Chat with us, powered by LiveChat

+91-80-26860414

Call Us Today

LinkedIn

Search
 

Trademarks

BananaIP Counsels > Trademarks (Page 25)

Evidence Required to Determine Well Knownness of a Trademark – Part III

This image depicts several well known brand logos such as McDonald's and Coca-Cola. This post is about the transborder reputation of well known marks. Click on the image to read the full post.

As discussed in my previous post, the claimant of well knownness of a trademark is required to prove the popularity of the mark among relevant public by submitting cogent, clear and convincing documentary proof. In this post, we will be discussing the list of documents that the courts or the Trademark Office considers as valid proof for determining the well knownness of a trademark.

Although a hard and fast rule cannot be drawn with respect to the acceptable evidences before a court of law, the following list is drawn from interpretation of various judgements and practices of the Trademark Office:

a) Certified Copies of Trademark Registration Certificates: Although trademark registration in India is not a requisite factor for determining the well knownness of a trademark, registration certificates of other jurisdictions and their effective enforcement are considered relevant factors. Section 137 of the Trade Marks Act, 1999 can be interpreted to mean that only certified copies of registration certificates would be considered as acceptable proof of evidence. Attorneys usually submit the status pages of online databases to show that the mark is registered. However, copies of such status pages cannot be considered as acceptable evidence as the online databases maintained by all Trademark Offices specifically disclaim the use of status pages for legal purposes.

Well Knownness of a Trademark – Part II – Popularity among Substantial Segment of Public

This image depicts several well known brand logos such as McDonald's and Coca-Cola. This post is about the transborder reputation of well known marks. Click on the image to read the full post.

As discussed in our previous post, for determining the well knownness of a trademark, the claimant of the well knownness is required to prove beyond reasonable doubt that the mark enjoys high reputation among a substantial segment of consumers, with respect to the goods and/or services to which said mark is applied. In order to conceptualize the principle behind the well knownness of a trademark, it is important to understand the legal interpretations of the terms ‘substantial segment of consumers’ and ‘relevant consumers’.

Although there is no hard and fast rule regarding what constitutes substantial segment of consumers, analysis of case laws of various jurisdictions indicates that, in order to consider a trademark as well known, the mark should be known among 75 to 90% of relevant public.

The Chancery Division in the judgment reported as “British Sons Vs James Robert – 1996 (RPC) 281 (page 305-306), while examining the issue of acquired distinctiveness of a descriptive trademark “TREAT” has held that mere extensive use is not enough. It must be shown that the mark has really become accepted by a substantial majority of persons as a trademark and has become a household word. Even if 60% of the purchasing public recognize the word as a trade ark, that is not sufficient. Such recognition must be amongst at least 90% of the purchasing segment of public. The Applicant has miserably failed to produce on record any such evidence.

Grounds for Refusal of Trademark Registration – Part 1

This image depicts the 'Trademark' and 'Registered' symbols. This post is a part of a series on what marks are permissible as trademarks. Click on the image to read the full post.

A trademark means a mark capable of being represented graphically, capable of distinguishing goods or services of one person from those of others. Hence for a mark to be registered as a trademark under the Trade Marks Act, 1999, it has to satisfy three requirements which include:

  1. It should be a mark
  2. It should be capable of being represented graphically
  3. It should be capable of distinguishing the goods or services of one person from those of others

Apart from these requirements, a mark should not fall under any grounds for refusal of registration of trademarks. A trademark application can be refused registration on either absolute or relative grounds as provided under Section 9 and 11 respectively. These grounds for refusal of registration shall be discussed in detail as part of a series on the grounds of refusal of registration of trademarks.

An In-Depth look at the Trademark Registration Process- Part 1

The image reads 'Trademark Registration and Protection' with a heap of Trademark signs in the backdrop. This post talks about the process of trademark registration. Click on the image to read the full post.

A trademark is a sign that is used to identify goods and services as those produced or provided by a specific person or enterprise. It helps in distinguishing those goods and services from similar ones provided by another. For example, ‘Apple’ is the trademark that identifies goods and services manufactured and distributed by Apple Inc.

The object of trademark law is to deal with the precise nature of rights, which a person can acquire with respect to trademarks, the mode of acquisition of such rights, the method of transfer of those rights to others, the nature of infringement of such rights, the procedure for enforcement of those rights and the remedies available in case of such infringement.

This branch of commercial law has undergone changes from time to time in tune with the changing pattern of business methods and practices. Section 2(zb) of the Trade Marks Act, 1999 defines the word trademark as:

“Trademark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours: and—

How to Determine Well Knownness of a Trademark – Part 1 -Trade Marks Act, 1999

The image depicts a lock with the letters TM by its side. The post talks about protecting trademarks. Click on the image to read the full post.

In continuation to our previous post on Well Known marks, in this post we will be discussing the factors that should be taken into consideration while determining the well knownness of a mark.

