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Trademark GI Flipbook PDF
Trademark GI
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Trademark & GI I. Trademarks Trademarks in some or the other form have existed ever since there has been circulation of goods. In fact, the history of using marks to identify goods is as old as the human civilization itself. Excavators have found Potter’s Marks on remains from Greek and Roman civilizations. The only purpose of these marks was to identify the maker of a particular utensil. Even in India, jewelers used to engrave their initials on pieces of jewelry made by them. Since then, businesses have evolved and so has the world of trademarks. As brandfocused businesses are growing in number, trademarks are growing in importance. After all, every business wants a different identity for its products and services. The first law on trademarks was passed in Britain in the year 1875 which was replaced by the Patents, Designs, and Trademark Act of 1883. The Trademark Act of 1905 replaced this Act too and then it was amended by the Trademark Act of 1938. India also based its first law on trademarks on the British Act of 1938 and passed an Act in the year 1940. Trade & Merchandise Act of 1958 was the first trademark act of independent India. The present Trademark Act of 1999 replaced this Act and now regulates the trademark filing and registration system in India.
Functions of Trademark Think of Utterly Butterly Delicious and what comes to your mind? Amul butter of course. Look at a Purple and Gold chocolate pack and what immediately strikes you is the Cadbury chocolate. Listen to Waah Taj and you immediately know which brand’s tea we are talking about. Such is the power of a trademark. It allows businesses to create specific images in minds of consumers to immediately associate a mark with a particular product or service. So, the main function of a trademark is to identify and distinguish the goods or services of one person/business. Trademark and GI page 1 of 15
Apart from its main purpose of differentiation, trademarks have some other uses as well. 1. Preventing unfair competition in the market Causing confusion or deceiving the public is an act of unfair competition. Having trademark protection will allow you to prevent any such act and also to take legal action action against the person doing such act. 2. Indicating the Quality of Goods/Services Think of any well known brand. Let’s say, Adidas for example. As soon as you think of it, you will think of a certain quality that you can relate with its products. That is what trademarks do. They indicate the quality which the customer can relate to goods and services of a particular brand.
Now that we know the history and functions of trademark, let’s get to know how they are protected, internationally and back home in India also.
Madrid Protocol for International Registration of Trademarks The Madrid Protocol is an international system which works for trademarks just like the PCT system works for patents. It allows international registration of a trademark. Once registered the trademark will receive protection in all countries which have signed the protocol. The difference between the international filing system of Patents and Trademarks is that you can file an international application for trademarks only after you register it with the national office of your own country. So, if you are an Indian who wants to protect his trademark in multiple countries, you first need to file a registration application with the Indian Trademark Office. You can file an international application after you get your registration certificate from the Indian trademark office.
Subject Matter of Trademark Protection The Indian Trademark Act, 1999 defines a trademark as:
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“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.” A mark is defined as: “mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.” It is important to note that as the definition says, a trademark must be capable of graphical representation. So, what are the different types which can be represented? Let’s find out. 1. Word Marks This is simple. Suppose you are running a business in the name of PNG Retail and you want to protect your business name. What do you do? File a trademark registration application for the name PNG Retail and PNG Retail will be a word mark. Registering a word mark will protect all forms of that word, whether it is written plainly or represented artistically. 2. Device Marks These are pictures, photos, drawings, special layouts or special fonts. For example, take the above word PNG Retail. The moment we represent it in a special font, with or without pictures, it becomes a device mark. Take the Amul logo with the Amul girl. What is the Amul girl besides being charmingly witty? That’s right! It’s a device mark. 3. Service Marks They are the same as trademarks. The only difference is that they represent services instead of goods. For example, the word United Airlines or the logo for Singapore Airlines are service marks as they identify the services of Airlines. 4. Collective Marks Many of us have seen the logo. That is a collective mark. Collective marks denote a group of people who use it to distinguish their quality and services from those who do
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not belong to the group. Just like the
CA logo. Only members of the CA institute can
use it. 5. Certification Marks Remember the ISI logo and the Woolmark logo? How we look for these certification on a product before buying it. That is the purpose of certification marks. They indicate the quality of a product or service. These are the conventional or usual types of trademark. Now let’s read about some unconventional or unusual ones. 6. Sound Marks Let’s go back to our childhood favourite Tom & Jerry. That roar of the lion before every episode is still fresh in our minds. When we hear it, we still think of our favourite cartoons. So, it should not be a surprise that it is a registered trademark.
