well-knownmarks ppt, rajeev mandal (1)
TRANSCRIPT
WELL-KNOWN TRADEMARKS
1 Presented at:- Reliance Corporate Park, RTG Block,Mumbai,India.
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What is a trademark? “A sign capable of distinguishing the goods or services
produced or provided by one enterprise from those of other enterprises”
Trademarks can be any; WORD NAME SLOGAN SYMBOL PACKAGE DESIGN SOUND THREE DIMENTIONAL MARKS PICTURES
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What do these symbols mean?
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What is a well-known trademark?“well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.FAMOUS MARK:-A mark known to large section of public.Must be registered.Enjoy higher degree of reputation than well-known
marks.
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International protection of well-known marks. PARIS CONVENTION : Article 6bis :-
“Obligation to reject or cancel the registration ,or prohibit the use of trademarks which are confusingly similar to well-known mark.”
Members must protect well-known marks from infringement whether registered or unregistered.
LIMITATIONS:- Mark must be well-known to seek protection. Protect mark for only ‘identical’ or ‘similar’ goods. Does not protect service mark. Int.protection
contd…
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TRIPs AGREEMENT : Article 16:-
Obligation under article 6bis incorporated into article 16 of TRIPs.
Protection is extended to service marks and dissimilar goods and services.
More flexible in determining well known marks: relevant sector fame.
McDONALDS CORP. V. JOBURGER DRIVE INN RESTAURANTS.
“A mark can be well known merely through reputation and no use”
Int.protection contd…
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WIPO JOINT RECOMMENDATION:-Adopted in 1999 by WIPO Member States.
Guidelines for use by Member States: provided a list of factors to use in determining whether a mark is well-known.•Degree of Distinctiveness
•Duration and extent of use and advertising of the mark.
•Extent of geographical trading area.
•Channels of trade
•Degree of recognition of the mark in those channels of trade
•Nature and extent of use of the same or similar marks by third parties
•Whether the mark is registered
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PROTECTION OF WELL-KNOWN TRADEMARKS IN INDIA STATUTORY PROTECTION:- Protection is provided under THE TRADEMARKS ACT 1999.
CRITERIA FOR RECOGNITION AS WELL KNOWN TRADEMARK.1.Degree of knowledge or recognition of mark in relevant sector of public.
HARI PUTTAR V. HARRY POTTER
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Criteria for recog. Contd…2.Duration , extent, and geographical area of any use of the mark.
DURACELL ULTRA CASE
3.Duration, extent, and geografical area of any promotion of the mark.
WHIRLPOOL CO.& Anr. vs. NR DONGRE
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4.Duration geographical area of any registrations, or any publication for registration of that trademark to the extent they reflect the use or recognition of that trademark.5.Record of successful enforcement of that right, in particular, extent to which the mark was recognized as well known by competent authority.
WALLACE&CO. Vs. MRS WATER BREWERIES
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6.The number of actual or potential customers of goods or services.
AVEDA CORPORATION Vs. DABUR INDIA LTD.
7.The number of persons involved in the channel of distribution of goods services.
8.The business circle dealing with the goods or services, to which the trademark applies.
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VARIOUS ASPECTS IN RELATION TO PROTECTION OF WELL KNOWN MARKS.
1. Protection against the identical or similar trademarks.
2. Bad faith involved either of the applicant or the opponent.
3.Trademarks registered in good faith before commencement of Trade Marks act,1999 will not be prejudiced if similar or identical.
9.Where trademark has been determined to be well known in at least one section of public in India or by any court or registrar , the registrar shall consider that trademark as well known for registration under this act.
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PROTECTION UNDER COMMON LAW DAIMLOR BENZ Vs. HYBO HINDUSTAN
KAMAL TRADING CO. Vs. GILLETE UK LTD.
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LATEST TRENDS IN THE INDIAN JUDICIARY1. When there is delay or laches in filing the opposition.
KHODAY DISTILLERIES LTD Vs. THE SCOTCH WHISKY ASSO.
2. When the name is descriptive in nature.
CADILA HEALTHCARE LTD. Vs. GUJ. CO-OP MILK MARKETING FED.
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3.When the name is a common name of persons in India.
SONY Vs. ABT TEXTILES
INFRINGEMENT :- A trademark is infringed by a person who is not registered proprietor ,uses
a similar or identical trademark or trademark used for goods and services which are not similar for which it is registered.
The use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute the registered trademark.
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PROTECTION OF WELL-KNOWN MARKS IN DIFFERENT COUNTRIES. EUROPEAN UNION :-
Marks which have a high degree of recognition is acknowledged as well-known marks.
Various factors are considered in determining marks as well-known.
UNITED STATES :-
Governed by Trademark Dilution Revision Act. Protects well-known mark against a loss of distinctiveness. It does not require proof of actual confusion on part of consumers. States factor for consideration in determining well-known mark.
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SINGAPORE :-
Concept of well-known mark first introduced in 1999. Provided factor for consideration of determination of well-known
marks. CHINA :-
Well-known mark refers to a mark which is widely known to relevant section of public and enjoys reputation in china.
Article-13:-Rejection of registration of similar or identical marks likely to cause confusion.
Article 14:- Factors in establishment of well-known marks. Article 45:- Request by party to prohibit the trademark used
in contravention of article-13. Section 15A(2):-Allows an owner of well known mark to
obtain injunction to restrain the use and registration of a similar mark.
