UNIT-III

TRADEMARKS & COPYRIGHTS

1

What you will know?

Trademarks & Copyrights

Trademarks:

- Necessity of trademark registration

- Kinds of trademarks

- Registering a trademark

Copyrights:

- Software as Intellectual works

- Geographical Indication

- Need for Protection

- Generic Geographical Indication

- Protecting Industrial designs

- Necessity and ways to protect the design

Trademarks:

A trademark or a service mark is any word, name, symbol, or device or any combination thereof adopted and used by the producer to identify his or her goods or services and distinguish them from those produced or sold by others.

A sign capable of distinguishing the goods or services produced or provided by one enterprise from those of other enterprises”

They indicate origin and distinguish your product from your competitors.

They also help maintain quality.

Necessity of trademark registration

Two critical functions: i) Provides assurance that goods are of certain quality & consistency ii) Assist consumers in making decisions about purchase of goods

The life blood of an organization Identifier, communicator and indicator of source. Immediate consumer recognition, Communicates a way of doing business Effective way of business expansion They serve as an advertising device so that consumers link a

product to a mark It’s a broad protection offered from unfair competition

Contd… Organizations reap the rewards of their investment in developing

and marketing a product without fear that another business will deceive consumers using the same or confusingly similar marks

Protects the company by enabling the company to build up a reputation and a loyal clientele and thus a market niche (brand)

Protects consumers They can differentiate between similar goods Information as to the source (quality, reputation, trust) Indication that all goods or services offered come from a single

and reliable producer/ manufacturer/ source

Creates an overall competitive environment which benefits society as a whole

Kinds of marks

Trade marks: to distinguish goods

Service marks: to distinguish services

Collective marks: to distinguish goods or services by members of an association- Indian Bar Association, American bar association

Certification marks: BIS, Agmark, Trust mark, BVQI Well-known marks: benefit from stronger

protection

Contd…

Kinds of Marks: Words, letters, drawing, colors, pictures, numerals, figurative elements, slogans, etc.

e.g.: Sony, Reebok, Himalaya, Toyota, Dabur, Coca-Cola, Lion, Adidas, Kit Kat, Kodak, Make it happen, Just do it

In some countries: sounds, smells, three-dimensional marks are also registered

Advertising slogans – Its finger lickin good (KFC)

The secret of my energy (Boost)

Functions of a mark: Identification function (origin) Quality function Communication function

Trade mark: It is a word, name, symbol, or device or a combination thereof,

used by a person or business entity , or which a person has a bonafide intention to use, to identify and distinguish his or her goods from those manufactured by others and to indicate the source of these goods

Service mark: It is a word, name, symbol, or device or a combination thereof,

used by a person or business entity , or which a person has a bonafide intention to use, to identify and distinguish the services of a person from those of others and to indicate the source of these services.

43 different classes of trade marks and service marks (e.g., audio recordings; entertainment services; paper goods; jewelry; clothing)

Certification mark: It is a word, name, symbol, or device or a combination

thereof, used by one person or business entity to certify that the goods or services of others have certain features in regard to quality, material, mode of manufacture, or some other characteristic.

Eg.: yellow pages trust mark, Ag mark, Silk mark etc..

Collective mark: Mark used by a collective member organization such as

labour union, fraternity, professional society etc., to identify that the person displaying the mark is a member of the organization

Eg. Indian Bar Association, American Bar Association,

Mortgage banker’s Association etc.

TRADEMARK REGISTRATION IN INDIA

Who can register

Any individual, Corporate body or firm, claiming to be the proprietor of the trade mark, used or proposed to be used by him desiring to register it can file an application before the registrar for the registration of his trademark.

TRADE MARK PROTECTION:

The Trademarks Act, 1999 provides protection to the owner of a trademark and imposes criminal liabilities for the infringement of the trademark owner’s rights.

To enjoy protection, the owner of a trademark must apply for registration with the Trademark Registrar of the Registry of Trademarks, India.

Contd…

The Trademarks Act is also applicable to the protection of service marks, certificate marks and collective marks.

The Trade Mark Registry Office performs the statutory duties in connection with the registration of Trade mark and other activities related thereto.

TRADEMARK REGISTRATION VALIDITY

owner is required to apply for the renewal after this time-period. Date of registration of the Trade Mark is the date on which the application for Trade Mark is filed.