But, how can a sound be a mark? Well, remember how we learned earlier that a trademark needs to be represented visually? So, how do you represent a sound visually? In the USA, you just need to describe the sound along with a video or audio recording. Trademark and GI page 4 of 15
In India, until recently, rules were different. You could only register a sound mark if you could submit it in the form of sheet music. That’s why the Yahoo! Yodel is the only registered sound mark in India. But, the rules have recently changed and now you can send sound marks in MP3 format for registration. 7. Colour Trademark The pretty Turquoise boxes with white bows remind us of a product from Tiffany and the Purple chocolate packaging instantly brings Cadbury chocolate to mind. When a colour comes to be associated with a particular brand, it can be registered as a colour trademark. Do you know that Christian Loubotin’s Red Sole has been declared a wellknown Trademark by the Delhi High Court? 8. Shape Marks A shape of a product which can distinguish a product from others can be registered as trademark. For example, the Coca-Cola bottle. 9. Smell Marks Smell and a trademark? Now that’s even more strange than a sound trademark, isn’t it? Well, smell marks are very very rare. This is because you can only register a smell as a mark if the smell does not arise from the character of the product. Getting confusing? Examples to our rescue! Everyone knows about the famous Chanel No. 5 fragrance. Now, it is perfume and it is supposed to smell good. That is one of the characters of perfume. So, its smell will not be registered as trademark. But, have you heard of tires smelling of roses? There is no relationship between characteristics of a tyre and the rose fragrance and that is why it was registered as smell mark. Think of some other smells that can be trademarked. ● Vanilla for notebooks ● Blueberry smell for Shoe Polish ● Lavender smell for linen clothing Did you know? Cherry scent is a registered trademark for synthetic vehicle lubricant
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Well-Known Trademarks These are the marks which are not registered but are so well-known within a substantial segment of the public, that use of such a mark with any other product or service will indicate a connection with the original product or service with which the mark is associated. Section 2 (1) (zg) of the Act covers well-known trademarks Take Bajaj for example. It is so well-known that if someone making a mobile phone uses the name Bajaj with their product, you will instinctively relate it to Bajaj, the scooter making company. This is what happened in the case of Industria De Diseno Textile Sa v. Oriental Cuisines Pvt. Ltd. And Ors. Industria De Diseno is the owner of the well-known trademark ZARA, which designs and manufactures clothing and lifestyle products. Oriental Cuisines was operating two restaurants at Kolkata and Chennai by the name of ZARA TAPAS BAR. The court acknowledged ZARA’s trans-border reputation and stated that it’s a well-known brand. So, when used by some other business, it may be associated by consumers with the original ZARA brand. The court also said that “if the Defendants did not want to ride on the Plaintiff's reputation, they would have not used the word ZARA prominently in the words ZARA TAPAS BAR or ZARA, the Tapas Bar and Restaurant”. The restaurants are now simply going by the name of The TAPAS Bar. So, even when these marks are not registered, they receive protection as a trademark. In India, we have 81 well known trademarks. Domain Names as Trademarks Did you know that you can register a domain name as a trademark? That’s what the court said in the case of Yahoo!, Inc. v Akash Arora & Anr. “A domain name served the same function as a trademark and was therefore entitled to equal protection” The court also said that the names “Yahoo! and Yahoo India! Were nearly identical and phonetically similar and internet users could get confused may believe that these two names had a common origin or connection.”