Section 11(6) and Section 11(7) of the Trade Marks Act, 1999 discusses the factors that the Registrar of Trademarks shall take into account while determining the well knownness of a trademark. Section 11(6) provides specific factors for assessing well knownness of a trademark, and Section 11(7) provides specific criteria for the said factors.

Section 11(6) states that – The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including

(i) the knowledge or recognition of that trademark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;

Introduction to Well-Known Trademarks and Trademark Dilution

This image depicts several well known brand logos such as McDonald's and Coca-Cola. This post is about the transborder reputation of well known marks. Click on the image to read the full post.

This image is the Sinapse logo

This post was first published on June 30th, 2014.

 

Generally, trademark protection is limited to the protection against unauthorized use of a trademark on identical or similar goods or services. The deceptive similarity and likelihood of confusing elements are not applicable in cases where an alleged conflicting mark is used in respect of dissimilar and/or unrelated goods and services. For example, the use of the mark KODAK for hotels or catering services would not amount to trademark infringement under the provisions of Trademark law.

However, this is not the case in all situations. Article 6 Bis of the Paris Convention for protection of Industrial Property specifically requires all signatories to develop a mechanism to protect the well known and/or famous trademarks.

Section 2 (1) (zg) of the Trademarks Act, 1999 defines the term well-known marks as:

well-known trademark”, 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.”

Case Study – Trademark for Film Titles

The image depicts a lock with the letters TM by its side. The post talks about protecting trademarks. Click on the image to read the full post.

This post was first published on June 27th, 2014.

 

What’s in a name? – This question of William Shakespeare’s would probably fade away into the background when it comes to the Entertainment Industry. The importance given to a name seems like just about everything in the context of the Entertainment Industry, since it creates an identity and makers of a film all over the world are choosy to the point of being cranky when it comes to giving their film a suitable title. Titles act as the unique identifier representing their work. So, can titles be protected, and if yes, how can they be protected, is a million dollar question.

Standard practice in the industry is to register titles with societies or associations such as the Indian Motion Pictures Producers Association (IMPPA), the Film and Television Producers’ Guild of India, the Association of Motion Pictures and Television Programme Producers (AMPTPP) and the Western India Film Producers’ Association (WIFPA). Before registering a title, an association generally conducts a thorough check with other associations to see if the same or deceptively similar title has been registered with any of the other associations. Usually, only the members of an association can apply for title registration with that association. Though this sounds simple, the catch is that registration with societies and associations does not have any legal sanctity. However, courts may take cognizance of the registration to ascertain the first user/ adopter of the title, if it came to be part of legal proceedings.

Too much Success is Not Always Good: A Look at Genericization of Trademarks

The image depicts a tombstone with the Registered mark on it. This post talks about Trademark death due to genericization. Click on the image to read the full post.

Trademarks are vital for the commercialization and growth of an industry. It is a valuable asset for a business entity as it acts as a link between the goods and the producer. It is through trademarks that consumers identify a particular product, as a result of which, it can be rightly said that the reputation of a company is built on trademarks.

As a brand gains popularity, it is subject to various attacks in the form of passing off and infringement. Asserting the mark against infringers is crucial for maintaining the reputation of the trademark. However, too much popularity can also be risky, as it can lead to genericization of the trademark.

Genericization of a mark occurs when the mark has become immensely popular and is used to colloquially describe a particular type of service or product. In other words, genericization results in the brand name being used for referring to all the products or services of a particular category, regardless of the trade origin.

Are Applicants Allowed to Later Refute Their Own Submissions at TM Prosecution?

The image depicts a lock with the letters TM by its side. The post talks about protecting trademarks. Click on the image to read the full post.

A recent decision from the Delhi High Court (HC) pertaining to the publisher of a weekly magazine, India Today, filing an application for an interim injunction at the Delhi HC so as to restrain Alpha Dealcom from launching a news channel with the name ‘Nation Today’, stresses the importance of submissions in response to an Examination Report made before the Trademarks Registry.

The publisher of India Today argued that the use of the word ‘Today’ infringed its Trademark. The Delhi HC held that, prima facie, there was no infringement because the use of the word ‘Today’ by the two parties was not likely to cause confusion in the minds of consumers. Plaintiff argued that since it owns the Trademark ‘India Today’ for several publications and news channels, the term has acquired the status of a well-known trademark.

Isn’t MUCOSOLVIN confusingly similar to MUCOSOLVAN?

The image depicts the logo of Mucosolvan. This post describes a recent win for its trademark in a legal tussle. Click on the image to read the full post.

The Hon’ble Delhi High Court delivered another thought-provoking judgment on the 16th of December, 2013 related to the pharmaceutical industry. The plaintiff in the present case is Boehringer Ingelheim Pharma Gmbh & Co., a German company with its principal place of business in Germany, whereas the Defendant is IPCA Laboratories Ltd., with its principal place of business in Mumbai. The Plaintiff has been using the trademark MUCOSOLVAN since 1979 in 56 countries including India for pharmaceutical preparations used mainly for the treatment of productive cough. The trademark application filed by the Plaintiff before the Indian Trademark Office is pending registration. The Plaintiff states that,...

Continue reading