIIiliation with the owner oI the mark regardless oI the product or service being
sold under the inIringing use.
Trademark law is generally Iocused on the need Ior consumer protection.
Consequently, trademark law traditionally concerned itselI with situations where
an unauthorized party sold goods that are directly competitive with or at least
related to those sold by the trademark owner. A trademark is diluted when the use
oI similar or identical trademarks in other non-competing markets means that the
trademark in and oI itselI will lose its capacity to signiIy a single source. In other
words, unlike ordinary trademark law, dilution protection extends to trademark
uses that do not conIuse consumers regarding who has made a product. Instead,
dilution protection law aims to protect suIIiciently strong trademarks Irom losing
their singular association in the public mind with a particular product, perhaps
imagined iI the trademark were to be encountered independently oI any product


Requirements for protection
The strength required Ior a trademark to deserve dilution protection diIIers among
jurisdictions, though it generally includes the requirement that it must be
distinctive, Iamous, or even unique. Such trademarks would include instantly
recognizable brand names, such as Coca-Cola, Kleenex, Kool-Aid, or Sony, and
unique terms that were invented (such as Exxon) rather than surnames (such as
Ford or Zamboni) or ordinary words in language. Some jurisdictions require
additional registration oI these trademarks as deIensive marks in order to qualiIy
Ior dilution protection.
Another way oI describing the necessary strength oI a trademark may establish
some basis Ior dilution protection Irom a consumer-conIusion standpoint. Truly
Iamous trademarks are likely to be seen in many diIIerent contexts due to
branching out or simple sponsorship, to the extent that there may be very Iew
markets, iI any, that a consumer would be surprised to see that Iamous trademark
involved in. A prime example may be the past involvement oI Coca-Cola in
clothing lines.


International Trademark Association
The International Trademark Association (INTA) is a worldwide not-Ior-proIit
association oI member companies and Iirms that supports and advances trademarks
and intellectual property as elements oI Iair and eIIective global commerce. INTA,
originally known as the United States Trademark Association (USTA), was
established in November 1878 in New York City by 17 merchants and
manuIacturers to protect and promote the rights oI trademark owners, secure useIul
legislation, and give aid and encouragement to all eIIorts Ior the advancement and
observance oI trademark rights. In 2006, a new U.S. trademark dilution statute that
protects Iamous marks Irom uses that blur their distinctiveness or tarnish their
reputation was signed into law on October 6.
In February 2009, INTA embraced the social media trend and extended its online
networking sites with LinkedIn and Twitter.
ACTIVITIES-
INTA provides services to its members and the public in three main areas:
InIormation & Publishing, Education & Training, and Policy Development
& Advocacy InIormation & Publishing .

INTA has a collection oI resources which include Country Portals,
Trademark Cancellations, Country Guides and others.

INTA has two in-house news publications, available in print and online: The
Trademark Reporter, a bi-monthly scholarly journal that explores all aspects
oI trademark law, and the INTA Bulletin, a bi-weekly newsletter that

provides up-to-date news on Association issues, trends in trademark law

practice and procedure. Education & Training

INTA oIIers numerous conIerences, Iorums, roundtables, workshops and e-
learning programs that bring trademark proIessionals together Irom around
the world to discuss trademark issues, IP law and practice.

Policy Development & Advocacy The Association, oIten in cooperation
with other national, regional and international intellectual property
organizations, is the voice oI trademark owners worldwide and Iocuses on
taking public policy positions and protecting brand owners' rights.


INTA's Locations
INTA is headquartered in New York City, with oIIices in Shanghai (since 2003)
and Brussels (since 2006)
INTA China was established in September 2003.
INTA Belgium was established in September 2006.







!ROBLEMS RELATED TO TRADEMARK ARE-

The Iirst and most obvious problem is the opportunity Ior others to 'pirate
'names, typically by obtaining SLD registrations within the .com TLD oI a
well-known company name or brand. A number oI major corporations have
had the uncomIortable, and in some cases embarrassing, experience oI
learning that someone else had already registered their name or mark as a
second level domain Iollowed by the now ubiquitous .comTLD.

