Chat with us, powered by LiveChat

+91-80-26860424 / 34

Call Us Today

LinkedIn

Search
 

Trademarks

BananaIP Counsels > Trademarks (Page 25)

Part II: Descriptive Marks – Can They be Protected?

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.

In the second post of this blog series, we shall be analyzing the US approach towards descriptive marks.

In the US, a mark is merely descriptive if it “consists merely of words descriptive of the qualities, ingredients or characteristics of the goods or services related to the mark”, being enough if it describes one characteristic of said goods or services. Like in India, a mark which is merely descriptive or deceptively mis-descriptive of the goods on or in connection with which it is used is not registrable on the principal register, as clearly stated under Section 2(e)(1) of the US Trademark Act of 1946. In re Abcor Development Corp, 588 F. 2d 811, the US Courts clearly laid down the reasons for not protecting merely descriptive marks, which are stated as follows:

Trademarking the name of God? Huh! – Part 2

This image depicts a statue of Lord Shiva. It is relevant to the post, as the post talks about the possibility of trademarking the name of God! Click on the image to read the full post.

In this continuation post on legal aspects of trademarking god’s name, we shall look into a few cases where Courts have discussed whether or not one can trademark God’s name and therefore have monopoly in using God’s name as an Intellectual Property.

Usually, for a trademark used for a particular brand of goods or services, to be granted, it has to acquire secondary distinctiveness in its respective consumer market, and thus, one can start using the trademark on a date before he applies for its trademark. The trademark may get registered, depending on other legal factors as well as on the fact that it has acquired distinctiveness due to the long use in its respective consumer market.

Trademarking the Name of God? Huh! – Part 1

The image depicts God. If the post is to be believed, the name of God van be trademarked too! Click on the image to read the full post.

If there is one question that can spark a controversy, it must be this – Is it possible to trademark the name of God?

Section 9(2) (b) of the Trade Marks Act, 1999, which deals with Absolute grounds for refusal of registration, mandates that a mark shall not be registered as a trademark if it contains any matter likely to hurt religious susceptibilities of any class or section of the citizens of India. When a trademark is granted in the name of God, normal people / devotees will not be allowed to use the name of God. Section 9(2)(b) of the Trade Marks Act, 1999 does not allow the registration of any trademark that commercializes religious symbols. If allowed, such a registration shall injure the faith of people and temple, for if once such a trademark is registered, the proprietor gains exclusive rights to use the trademark which in turn shall prevent others from using the same, as per Article 25 of the Constitution of India.

Part I: Descriptive Marks – Can They be Protected?

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.

In India, a Trade Mark means a mark capable of being represented graphically and capable of distinguishing goods or services of one person from those of others. These are the basic requirements for a mark to be eligible for Trade Mark protection laid down under Section 2(1)(zb) of the Trade Marks Act, 1999. Apart from these qualifications, a mark should also not fall under the category of the marks mentioned under Section 9 and 11 of the Trade Marks Act, 1999.

In this category, are Descriptive Marks. One can ask a lot of questions about Descriptive Marks, some of which have easy answers.

What are Descriptive Marks? As per the provision, descriptive marks are those which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services. Such marks can include words like ‘best’ describing quality of a product, ‘mega’ describing the size etc.

Grounds for Refusal of Trademark Registration – Part III

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.

In today’s post, we’ll be talking about Section 9(3), thereby concluding one half of the series, i.e., absolute grounds for refusal of registration of trademarks.

Section 9(3) talks about the registrability of the shape of goods. As per the provision, a mark shall not be registered as a trademark if it consists exclusively of:

  1. Shape of goods which results from the nature of the goods themselves;
  2. Shape of goods necessary to obtain a technical result; or
  3. Shape which gives substantial value to the goods.

The primary object of this provision is to ensure that what is claimed as a trademark really identifies and distinguishes the claimant’s products from those of others. While talking about the registrability of shapes as trademarks, it should be noted that the ‘shape of goods and their packaging’ is already included in the definition of the ‘mark’ under the Act.

Domain Names, Email or Private Communication as Proof of Trademark Use

This image reads Evidence in bold red. This post talks about what is admissible as evidence in cases questioning trademarks. Click on the image to read the full post.

In this post, we will look into whether the mere use of trademark as part of a domain name or as an email id or even as private communication between parties can stand as proof of use of a trademark.

Documentary proof is generally submitted to show that an Applicant has been continuously using an impugned mark.  It is an effort for Applicants to show trademark examiners how they use the trademark to represent the source of origin of products and services. In order to consider a document as evidence for the use of a trademark it should comply with the following:

a) The impugned mark should be reflected clearly on the document;

b) The mark should be used in reference to the identification of production or services to which the mark is applied; and

c) The document should be accessible to the relevant public.

An In-Depth Look at the Trademark Registration Process – Part III

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.

In furtherance to the earlier post, related to trademark classification and search, we will now discuss the trademark filing process.

The procedure for registration of trademarks is contained in Section 18 to 26 of the Trade Marks Act, 1999 and Rules 25 to 62 of the Trade Marks Rules, 2002. A trademark application should be filed in the office of Trade Marks Registry within whose territorial limits the principal place of business of the applicant is situated. In case of applicants who do not have a physical place of their business in India, the application should be filed in the office within whose jurisdiction the applicant’s address of service is located. State-wise jurisdictions for filing a trademark application are mentioned below:

An In-Depth look at the Trademark Registration process – Part II

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.

In continuation to my previous post, this post is with regard to trademark search and classification of different classes.

A trademark search is required to be conducted prior to filing for registration of the mark. The purpose of conducting a trademark search is twofold:

  • To understand and analyze the registrability of a trademark: The results yielded by a trademark search are used to understand the probability of registration of a particular trademark. The presence of a higher number of potentially conflicting marks indicates that there is a higher chance of receiving objections for the trademark in case an application for registration of the mark has been done before the Indian Trademark Office.
  • To analyze whether the usage of the mark is infringing on others’ registered trademark rights: In other words, in case the particular mark, for which the applicant wishes to apply for a trademark registration, has been registered in the name of any other proprietor, it will amount to infringement of trademarks. By conducting the trademark search, it may be analyzed whether the usage of the trademark will infringe others’ trademarks right.

Trans-border Reputation of Well Known Marks – Part IV

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.

Spillover reputation of trademarks is a subject matter of endless legal tussles. Indian Courts and Tribunals frequently deal with cases related to foreign entities challenging honest and bona fide use of a similar mark by Indian entities even in situations where such foreign entities are not using their marks in India. In this post, we will discuss the concept of Transborder reputation.

To claim Transborder reputation for a mark in India, the mark must be well known in at least one other country, but preferably several other countries. In addition to this, a substantial segment of consumers in India must know about the existence of the mark of the foreign entity. Such knowledge may come from free availability of the product to Indian consumers or extensive advertising, which reaches a substantial segment of Indian consumers because of extensive circulation of those advertisements in India.

However, proving Transborder reputation alone would not suffice to restrict an Indian company from using a similar mark, honestly adopted by them. Once Transborder reputation is proved, the foreign entity is required to prove likelihood of confusion of origin, detriment or unfair advantage. Indian Courts have repeatedly held that a foreign entity claiming well knownness must not be allowed to restrict the use of a similar mark, if the Indian company was the first in the Indian market, to honestly adopt the mark.

css.php
Speak with an IP Expert Today
close slider