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Trademarks

BananaIP Counsels > Trademarks (Page 26)

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,...

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Pepsodent’s Attaaaack on Colgate Continues

In furtherance to our earlier blog here relating to the advertisement war between Colgate and Pepsodent and comparative advertising, the Delhi High Court recently, on 21st August 2013, denied grant of interim injunction against Hindustan Unilever Limited ('HUL'/Pepsodent) and held that Court was not persuaded at this stage to hold the impugned TV advertisement or the impugned printed advertisement by HUL to be disparaging of or denigrating the product ‘Colgate Dental Cream Strong Teeth’ of Colgate-Palmolive. Colgate-Palmolive (“Colgate”) brought an action against HUL relating to the advertisements published by HUL regarding Colgate’s toothpaste Colgate Dental Cream Strong Teeth (hereafter 'Colgate Strong...

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Comparative Advertising- Pepsodent v. Colgate

There is yet another war between Hindustan Unilever Limited (Pepsodent) and Colgate- Palmolive (Colgate), regarding a comparative advertisement by HUL, which shows two kids brushing their teeth with Pepsodent and Colgate, where both the toothpaste packs are clearly visible. The kids then take a cavity test, and the voiceover follows which says that, Pepsodent Germicheck is 130% better than Colgate, when it comes to germ attack (news available here). Colgate-Palmolive is known to have not taken the conventional route of first filing a complaint with the Advertising Standards Council of India (ASCI) and has instead directly approached the Courts. In India, comparative...

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Madrid Protocol- International Trademark Filing Becomes Easier

India has been officially notified as a member to the Madrid Protocol on 8th July 2013 joining 89 other countries including the USA and European Union. What is Madrid Protocol The Madrid Protocol is an international trademark filing system that provides a cost-effective and efficient way for individuals and entities to secure protection for their marks in multiple countries by filing one application with the Indian Trademark office. At present, there are a total of ninety one Contracting parties that are members of the Protocol. The list of members of the Madrid Protocol may be accessed here. Process of International Registration Under Madrid...

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Trademarks: Can Sound Be Registered as a Trademark?

This image depicts the logo of MGM, the motion pictures producers. The logo consists of a roaring lion. The depiction is accompanied by a majestic roar of the lion. Is this trademarkable? This post deals with the question as to whether sounds can be trademarked. Click on the image to read the full post.

A trademark is a word or symbol which is associated with a product or company. It is one of the important Intellectual properties of any Company. With the diversification of means for branding products, sound marks/sound logos (such as Intel's "Intel inside" musical jingle"; MGM lion's roar) have got prominence and their protection has become an important aspect. No company would desire such a unique identification sound to be moving into public domain. So, various countries like U.S, Germany have started registering such distinctive marks. The decision of the Canadian Federal Court in the case (Metro-Goldwyn-Mayer Lion Corp. v Attorney General...

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What NOT to DO While Applying for a Trademark

The image depicts the REGISTERED logo

1.    Have a business? Applying for a trademark is a sheer waste of time. You must already be busy with routine chores of the business. Thinking of adopting a mark and going through the entire process of getting it registered is just tiresome and unnecessary. Business will boom if it has to. 2.    If you are thinking of a name for your mark, trying to adopt a descriptive name as your trademark will be a good idea, i.e if you are selling oranges then the trademark you should adopt is ORANGE. 3.    Have you heard of Google or Mercedes? Adopting a mark...

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