By May 1994, the list oI 'pirated names read like a Who`s Who oI corporate
America: McDonald`s, Coke, Hertz, Nasdaq, Viacom, MTV and others. By mid-
1996, Avon, Levi`s, B. Dalton and Readers
Digest had joined the list.

Misspelling popular brands is the second problem. The domain name system
creates the opportunity Ior others to obtain a second level domain that is
only a slight variation oI someone else`s well known, or
not so well known, name or mark.

The third problem, a variation on a theme, is created by the Iact that NSI is
not alone in assigning domains: NICs and other registries all over the world
may assign identical second level domains, so long as the TLD diIIers.









IM!ACT OF THESE !ROBLEMS-
The economic impact oI CounterIeiting-
Industry world-wide loses large amounts to counterIeiters. These losses not
only aIIect the producers oI genuine items, but they also involve social costs. The
ultimate victims oI unIair competition are the consumers. They receive poor-
quality goods at an excessive price and are sometimes exposed to health and saIety
dangers.

Loss oI goodwill. Even cheaper and obvious copies that are bought in good
Iaith represent a serious threat to the company that wants its brands
associated with quality and exclusivity.


Beside direct losses oI sales and goodwill, one should not Iorget the
expenditure involved in protecting and enIorcing intellectual property rights.
The right owner becomes involved in costly investigations and litigation



REMEDIES/SOLUTIONS AVAILABLE-

The best way to protect your company`s trademarks Irom theIt by a
cybersquatter is to register them with the Patent and Trademark OIIice.

Register your trademarks to protect Irom inIringement by meta-tags.



To minimize the likelihood oI creating a dispute one should obtain
permission Irom the owner oI a web site beIore linking to it, particularly iI
you are not linking to the home/index page and are accessing speciIic
inIormation.


A number oI technologies, such as holograms, smart cards, biometric markers and
inks, can be employed to protect and authenticate genuine products. These devices
vary considerably in the degree oI sophistication and cost.


There are two types oI remedies available Ior the inIringement oI Trademark.
These remedies are:-
. Infringement Action: An action Ior inIringement, which is a statutory right, is
dependent on the validity oI the registration oI the mark. InIringement oI a
Trademark is a violation oI property rights. Trademark registration is prima Iacie
prooI oI ownership oI the mark. In case oI inIringement there is oIten no need to
prove that your Trademark has a reputation or goodwill. The question oI Iraud or
the probability oI deception is immaterial, the plaintiII just have to prove that he is
the true owner oI the Trademark and the deIendant is using a mark that is identical
or deceptively similar to the registered mark and no Iurther prooI is required. The
jurisdiction and procedure, in inIringement suit, is governed by the Civil Procedure
Code. The period oI limitation Ior Iiling the suit Ior inIringement is three years
Irom the date oI inIringement. The relieI and remedy in inIringement proceedings
include:-
Injunction;
Restraining the Iuture use oI the mark;
Damages or on account oI proIits;
Order Ior delivery oI the inIringing labels and marks Ior destruction;
Seizure and conIiscation oI the inIringing goods by the police department;
Arrest oI the inIringers;
Fines and penalties.
2. !assing Off: An action oI passing oII is a direct subject matter oI the law oI tort
or common law oI right. Passing oII is not deIined in The Trade and Merchandise
Marks Act, but it provides the rules oI procedure and the remedies available. In the
case oI unregistered yet well known marks, the owner oI the mark can initiate a
passing oII action in the appropriate Court oI law. The cause oI action in Iavour oI
the plaintiII will arise iI the deIendant in the course oI trade misrepresents to
prospective or ultimate customers oI goods and services and the goods or services
oI the deIendant is connected to the goods or services oI the plaintiII and is
calculated to injure the business or goodwill oI the plaintiII and which actually
causes damages to the business or goodwill oI the plaintiII. Actual deception and
actual damage has to be proved Ior any relieI. Passing oII action can only be
initiated in a place where the deIendant resides or carries on business or where any
part oI the cause oI action arose.
We are comprised oI experienced, capable and dedicated Legal ProIessionals,
Trademark Consultants, Trademark Law Attorneys and Trademark Agents
enabling us to provide best Trademark services. We are working in collaboration
with many renowned law Iirms and eminent lawyers. Our underlying belieI in
being transparent, candid and interactive with the client has earned us many
satisIying clients across the country.