Marks not Eligible for Registration In India, we have two broad categories for non-registrable marks. I. Absolute Grounds of Refusal Trademark and GI page 6 of 15
Certain marks are outrightly not registrable. Section 9 of the Indian Trademark Act lists down all such marks which are absolutely not registrable. These grounds are known as absolute grounds of refusal. A mark will not be registered if it is: A. Not Distinctive, Descriptive, or Customary 1. It does not have a distinctive character A mark which cannot distinguish your product/service from others will not be registered. For example Blue Aqua for a blue coloured drink of water or Baby Dry for diapers. Not very distinctive, are they? 2. It signifies the type, quality, place of origin, quantity, or purpose of the product/service (Descriptive trademarks) Sunlight Torch, Aromatic Body Spray, Savoury Chips, Whitey Milk, Delhi Fast Food. While catchy, these names describe the product itself and therefore cannot be registered as trademarks. There are certain exceptional cases when a descriptive trademark can be registered. It is when the descriptive words have acquired a secondary meaning that they can be registered. A secondary meaning indicates that the customer has come to associate the descriptive words with a particular brand (think finger lickin’ good for KFC) In ELGI Ultra Industries Limited v The Assistant Registrar of Trade Marks, the Intellectual Property Appellate Board [IPAB], the IPAB held that the words “ultra” and “perfect” are highly descriptive and laudatory. 3. It is a mark which has become customary in trade practices Did you know that those moving stairs we find in malls, metros, and other buildings was a trademark for the company ‘Otis’? But, it has become so customary in the common language that the court ruled that Otis cannot use Escalator as a trademark.
B. Deceptive/Religiously Hurtful/Scandalous/Obscene/Prohibited for Use 1. It can deceive or confuse the public
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Seen the PUMA brand name and logo? Now remember how many times you have
come across clothes or footwear with POMA or PUMP and the
image?
Now most of us know better than to believe that is the same PUMA brand. But, many people don’t and they can get confused or genuinely believe that it is a genuine brand. If you send any such mark for registration, it will be outrightly refused.
2. It can hurt religious sentiments Anything which can hurt the religious sentiments of any religion or community will not get a trademark. Can you think of any such mark? There was a huge controversy when Burger King Spain used the image of Goddess Lakshmi for their Hamburgers.
Moreover, the Supreme Court has also held that there is no trademark on names of gods or holy books as it may offend people’s sensibilities. In this case, a person tried to get trademark for the name Ramayana for incense sticks. The court not only refused to grant trademark to the name, but also said that people should not try to take advantage of gods and goddesses to sell their goods or services. 3. It has scandalous or obscene matter Anything scandalous or obscene in your trademark will get it rejected. Anything which may offend commonly accepted moral principles will be objected on this ground. For example, a device containing nudity as logo for children’s toys or White Dove, which is a nickname for a type of drugs. 4. Its use is prohibited by Names & Emblems Act This Act prohibits the use of certain names and symbols like the Indian Flag, the name, emblem or seal of the United Nations or the World Health Organization etc. So, if you use any of these symbols, names, or emblems in your trademark, it will not be registered. C. It Consists exclusively of Shape of Goods When a trademark only consists of shape of goods which:
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➔ Gives value to goods such as a banana shaped container for storing bananas, or ➔ Is necessary to obtain a technical result such as Lego bricks, or ➔ Results from the shape of goods such as Round football
II. Relative Grounds of Refusal Section 11 of the Trademark Act provides grounds of rejection on a relative basis. A trademark will be rejected under Section 11 if: A. It May Confuse the Public or Cause the Public to Associate the Mark with an Earlier Trademark because of: 1). Its identity with an earlier trademark and the similarity of goods or services covered by the trademark, or 2). its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark In the case of K.R. Chinna Krishna Chettiar vs Sri Ambal and Co., the battle was between two companies carrying on the business of manufacturing snuff in Madras. Both had business presence in and outside Madras. While one named its product Sri Ambal Parimala Snuff and the other party named its product Sri Andal Madras Snuff. Sri Ambal and Sri Andal are two different deities and both the products had images of the respective deities they were named after. However, the court made some important observations as below. 1. There is no visual resemblance between the two marks, but ocular (visual) comparison is not always the decisive test. 2. The resemblance between the two marks must be considered with reference to the ear as well as the eye. 3. There is a close affinity of sound between Ambal and Andal. 4. Customers not belonging to South India may not even know the distinction between Ambal and Andal and get confused.