WHAT MARKS ARE REGISTRABLE AS TRADEMARKS?

A trademark is a “mark” used or proposed to be used for or in connection with goods or services to distinguish such goods or services from other goods or services. A Mark can be any brand, heading, label, ticket, name, sign letter, text, word, numeral, slogan, base line, shape, colour or combination of any of these.

To register the mark as a trademark, the mark must meet the following requirements:

1. It must be distinctive2. It must not be identical or similar to a mark already registered or any pending prior application for registration;3. It must not be prohibited by the Trademarks Act4. It must be owned by the applicant

SELECTING A SUITABLE TRADE MARK-10 POINTS TO REMEMBER.

1. A trade mark may be a word, letter, a device or numeral or signature, shape of goods, packaging or combination of colours or any combination thereof. It is better if it is simple in design.

2. If it is word it should be easy to speak, spell and remember

3. An ideal trade mark is an invented or coined word

4. Word which are laudatory or which directly refers to the character or quality of the goods or services should not be adopted.

5. Geographical names connected with the reputation or quality of the goods or services for which registration is sought should not be adopted.

6. It is advisable to conduct a market survey to ascertain whether any identical or deceptively similar mark is used for the same goods or services by any other person in the market.

7. It is advisable not to imitate another person’s trade mark or any other well known trade mark even if the goods or services are different.

8. Before applying for registration it is advisable to obtain preliminary advice regarding the distinctiveness of your mark from the Registrar by making a request on from TM-55 with a prescribed fee.

9. Further a request can be made on Form TM-54 with a prescribed fee to obtain an official report to ascertain whether any identical or deceptively similar trade mark exists on the Register or is pending for registration for the same or similar goods or services.

10. Moreover, a personal inspection or search of the Register of Trade Marks on payment of a prescribed fee may be done.

Trademark Filing In India

Process of filing a Trade Mark Application in India and Grant of Trademark Registration Certificate involves the following steps

as detailed in the flow chart herein below

OBJECTION

TRADEMARK REGISTRATION PROCEDURE: Trademark Search: It is advisable to conduct a trademark search

for the relevant classes before filing the application to register a trademark in order to make sure that there is no identical or similar trademark already registered or for which an application for registration has been submitted.

Filing Application: The first step in getting a trademark registration is the filing of Trade Mark Application in Form 1, with the logo or word mark (as may be applicable), along with the applicants' particulars, including his address (incase of a company, the registered address of the company). The application to register the trademark is filed with the Registrar of Trademarks.

Publication in the Trademark Gazette: If after a preliminary examination, the Trademark Registrar considers the mark to be distinctive, it orders the publication of the mark in the Trademark Gazette.

Post Publication:

After the advertisement of the Mark in the Gazette, it is open for the general public to file their objections to the grant of such trademark registration services.

If no opposition to the mark is filed within 90 days from the date of publication, or 120 days if request for extension of time is given by an opponent and opposition is refused, mark proceeds for grant of registration certificate.

Trademark Registration:

The trademark is registered and the trademark registration certificate is issued by the Registrar of Trademarks if there is no objection

In case of any objections it has to be clarified (i.e. Distinctiveness has to be proved) by the owner

Contd…

Documents/Information to Prove Distinctiveness

» The extent of advertisement with a few sample copies of advertising material and brochures;

» The quantum of usage with a few invoices and the last gross annual sale of the goods under the Trade name;» The extent of use of the mark in respect of time and area;» A brief write-up on the importance attached to the trade

mark in particular;» The class of costumers and their standard of intelligence

and education;» The date of commencement of the use of the mark;

Contd…

» If the trade mark has been registered in several countries and the law of Trademark is similar to that of India, certified copies of the registration of the marks in such countries may also be provided .(Note: Examination report is sent to the attorney in about 45 days from the filing of the mark).

» If there is no objection and /or opposition raised, the process of registration of trademark usually takes 1-1.5 years and incase of any objection/opposition proceedings it usually takes approx 2 years.

COPYRIGHTS

What is software copyright?

Software copyright is not essentially different from any other sort of copyright. However, there are certain aspects of copyright law that are specific to software, because there are practical differences between software and other things that can be copyrighted (books, poems, drawings, sculptures, etc.).