Trademark Registration in India

Registration oI Trademarks in India governed by the Indian Trade Marks Act, 1999
& Indian Trade Marks Rules, 2002 (and amendments thereoI). The Trademark Act
& Trademark Rules seeks to provide Ior the registration oI trademarks relating to
goods and services in India. The rights granted under the Act, are operative in the
whole oI India.





What are the benefits of Trademark Registration in India?

A Trademark helps the consumers to identiIy and purchase a good or service
because oI its nature and quality, indicated by its unique Trademark, to meet their
needs. By registering a Trademark, the owner oI the Trademark protects the
goodwill oI the business. Hence, the Trademark contributes to the commercial
value oI the goods or services to which it is applied, and increases the
marketability.
The registered owner oI a Trademark receives the presumptive right oI the
Trademark owner to use the Trademark and can indicate it by using the Trademark
symbol or in relation oI those goods and services Ior which the owner has
registered the Trademark. The registered Trademark owner can stop other traders
Irom using his Trademark unlawIully. The registered owner oI a Trademark can
sue other traders Ior recovery oI proIits, damages and costs in case oI Trademark
inIringement. Trademark provides the guarantee Ior the unchanged quality and
helps in creating and advertising the goods and services in public.
It serves as a constructive notice in general public about the ownership claim oI the
Trademark. Registration oI Trademark in India can be used as a basis oI
registration oI Trademark in other countries.




What marks are registrable in India?

All marks used in the trade are not registrable. The trademark law does not provide
Ior the registration oI all marks used in trade and business. Marks those satisIy
certain requirements are only registrable. ThereIore a mark which satisIies the
prescribed requirements could be registered. Here it is very pertinent to know the
requirements that a mark should satisIy Ior registration. The requirements that a
mark should satisIy are as Iollows.

1. The mark should be capable oI being represented graphically.

2. The mark should be capable oI distinguishing the goods or services oI one
Irom those oI others.

3. The mark must be used in relation to goods or services Ior the purpose oI
indicating or so as to indicate a connection in the course oI trade between the
goods and services.



What marks are not registrable in India?

Certain trademarks are not registrable either in the public interest or due to the
prohibition oI such marks Irom registration in India under the statute Ior various
reasons. The Iollowing marks are accordingly not registrable.

1. Mark that contains or comprises oI any matter likely to hurt the religious
susceptibilities oI any class or section oI the citizens oI India;

2. Mark that comprises or contains scandalous or obscene matter;

3. Mark which has the nature as to deceive the public or cause conIusion;

4. Mark prohibited under the Emblems and Name (prevention oI Improper use)
Act, 1950;


5. Mark consisting exclusively the shape oI goods which results Irom the nature oI
the goods themselves;

6. Mark containing the shape oI goods which is necessary to obtain a technical
result or the shape, which gives substantial value to the goods.


What are the grounds for refusal of Trademarks in India?

According to the trademarks law grounds Ior reIusal Ior Trademark registration in
India can be divided into two headings as absolute grounds and relative grounds.
The Iollowing grounds are considered as grounds Ior the reIusal oI the registration
oI a mark in India.
Absolute grounds for refusal of Trademark registration in India are:

1. Marks devoid oI any distinctive character or not capable oI distinguishing the
goods or services oI one person Irom those oI others.

