Rajdeep Chatterjee School of Computer Engineering

KIIT University

Law governing IP Introduction to IP Types of IP Trademarks Types of Trademarks Registration process for Trademark (India)

Use of symbols ‘TM’, ‘SM’ & ®

Benefits of Trademarks Trademarks infringement cases References

WIPO ( World Intellectual Property Organization ) was established by the WIPO Convention in 1967.

The WIPO is a specialized agency of the United Nations.

It promote the protection of IP throughout the world.

Its headquarters are in Geneva, Switzerland

Every April 26 we celebrate World Intellectual Property Day to promote discussion of the role of intellectual property in encouraging innovation and creativity.

WIP Day 2013

Intellectual Property (IP) IP refers to Creations of mind such as inventions; literary &

artistic works; design and symbols; names & images used in commerce.

IPR first recognized in Paris Convention of Industrial property 1883.

Berne Convention for Protection of Literary and Artistic Work 1886.

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is an

international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulation as applied to nationals of other WTO Members.

Functional & Technical Inventions

Patents Act, 1970

Amended

in 1999 & 2005

Purely Artistic works

Copyright Act,

1957

Amended in1982,

1984, 1992,

1994 & 1999

A symbol, logo, word, sound, color, design, etc.

Trademark

Act, 1999

Amended in 2002,

2010 & 2013

Industrial

Property

Patent

Trademark

Industrial

Design

Geographical

Indications

Copyright

Trademark

What

How

Why

A Trademark is a visual symbol, which may be a word, name, label used by a business to distinguish it goods or services from other similar goods or services originating from a different business.

In India, registration done by the Controller General of Patents Designs and Trademarks,

Ministry of Commerce and Industry, Government of India.

Continued…

A registered trademark is an intangible asset or intellectual property for a business and is used to protect the company's investment in the brand or symbol.

Proposed trademarks that are similar or identical to an existing registered trademark cannot be registered. Also, trademarks are not registerable if it is offensive, generic, deceptive, not distinctive, contains specially protected emblems, etc.,

Term of Registered Trademark: 10 years and Renewable.

Term of Registered Service mark: 17 years and Renewable.

Classes of Goods And Services

The classification of the goods and services is made as per the 9th Edition of the NICE International Classification System.

Shape

Name

Slogan

Logo type

Color

‘TM’ Symbol: Generally, one who has filed an application (pending registration) can use the TM (Trademark) symbol with the mark to inform the public of his exclusive claim over the Brand. The claim may or may not be valid.

‘SM’ Symbol: An SM symbol indicates Service Mark, which is the same as a Trademark except that it identifies and distinguishes the source of a service rather than a product.

‘R’ Symbol: The registration symbol ® may only be used when the mark is registered and the Certificate of Registration is issued by the Trademark Registrar.

Trademarks benefit both businesses and consumers.

1. Confers upon the owner the exclusive right to use the brand.

2. Protects hard earned goodwill in the business.

3. Protects your Name / Brand Name from being used in a same or

similar fashion, by any other business firm, thus discourages others from cashing on your long built goodwill.

4. Gives your products a status of ‘Branded Goods’, avoid bad

buying experiences by avoiding the brands they didn't like.

5. To obtain legal relief in respect of infringement (misuse by

others) of the trade mark.

6. Power to assign (transfer) the trade mark to others for consideration.

Color combinations as Trademarks Colgate Palmolive Company v Anchor Health and Beauty Care Pvt Ltd 2003 (27) PTC 478 (Del)

The court stopped the defendant from using red and white in its packaging and trading as the plaintiff had proprietary rights over the combination when used for toothpastes.

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Trademark in film title Sholay Media Entertainment v Parag Sanghvi CS (OS) 1892/2006

This case concerned a remake of Indian film Sholay. The defendant was restrained from infringing the plaintiff’s copyright and registered trademarks in the title of the film Sholay and its key character, Gabbar Singh, and any other deceptively similar marks/names.

Continued…

Soundmark

Yahoo!’s yodel on August 18, 2008 became the first non-conventional mark to be registered in India. The yodel was represented through musical notes. ICICI Bank is the first Indian entity to obtain sound mark registration. The latest nonconventional trademark to be registered is a sound mark, held by a German company Allianz Aktiengesellschaft.

Continued…

www.wipo.int

http://www.ipindia.nic.in/

http://www.tm-copyright.com

http://www.indiafilings.com/

Thank You