Copyright law gives a programmer a high degree of control over the program that he or she creates.

In India you can protect software that you’ve created only by copyright, and not by patents as in the US.

It is classified as a literary work instead of an “invention”, which performs a mechanical function.

This is the problem area as far as Indian substantive law is concerned. We follow the European model that affords copyright protection to software unlike patent protection that is granted in the US.

Software copyright issues Copyright protects only the computer program itself, and not the ideas

behind the program. That is to say, it is perfectly permissible to take a computer program written by someone else, and write another that does the same thing. If you were the first person to write, say, a spelling checker program, you would have no rights in the concept of a program that checks spelling: you would only have rights in the actual program that you had written.

The permission of the rights owner is needed in order to run, copy, modify or distribute the software

A software licensee never takes ownership of the copyright in the software; he merely purchases a licence to use the protected software under the terms and conditions set by the copyright owner and the law.

Copyright exists in a work from the moment it is recorded

Remedies for civil copyright infringement may include damages to compensate the copyright owner for damage caused to his business.

Criminal penalties can include unlimited fines and up to ten years in prison

The rental of software is illegal without the express permission of the copyright holder.

Contd…

If an organisation is using illegal copies of software the organisation may face not only a civil suit, but corporate officers and individual employees may have criminal liability.

No one is exempt from copyright law. All individuals, organisations and government agencies are subject to the law.

Web publication or other internet-based publication does not take a work outside the realm of copyright law: you still need the copyright owner's permission to publish their work regardless of the publication medium.

Ignorance of the Law does not excuse infringement.

The various kinds of software infringement

It is worth pointing out, at this stage, that there various forms of software copyright infringement - all of which must be avoided!

The most common kinds of infringement are the following:

Wholly unlicensed use: for example, copying a piece of software from a friend, or over the Internet, etc., where the licence for the software does not explicitly permit this.

Overuse: for example, buying a piece of software licensed for one computer, and installing it on two.

Failure to have a licence assigned, or to re license: if you acquire hardware second-hand, this does not necessarily transfer all software licenses, and you must take steps to ensure that your use is lawful.

Shareware abuse: where software is licensed "for evaluation purposes only" or the like, it is copyright infringement to exceed these terms.

Obtaining software fraudulently: for example, getting a reduced rate by pretending that your business is a educational institution.

"Warez" copyright infringement: A "warez" site is a site on the Internet that allows people to download infringing copies of software. The software will usually have had its digital rights management "broken" , and is referred to as "a warez copy", or "a hacked copy". Needless to say, the people who make warez copies, the people who run warez sites, and the people who download and use warez copies are all copyright infringers.

Illicit "special offers" from hardware vendors: a hardware vendor sells a computer with software installed, but (often unknown to the customer) the software is unlicensed.

Making an unlawful copy of software on a burnable CD-ROM, or the like, for the purpose of giving it to someone else. (Note that, in contrast, making a back-up copy is usually lawful! A back-up copy is a spare copy, made in case the original is erased or damaged by accident.

Counterfeiting: this is the making of unlawful copies of software on burnable CD-ROM, or the like, on a commercial scale, and having them sold under the pretence that they are lawful copies (by putting them in deceptive packaging, etc.). Counterfeiting is the preserve of professional criminals. If software is on sale at a greatly reduced price, it may well be counterfeited.

GEOGRAPHICAL INDICATIONS

Many goods possess their peculiar properties due to their geographical origin.

GI is the best method to indicate the geographical origin of goods and services.

Many agricultural products (tea, rice); dairy products (cheese), wines and spirits (Champagne) owe their special quality and reputation to their geographical place of growth or processing.

Protection Given to indications which identify goods as originating from /manufactured in a particular territory where a given quality, reputation or other characteristics of the goods is essentially attributable to that region

Sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin

Ex: Basmati rice, Darjeeling Tea, Kolhapuri Chappals , French wine, Scotch Whisky, Rockford Cheese, Champagne etc.

Features of Geographical Indication GI is not owned by a single owner

Ownership by association of persons

No assignment , licensing or mortgage

Any producer in the region can use the GI on the product provided it is prepared by the norms set out for the use of that GI.

GI is registered in the national register and is similar to the certification mark identifying the origin of the good.

