Trade MarksTrade Marks

Prof. Puttu Guru Prof. Puttu Guru PrasadPrasadVVITVVIT

Trade MarksTrade MarksAny word , name , symbol or device or

any combination thereof, used or intended to be used , by a person to identify and distinguish goods from those manufactured or sold by other.

There fore , a mark can be anything. A mark does not have any limit. Trade marks are usually used to distinguish the products or services of one entity from other.

Purpose and function ofPurpose and function of trade mark trade markGiving a guarantee that the products

maintain a level and consistencyHelping the consumers in deciding

which product they have to purchase.

Trade marks ensure healthy competition in the market.

The value of a business entity developed by providing quality products and services to the consumers under a mark is known as goodwill.

Various types of Various types of Trade marksTrade marksNames, words, numbers, domain

names.Logos, symbols, and devices,Colors and Scents, Multiple marks.Characters, certificate marks.Service marks, collective marksAny marks joined with the goods

or products.

Various attributes of TMVarious attributes of TM

Slogans, letters, NumbersTrade dress, domain names.,

names of the artistsForeign terms, Literary Title.Logos and symbolsDesigns and ornamentationShapes and containersFragrances, sounds, Moving

Images.

Various attributes that are excluded Various attributes that are excluded from Trade marksfrom Trade marksGeneric termsFunctional featuresDescriptive marksDisparaging or falsely suggestive

marks.Mere SurnamesDeceptive Matter Insignia, name sand portieres of living

personsImmoral or scandalous matters

Tm registration process Tm registration process

Application processPreparing the applicationFilling the applicationExamination by PTOPost examination ProcedurePublication in the official gazetteOpposition proceedingsIntent and statement of use ,

Abandonment and Revival of Application.

Benefits of RegistrationBenefits of Registration

Right to use ‘O’ symbolRight sue in the courtsRight to claim damagesPrima facie evidenceConstructive notice of date of

first useConstructive notice of ownership

claim

Benefits of RegistrationBenefits of Registration

Criminal penaltiesRight to stop important of

infringement marksIncontestabilityBasis for foreign applicationLimited ground for attacking

trademark after 5 years.

Bases for tm applicationBases for tm application

Use in commerceBonafide intention to use the markBonafide intention to use the mark

along with importance as a foreign application

Bonafide intention to use the mark along with acquisition of certificate or copy of foreign registration.

Tm infringementTm infringementTrade mark infringement is a violation

of exclusive rights of a trademark. Various factors determining the

infringement of TrademarkStrength of the TMSimilarity of the TMSimilarity of the product, or goodsSimilarity in the channels of tradeEvidence of actual confusionDefendant's intent in selecting the TM

Remedies for TM InfringementRemedies for TM Infringement

InjunctionsTemporary restraining orderPreliminary injunctionsPermanent injunctionsDamagesImpoundment and destruction of

the articlesFraudulent representation in TM

registrations

Two types of symbolsTwo types of symbols‘TM’ indicates that a trademark

application has been filed for that particular mark, but trademark is not yet granted.,

@ indicates that the trademark is registered .

It creates owner shipPrevent unlawful useCrete brand value, or intellectual

wealth

Various defences to Various defences to tm infringement tm infringement Generic TermsAbandonmentLack of Secondary meaningFraudEstoppel Unclean handsLaches Acquiescence , functional, fair

use, free speech.

Resolve the infringement litigationResolve the infringement litigation

The Infringement litigation can be resolved in the following manner.

The cease and desist letterAlternative dispute resolutionSettlement

Dilution of TmDilution of TmDilution is nothing but an authorized

act to Blur the distinctiveness of a famous trade mark. The best example for dilution is the user of TIFFANY mark by a jewelry store in New York, which made consumers believe that it was founded by the TIFFANY Restaurant owners.

Types of Dilution: 1. Blurring and 2. Tarnishment

Types of dilutionTypes of dilutionBlurring :- this refers to the dilution

which effects or impact on the sale of the popular trademark products and services. This is usually done by using the mark upon dissimilar products. For example, using Cello juice, Nokia clothing.

Tarnishment:- when the trade mark is diluted and affixed on products with low quality or used in embarrassing context or being displayed in a wrongful manner it is known as Tarnishment. Example, obscenity, sexual activity or illegal activity.

Likelihood of Likelihood of confusionconfusion Registration, inter parties proceedings

and infringement litigations are the three ways in which issues of likelihood of confusion occurs.

In every case, the standards are same- under each situation it is expected that consumers of related goods will get confused, because of related goods, Using the almost same type of trademarks.

Strength of TMStrength of TM

A trade mark is said to be weak when it is descriptive and lacks appropriate secondary meaning. Likewise it is said to be strong if it is arbitrary, fanciful or suggestive and has appropriate secondary meaning.

The weak trade mark owners find it difficult to prove likelihood of confusion. For example, the American trade mark “Maid in America” for cleaning services was found to be descriptive. The owner of this TM failed to demonstrate advertising or sales to prove secondary meaning.

Similarity of TMSimilarity of TM

In general, add prefix or suffix, change letters or using clarifying information cannot prevent the claim of similarity of the trademark. Example:- Platinum puff Vs Platinum Plus

Magnavox Vs Multivox, Bata Vs Beta Lexus Vs Lexis Honda Vs Hyundai Samsung Vs Sansui

International Tm LawsInternational Tm Laws TRIPS- Trade related Aspects of

Intellectual Property Rights Multilateral Intellectual Property

Agreement by WTO Enforcement of IPR by WTO Paris Convention Trademark Law Treaty,1994, Geneva. Madrid Protocol NAFTA, WIPO, INTA

Thanking Thanking youyou

Professor & Lawyer Professor & Lawyer Puttu Guru PrasadPuttu Guru PrasadM.B.A., M.Com., M.Phil., PGDFTM., APSET., DFTM.,

PhD at JNTUK.,pgpjntuk@gmail.com., puttuvvit@gmail.com., pgp4149@gmail.com

9394969898, 7674060336, 9059457336, 9059714336, 9885192716

VVIT, Nambur, A.P