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B. It is Identical or Similar to a Well-Known Trademark A mark identical or similar to a well-known trademark will not be registered if the goods or services in respect of which it is to be registered are not similar to the goods or services covered by the earlier trademark. C. Its Use is not Permitted by any law in force or by the law of copyright If the use of a mark is not permitted under any law, particularly the law of infringement or passing off, or the law of copyright, then you cannot register it as a trademark. IV. Names of Chemicals or Non-Proprietary Names Any word which is commonly used and accepted name of a single chemical or single chemical compound is prohibited from registration as trademark. Moreover, any word declared by the World Health Organization as an international non-proprietary name is also prohibited from registration.
Section 12: Honest Concurrent Use Section 12 provides an exception to the rule that identical trademarks cannot be registered. If there is honest concurrent use of two identical/similar trademarks by two different persons, registration may be granted to both trademarks if the Registrar thinks fit to do so. In the case of French Champagne company Moet & Chandon and a Delhi based firm named MOETS, it was held that the use of MOETS was a significant part of its trading style and capable of registration as honest and concurrent user.
Term of Protection A trademark is initially registered for a period of 10 years and it can be renewed from time to time for an indefinite time period. Renewal is subject to payment of renewal fee.
Remedies for Trademark Infringement If your trademark is registered, you have civil remedies like injunction, damages, and account of profit. The Act also provides for criminal remedies under Section 103 and 104, ranging from an imprisonment for 6 months to 3 years. For unregistered trademarks, a case for passing-off can be filed.
Defenses against a Claim of Trademark Infringement/Passing Off Trademark and GI page 10 of 15
The following grounds may be taken as defense in cases of trademark infringement or passing off. ● ● ● ● ● ● ● ● ●
Delay and Laches Acquiescence Honest and Bonafide adoption or use Difference in goods and services Difference in Counter of sale Class of Purchasers Nature of the Product Pricing Absence of the element of confusion or deception
Coming out of the fascinating world of trademarks, let’s move on to Geographical Indications.
II. Geographical Indications A Geographical Indication (GI) is a sign or mark which signifies that a product belongs to or originates in a particular region where the given characteristics, quality or reputation is essentially attributable to its geographical origin. It’s a collective right owned by a group of people within a specific region.
Think of the French Brandy Cognac, the Moroccan Argan Oil, or the Swiss Gruyere Cheese, they all have one or more characteristics which result from their geographical origins. It can be the taste, texture, healing properties, medicinal uses, or even the aroma of a product.
France had one of earliest GI systems. Appellation d'origine contrôlée or AOC as it is known, it goes back to the year 1411. This system certifies products like Wine, Cheese, and Butter with a French certification if they meet certain standards. The present French law on the GI system was passed in the year 1919. The Lisbon agreement for the first time in 1958 talked about protecting Appellations of Origin and their International Registration. In India, the Geographical Indications of Goods Act governs the system of Geographical Indications and their registration. Trademark and GI page 11 of 15
Meaning and Purpose of Geographical Indications Think of the beautiful Blue Pottery. What do you think of? The heritage city of Jaipur, right? The delicate but warm Pashmina reminds us of Kashmir and the heady concoction of Feni takes us to Goa. Back home in India, the famous Pashmina, the Mysore silk, the Darjeeling Tea; they are all examples of a GI.
A geographical indication simply serves to indicate the place of origin of a product which gives it its essential qualities.
Can you find Kathputlis as charming and enchanting anywhere other than Rajasthan, Indian wine finer than the one made in Nashik, or Tea better than Darjeeling tea?
Products you get at these places have some quality which makes them different from the same product being made or sold anywhere else. This is why they are known by the name of the place where they are made. This association with the place of origin is known as a Geographical Indication (GI) Tag.
To prevent misuse of a GI Tag, there is a specific procedure for their protection, internationally as well as in India. Let’s get to know about it.
