28 August 2019

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Part IV: Descriptive Marks – Can They be Protected?

The image reads Trademarks. The post is about interesting development in trademark law. Click on the image to read the full post.

This post was first published on October 16, 2014.

In the final part of this series, we shall conclude the discussion on descriptive marks with an examination of the Indian position on the protection of these marks. Section 9 of the Trademark Act, 1999 which lays down absolute grounds for refusal of registration of trademarks, clearly states that trademarks 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 service shall not be registered. This provision applies to marks that are both descriptive and non-distinctive in relation to the goods or services for which protection is sought. While analyzing a mark, one has to look at the word, not in its strict grammatical significance, but as it would represent itself to the public at large who are to look at it and form an opinion of what it connotes, as observed in Keystone Knitting Mills Ltd.’s TM [(1928) 45 RPC 193].

16 August 2019

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Trademarking the name of God? Huh! – Part 2

Posted by BananaIP Reporter

in Intellectual Property, Trademarks

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.

This post was published on September 04, 2014.

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.

15 August 2019

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Part I: Descriptive Marks – Can They be Protected?

Posted by BananaIP Reporter

in Intellectual Property, Trademarks

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.

This post was published on September 01, 2014.

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.

15 August 2019

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Palani Panchamirtham Gets GI Tag, Chupa Chups Travels to Japan, Durian Trademark Infringement and Other News

Posted by BananaIP Trademark Attorneys

in Intellectual Property, Trademarks

Indian Trademark Statistics for August (Second Week), Selena Gomes Files New Trademark, Tupperware to Open 30 Franchise-Run Stores, Ginsu Carves Licensing Program with JRL, Palani Panchamirtham Gets GI Tag and more, brought to you by the Trademark Attorneys at BananaIP (BIP) Counsel. TRADEMARK QUOTE OF THE WEEK “Define what your brand stands for, its core values and tone of voice, and then communicate consistently in those terms”- Simon Mainwaring INDIAN TRADEMARK STATISTICS Last week, the Indian Trademark Office has had a mixed week. The total number of applications published in the trademark journal have increased by twenty three percent (23%). Similarly, the total renewals...

05 August 2019

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Part II: Descriptive Marks – Can They be Protected?

Posted by BananaIP Reporter

in Intellectual Property, Trademarks

This post was published on September 08, 2014.

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:

28 July 2019

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Grounds for Refusal of Trademark Registration – Part III

Posted by BananaIP Reporter

in Intellectual Property, Trademarks

This post was first published on 8th July, 2014. 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: Shape of goods which results from the nature of the goods themselves; Shape of goods necessary to obtain a technical result; or Shape which gives substantial value to the goods. The primary object of this provision is to ensure that...

27 July 2019

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Trademark Registration process – Part II

Posted by BananaIP Reporter

in Intellectual Property, Trademarks

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.

This post was first published on 7th July, 2014. 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...

27 July 2019

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Trans-border Reputation of Well Known Marks – Part IV

Posted by BananaIP Reporter

in Intellectual Property, Trademarks

This post was first published on 7th July, 2014. 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...

26 July 2019

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Flavour Marks – Can They Become a Reality?

Posted by BananaIP Reporter

in Intellectual Property, Trademarks

This image depicts a pizza, as the post is about trademarking flavours. Click on the image to read the full post.

This post was first published on 26th November, 2014. Here is the next post in the series of Student Blog Contest. This post is authored by Amrita Vasudevan. Every city has its food treasures and eating haunts, and Bangalore, for example, has Shivaji Military Hotel's Donne Biryani or CTR's Benne Masala Dose, both of which have quite the fan following. Eating joints like these often become landmarks, and a ‘must visit’ for tourists. We often associate a particular taste or flavour with an eating joint, a sort of trademark of that business. But can we then register and protect the flavour as one? Flavour marks,...

25 July 2019

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

Posted by BananaIP Reporter

in Intellectual Property, Trademarks

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.

This post was first published on 7th July, 2014. 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...

trademark law Tag

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