2. Marks which indicates quality or other descriptive character oI the goods or
services.

3. Marks which have become customary in the current language or in the bona Iide
or established practice oI the trade.

4. Marks to the trade or generic names or marks common, chemical names and
international non-proprietary names.


5. Marks likely deceive public or cause conIusion.

6. Marks comprising scandalous or obscene matter or likely to hurt religious
susceptibilities oI any class or section oI the citizens in India.

7. Marks prohibited under Emblems and Names (Prevention oI Improper Use) Act,
1950.

8. Marks shape oI which results Irom the nature oI the goods themselves.

9. Marks the shape oI which is necessary to obtain a technical result.

10. Marks the shape oI which gives substantial value oI the goods.



Relative grounds for refusal of Trademark registration in India are:

1. Marks which are identical or similar to an earlier Trademark and the respective
goods or services are identical or similar.

2. Mark which are identical or similar to an earlier Trademark, but the goods or
services are not similar. The question oI reIusal oI registration oI a mark similar to
an earlier Trademark where the goods are diIIerent can be considered only in
opposition proceedings.



3. Marks under passing oII or law oI copyright.


Trademark Classification in India

Trademark Class
Chemicals used in industry, science and photography, as well as in agriculture,
horticulture and Iorestry;
unprocessed artiIicial resins, unprocessed plastics;
manures;
Iire extinguishing compositions;
tempering and soldering preparations;
chemical substances Ior preserving IoodstuIIs;
tanning substances;
adhesives used in industry.

Class includes mainly chemical products used in industry, science and
agriculture, including those which go to the making oI products belonging to other
classes.
This Class includes, in particular:
- compost;
- salt Ior preserving other than Ior IoodstuIIs.

This Class does not include, in particular:
- raw natural resins (Class 2);
- chemical products Ior use in medical science (Class 5);
- Iungicides, herbicides and preparations Ior destroying vermin (Class 5);
- adhesives Ior stationery or household purposes (Class 16);
- salt Ior preserving IoodstuIIs (Class 30);
- straw mulch (Class 31).

Trademark Class 2
Paints, varnishes, lacquers;
preservatives against rust and against deterioration oI wood;
colorants;
mordants;
raw natural resins;
metals in Ioil and powder Iorm Ior painters, decorators, printers and artists.

Class 2 includes mainly
paints, colorants and preparations used Ior the protection against corrosion.
This Class includes, in particular:
- paints, varnishes and lacquers Ior industry, handicraIts and arts;
- dyestuIIs Ior clothing;
- colorants Ior IoodstuIIs and beverages.

This Class does not include, in particular:
- unprocessed artiIicial resins (Class 1);
- laundry blueing (Class 3);
- cosmetic dyes (Class 3);
- paint boxes (articles Ior use in school) (Class l6);
- insulating paints and varnishes (Class l7).





Trademark Class 3
Bleaching preparations and other substances Ior laundry use;
cleaning, polishing, scouring and abrasive preparations,soaps;
perIumery, essential oils, cosmetics, hair lotions;
dentiIrices.
Class 3 includes mainly cleaning preparations and toilet preparations.

This Class includes, in particular:
- deodorants Ior personal use;
- sanitary preparations being toiletries.

This Class does not include, in particular:
- chemical chimney cleaners (Class 1);
- degreasing preparations Ior use in manuIacturing processes (Class 1);
- deodorants other than Ior personal use (Class 5);
- sharpening stones and grindstones (hand tools) (Class 8).

Trademark Class 4
Industrial oils and greases;
lubricants;
dust absorbing, wetting and binding compositions;
Iuels (including motor spirit) and illuminants;
candles and wicks Ior lighting.
Class 4 includes mainly industrial oils and greases, Iuels and illuminants.

This Class does not include, in particular:
- certain special industrial oils and greases.



Trademark Class 5 Pharmaceutical and veterinary preparations;
sanitary preparations Ior medical purposes;
dietetic substances adapted Ior medical use, Iood Ior babies;
plasters, materials Ior dressings;
material Ior stopping teeth, dental wax;
disinIectants;
preparations Ior destroying vermin;
Iungicides, herbicides.


