Making a Mark – Framing Strategy for India
A famous trademark is said to be infringed if a person (a) uses an identical or similar trademark; (b) for unrelated goods or services; and (c) takes unfair advantage or causes detriment to the famous trademark. Once a mark attains fame, no person can use the trademark in an unfair manner. For example, a person cannot sell garments under the name Coca Cola as it is a famous trademark and such a usage would amount to infringement.In order to gain business advantage through enforcement of trademark against unrelated businesses, steps must be taken for faming the trademark. The following criteria for famousness must be borne in mind while framing the faming strategy:
a. The knowledge or recognition of a trademark in the relevant section of the public;
b. The duration, extent and geographical area of use of the trademark;
c. The duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies;
d. The duration and geographical area of any registration of or any publication for registration of the trademark; and
e. The record of successful enforcement of the rights in that trademark, in particular, the extent to which the trademark has been recognised as a well-known trademark by any court or Registrar under that record.
While defining the trade mark faming strategy, care must be taken to avoid genericizing the trade mark. More often than not, aggressive trademark promotion without due care may result in over famousness or genericization. If the trademark becomes so famous that it is used as a synonynm to the product rather than being associated to the company, trademark protection is lost. Thats what happened to Xerox, Generator and many other companies.
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