Govt. can register GI in the international register maintained by WIPO for world wide protection.

It is an offence to use false GI on goods

Unauthorized use has Civil / Criminal liabilities.

Objective :

• Customers must not be misled• Marking must not mislead• No Dilution• Economic prosperity

INDICATION

Includes • Any name• Geographical or Figurative representation• (or) Any combination of them• Conveying or suggesting the Geographical Origin

GOODS

• Agricultural • Natural• Manufactured goods• Goods of Handicrafts• Industry• Food Stuffs

Goods

I. Agricultural Tea : Darjeeling, Assam, Nilgiri & Kangra Coffee : Monsooned Coffee Rice : Basmati, Nellore, Sona masuri. Wheat : Punjab, Madhya pradesh. Fruits : Alphonso, Banganapalli. Vegetable: Bangalore Brinjals. Spice : Malabar Pepper.

Goods

II. Natural

• Kolar gold

• Illmanite and Monosite of Kerala

• Goa Iron ore

• Kota Stone

• Cuddappa Stone

• Neyveli Lignite

Manufactured Goods

(a). Textiles

Pochampally Ikat, Kasuti Embroidery,

Mysore Silk, Bhavani Jamakalam,

Kanchipuram Silk, Kota Doria,

Chanderi Saree, Solapur Chaddar,

Solapur Terry Towel, Kullu Shawl,

Kotpad Handloom Fabric, Phulkari Embroidery Madurai Sungudi, Erode Bed sheets

b). Handicrafts

• Aranmula Mirrors.• Bidari Ware.• Chanapattna Toys.• Malabar Hukka• Tanjore Dolls• Tanjore Plates• Tanjore Paintings

Food Stuffs

• Bikaneri Bhujiya.

• Andhra Pickles.

• Calicut Halwa.

• Tirunelveli Halwa.

• Agra Peta.

• Kolkatta Rasagulla

Who Can Register?

Any association of persons or producers or any organization or authority established by or under law representing the interest of producers of the concerned goods

BENEFITS OF GEOGRAPHICAL INDICATION

It confers legal protection to geographical indications in India.

It prevents unauthorized use of a registered geographical indication by others.

It boosts exports of Indian geographical indications by providing legal protection.

It promotes economic prosperity of producers.

It enables seeking legal protection in other WTO member countries.

Industrial Design

After industrial revolution, it became possible to produce articles of unique shapes and designs in masses by industrial processes.

Today manufacturers are paying a lot of attention to the designs of articles that they produce to differentiate from their competitors.

For unique design or shape companies are investing in research for designs.

Legal protection has become a necessity for creation of new designs and their application to articles

What is Industrial design?

Industrial design is defined as an ornamental or aesthetic aspect of an article and the design may consist of 3D features such as patterns, lines or colours.

There are 2 forms of designs

Functional aspect design (Tool box, Car engine, Wrist watch)

Visual aspect design (Car body, Shape of container, furniture etc.)

The scope of design protection is very wide covering a variety of products of industry and handicrafts comprising of technical and medical instruments, watches, jewellery, house ware, electrical appliances, vehicles, architectural structures, textile designs, leisure goods and many more.

Features of Industrial design

Industrial Designs make an article attractive and appealing

They add commercial value to a product because shape or configuration of the article can often be a great selling point.

They increase the marketability of a product

When companies are competing at equal price and

functionality, Design is the only differential that matters

Product value enhancement through Innovation

Ranges from shape of product to packaging

Incremental impact for SMEs is significant

Industrial design: the new differential

Criteria for Protection as Industrial Design

New and Original

New : Not Previously published or used in any country before the date of application for registration.

Original : The known shape of kutub minar when applied to a cigarette holder is original and it can be registered. Originality should involve real mental activity for conception.

Capable of mass production or application on an article of utility

Not contrary to public order or morality

The shape should not be determined merely by the functionality of the good.

Issues in INDUSTRIAL DESIGN

For shape, Configuration, Ornamentation, Pattern in two or three dimensions

Applied to an Article of Manufacture

Must Appeal to the Eye as it is solely judged by the Eye

Valid for 10 years, extendable by 5 more years

Must not be previously published

Design Does Not Include : Principle of operation , Mode of construction , Trade Mark