Class 5 includes mainly pharmaceuticals and other preparations Ior medical
purposes.
This Class includes, in particular:
- sanitary preparations Ior personal hygiene, other than toiletries;
- deodorants other than Ior personal use;
- cigarettes without tobacco, Ior medical purposes.











CASES

. Google v. Louis Vuitton
Louis Vuitton successIully sued Google and its French subsidiary Ior trademark
inIringement. Allowing competitors to run ads triggered by Louis Vuitton's
trademark terms was deemed to be counterIeiting, unIair competition and
misleading advertising. Google was ordered to pay 280.000 t in damages and court
costs to Louis Vuitton and to stop displaying advertisements Ior Vuitton's rivals
whenever Internet users typed Vuitton's name. PlaintiII even presented evidence
that Google had not only allowed keyword combinations that associate plaintiII's
protected marks with terms including "imitation, Iake, copies" etc. to be purchased,
but that the AdWord program actually proposed the terms to would-be advertisers.
The Paris court ruling against Google Inc. applies to all its sites, not just its French
Google.Ir page.



2. !uma parody trademark ~SHI-SA Device mark case
(Cancellation case of opposition decision)
A trade mark registration Ior ' SHI-SA and a jumping cat device mark was
registered Ior the goods in Class 25by an Okinawan citizen.
Puma AG Iiled an opposition on the basis oI the well known PUMA trademark
because-
1.The two trademarks are similar
2.The SHI-SA mark was liable to create conIusion regarding the original brand
3. The SHI-SA trademark was a parody oI the well- known trademark PUMA by
taking Iree ride on its good-will.
The JPO Iirstly cancelled SHI-SA trademark registration on the basis oI Article 4-
1-11. However on Feburary 11, 2010 the IP court cancelled the opposition
decision by saying the JPO that the two trademarks were not similar in any points
oI appearance, pronounciations and meaning. Later, the JPO cancelled SHI-SA
trademark registration on the basis oI Articles 4-1-15 & 4-1-19.
The reasons thereIore were-
. Similarity-
The two trademarks are not similar in their appearances because the subject
trademark depicted an Okinawan traditional lionshiisa while the PUMA
trademark depicted the real wild cat animal.

2. Goods-
The trademarks were used Ior t-shirts and caps in common. However the
Shiisa goods were sold in a shop in Okinawa and through the internet and
the amount oI the goods were small while the PUMA goods were sold all
over the JAPAN and the amount were also large.




3.Cadbury secures favourable HC order in trademark case


Cadbury India Ltd, the domestic arm oI U.S. conIectionery major KraIt Foods Inc,
has secured a relieI Irom the Delhi High Court which restrained a local garment
manuIacturer Irom promoting its apparel under the phonetically identical
trademark Cadbeery`.
KraIt Foods promoted Cadbury UK Ltd and its Indian subsidiary had moved the
High Court accusing nondescript entity Lodha Garments oI adopting a deceptively
identical name to promote its product.
Justice Manmohan Singh passed an ex-parte interim order in Iavour oI the
chocolate major holding that it has prima Iacie made out a case that its reputation
was being used by the Delhi-based Iirm to pass oII their goods as those oI the
international brand.
'The plaintiII (Cadbury UK Ltd) prima Iacie have been able to make out a strong
case Ior the grant oI an ex-parte interim injunction (restriction) in their Iavour,
Hence, till the next date oI hearing, the deIendant (Lodha Garments) are restrained
Irom using the trademark Cadbeery` or any other mark similar to the plaintiIIs`
trademark Cadbury`, the judge said.
'The trademark law is not intended to protect a person who deliberately sets out to
take the beneIit oI somebody else`s reputation with reIerence to goods, especially
so when the reputation extends worldwide, the judge observed.
The chocolate manuIacturer had sought court`s order to restrain Lodha Garments
Irom using Cadbeery` as trademark Ior jeans, trousers, shirts and pants.
Cadbury has also sought imposition oI 'punitive and exemplary damages oI Rs 20
lakh on the garment manuIacturer.
It alleged Lodha Garments was trying to mislead consumers as the trademark used
by the garment manuIacturer sounded similar and the Iont used was also the same.
Cadbury sought a permanent restriction on the garment manuIacturer Irom using
the trademark saying it was 'blatant misuse oI its trademark.