Lisbon Agreement for the Protection of Appellations of Origin and their International Registration Just like other international systems for patents, trademarks, and industrial designs, we have the Lisbon Agreement for Appellations of Origin. We will learn more about GIs and Appellations of Origin in later parts of this module. The international bureau of WIPO can register a GI if it receives a request from the national GI office of a country which has signed the Lisbon Agreement.
Registration of Geographical Indications in India Trademark and GI page 12 of 15
Registration of Geographical Indications is a little different from registration of other types of intellectual property. This is because unlike other types of IP which belong to a particular person or organization, GIs belong to an entire region, state, or country. That is the reason why a single person cannot apply for registration of a GI.
The application can be filed by an association of persons/producers or any organization which represents the interests of producers of a particular product originating or made in a particular region.
Registration is mandatory to claim protection for a Geographical Indication.
After a GI is registered, a person can file an application for using the GI as registered user.
Difference
between
Appellations
of
Origin
and
Geographical
Indications While these two terms are used interchangeably, there is a slight difference between the two. Both the terms define an essential quality or characteristic which is a result of the origin of the product. But, the connection to place or origin is stronger in case of appellations of origin. To use an appellation of origin for a product, it is necessary that the sourcing of raw material and production of goods take place in the same area. For example, the Mexican Tequila. In Mexico, there are laws governing where to make it, where to source the plants to make it, what to write on the label, where to bottle the product, and what percentage of the plant sugar to use to make it. So, when you see a Tequila bottle, you know that is an Appellation of Origin. We can say that “All appellations of origin are geographical indications but not all geographical indications are appellations of origin”.
Difference between GIs and Indications of Source
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As we learned earlier, a GI denotes the quality of goods originating from a particular region. An indication of source only denotes the country or region in which the product was made. For example, Made in India or Made in China.
Subject Matter of Protection In India, there are 34 different categories in which a product can be registered. The products range from chemicals, bleaches, paints, and metals to textiles, games, coffee, tea, tobacco, alcoholic beverages, meat, fruits, and vegetables.
In the famous Scotch Whisky Case, the Scotch Whisky Association (SWA) filed a case against Golden Bottlings Ltd. to restrain it from using the words Red Scot for its whiskey.The court decided that Scotch Whiskey is a Geographical Indication and the government, in 2010 also recognized it as a GI. Things went differently in the case of Tea Board vs ITC where the Tea Board of India attempted to prevent ITC from using the word Darjeeling in connection with its tea lounge. ITC had named its tea lounge in ITC Sonar hotel in Kolkata as Darjeeling Lounge. The court stated that registration of the word Darjeeling as a GI in relation to tea did not confer any right on the word Darjeeling. Therefore, the Tea Board is not entitled to prevent ITC from using the word Darjeeling in rela Basmati Rice Fun fact: India has a total of 320 registered GIs including Phulkari from Punjab, Kota Doria from Rajasthan and Grapes from Nashik.
Criteria for Protection The GI Act in India lists down certain types of GIs which will not be registered. A GI will not be registered if: ➔ It can cause confusion or deception ➔ It is against any law ➔ It can hurt religious sentiments ➔ It contains obscene or scandalous matter ➔ It is a generic name
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Term of Protection Registration of geographical indication is valid for a period of 10 years which can be renewed from time to time. Here also, the reason for indefinite protection is the same as trademark. GIs are associated with products and therefore indefinite protection is necessary to avoid consumer confusion.
Infringement of Geographical Indications Any use by an unauthorized person of a registered geographical indication in a misleading manner or in an act which constitutes unfair competition, is considered infringement.
Remedies for Infringement of GI Remedies for infringement of GI include injunction, damages, account of profits, and delivery up of infringing labels.
Defences to an Infringement Claim The only defense to an infringement claim is that the infringing act was permitted under the GI Act or any other law which is in force for the time being.
Trademark v/s GI We know that a mark which indicates the geographical origin of a product or service cannot be registered as trademark. Moreover, if a trademark which consists of a geographical indication, but it has been used and registered in good faith before the GI Act or before the date of registration application for the GI, the right to get registration for the trademark or use such trademark will not be adversely affected.
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