4.Nike Won a Trademark InIringement Case
It was reported that Nike International, Ltd., a U.S. corporation, won the Iirst trial
oI an trademark inIringement case in Shenzhen, China against Cidesport S. A., a
Spanish corporation, Zhejiang Animal By-products Import & Export Company and
a local garment manuIactory whose name was not disclosed, although it lost a case
with the same objective in Spain.

NIKE International, Ltd. registered trademark "NIKE" in China in 1981 with
designated goods oI sports clothes. Based on the Regulations on the Customs
Protection oI Intellectual Property Right, NIKE International, Ltd. applied to the
Customs General oI China Ior recordation oI intellectual property rights on January
15, 2001. A recordation certiIicate was issued which is valid till January 14, 2008.

From March to May 2000, Cidesport, owner oI the trademark "NIKE" in Spain, the
Zhejiang company and the garment manuIactory cooperated in the way oI OEM to
manuIacture over 4000 pieces oI skiing jackets. Cidesport provided cloth
materials, buttons, and brand cards and garment bags with the sign oI "NIKE". The
Zhejiang company was responsible Ior import oI the raw materials and export oI
the garments to Spain. In a trademark inIringement lawsuit, NIKE brought the
three parties to a court as co-deIendants.

The trial court, Shenzhen Intermediate People's Court, held that the acts oI the
three parties, without any permission Irom the plaintiII, constituted contributory
inIringement. The trademark right oI NIKE International, Ltd., owner oI the
trademark "NIKE" in China, should be protected by the Chinese Laws. The court
made a decision that the three deIendants immediately cease the trademark
inIringement and destroys the inIringing brand cards or the inIringing objects, pay
damages to the plaintiII and bear the court cost.
Adidas, Nike and Louis Vuitton are the biggest victims oI trademark inIringement
among Ioreign brands in China,"



5. Makro et. al. v. Diesel

The Italian clothing company Diesel granted its Spanish sub-distributor a license
"authorising it to manuIacture and distribute shoes oI its own design in order to test
the market, so that those goods could be oIIered to Diesel Ior distribution or Ior the
'assignment oI the manuIacturing licence' " . Instead oI carrying out this contract
itselI, the sub-distributor granted without Diesel's permission a licence to a
third party (Cosmos) to manuIacture and market Diesel brand items. However, this
sub-license made no mention oI the very speciIic and limited scope oI the original
license (manuIacturing and distribution Ior testing purposes only). Diesel brand
shoes were thus manuIactured, then sold to other distributors, and made their way
onto the consumer market in the Netherlands where they were discovered by the
trademark proprietor.

Diesel successIully sued the Dutch retailers Ior trademark inIringement and
associated damages. Appealing this ruling, the dealers argued that Diesel's
trademark rights were exhausted once it implicitly granted the license to Cosmos.





Conclusion-
As the retailers and manuIacturers are placing their trademarks on the products
which are actually made by the Ioreign suppliers so it is hampering them in many
ways but at the same time these companies are also taking various measures to
prevent them by enIorcing various laws and technology which have proved to be
oI great help.

Biblography-
Newspapers- Economic Times, Havard Business Review
/www.asialaw.com/Article/2648506/Channel/16681/Cadbury-wins-trade-mark-
inIringement-battle.html
/www.inc.com/guides/201101/how-to-protect-your-trademark-Irom-
inIringement.html
.wikipedia.org/wiki/Trademark
www.ipindia.nic.in/tmrnew/deIault.htm