8/14/2019 Trademark Registration and Enforcement

1/47

Protection and Enforcement ofTrademark Rights

8/14/2019 Trademark Registration and Enforcement

2/47

Why protection of Trademarks

Consumer Deception

Quality associated to

products/services Distinguish traders

Acts as an advertisement instrumentfor trader

Protects goodwill

Prevents Unfair advantage

8/14/2019 Trademark Registration and Enforcement

3/47

What can be a Trademark ?

Trademark is a word, phrase,symbol or design, or a combinationof words, phrases, symbols ordesigns, that identifies anddistinguishes the source of thegoods of one party from those of

others.

8/14/2019 Trademark Registration and Enforcement

4/47

What can be a Trademark ?

(1) Any word or words:Anacin, Compaq, MERCEDES-BENZ

(2) Any phrase or slogan "Just do it. Nike

Fly the good times Kingfisher

(3) Combination of words, phrases

8/14/2019 Trademark Registration and Enforcement

5/47

What can be a Trademark ?

(4) Symbol (Sign) or design

(5) Device

(6) Signature

8/14/2019 Trademark Registration and Enforcement

6/47

What can be a Trademark ?

(7) Letters

(8) Numerals

555 101 777

(9) Combination of Letters andNumerals

8/14/2019 Trademark Registration and Enforcement

7/47

What can be a Trademark ?

(10) Names

(11) Shape of Goods

(12) Package of the Goods

8/14/2019 Trademark Registration and Enforcement

8/47

What can be a Trademark ?

8/14/2019 Trademark Registration and Enforcement

9/47

How to claim a Trademark

Right

Trademark Rights associate to the businessby merely using it in the market.

Also by Registration under the Trademark

legislation by which it recognizes the ownerof the mark as Registered proprietor.

Trademark Registration is not Mandatory

However having registration will help inpreventing piracy quickly and also take awaythe defense of innocent adoption by othertraders

8/14/2019 Trademark Registration and Enforcement

10/47

Benefits on TM Registration

Exclusive rights prevent others from marketingproducts under same or confusingly similar mark

Secures investment in marketing efforts

Promotes customer loyalty/ reputation / imageof company

Provides coverage in relevant markets wherebusiness operates

Registered marks permit license or basisfranchising agreements

8/14/2019 Trademark Registration and Enforcement

11/47

What marks can be registered?

Marks which can be representedgraphically; and

Marks which distinguishproduct/services of one person fromanother.

8/14/2019 Trademark Registration and Enforcement

12/47

Trademarks Distinctiveness

ladder

SuggestiveDescriptiveGeneric FancifulArbitrary

LESS DISTINCTIVE MORE DISTINCTIVE

8/14/2019 Trademark Registration and Enforcement

13/47

TM Search

Trademark

Search When,Why, Whereand what

8/14/2019 Trademark Registration and Enforcement

14/47

When & why Trademark

Search

As soon as you discover that a particularmark can be used as trademark forselling your products or services

To ascertain whether the use of the mark willinfringe the rights of any third party and To ascertain whether proposed mark can be

legally protected

Once in every three months

To ascertain use of similar marks bycompetitors ( This is also popularly calledTrademark Watch)

8/14/2019 Trademark Registration and Enforcement

15/47

Where Trademark Search

Preliminary search in all possibledatabases Search Engines (Google / Yahoo) & Ad

Magazines

General and technical dictionaries

Atlases and geographic dictionaries

Telephone directory white pages classifieds

Local telephone directories

Comprehensive search in the nationaloffice Trademark Registry databases

WIPO (Madrid Express Database)

OHIM (European Union CTM database)

8/14/2019 Trademark Registration and Enforcement

16/47

What to be searched

LOOK, SOUND and IDEA Similar marks with Variations in Prefixes and

Suffixes

Phonetically similar marks Irregular Plural Constructions Corrupted Spellings Names Abbreviations Synonyms Alternate Spellings and Equivalents in Other

Languages Visual Equivalents

8/14/2019 Trademark Registration and Enforcement

17/47

Trademark Search in INDIA

Official Search TM-54 Preliminary Registrablity opinion by

Registrar (TM-55) Trademark Clearance certificate by

Registrar for the purpose of CopyrightRegistration(TM-60)

Public SearchOnline Database (www.ipindia.nic.in)At Trademark Registry Office

http://www.ipindia.nic.in/http://www.ipindia.nic.in/

8/14/2019 Trademark Registration and Enforcement

18/47

Classification List in TM Rules 2002 (Based on NICE Classification)

Class 1. Chemical used in industry, science, photography, agriculture, horticulture and forestry; unprocessed artificial resins,unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances forpreserving foodstuffs; tanning substances; adhesive used in industry

Class 2 . Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordents; raw naturalresins; metals in foil and powder form for painters; decorators; printers and artists

Class 3 . Bleaching preparations and other substances for laundry use; cleaning; polishing; scouring and abrasive preparations;

soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices Class 4 . Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels(including motor spirit) andilluminants; candles, wicks

Class 5 . Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters,materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparation for destroying vermin; fungicides,herbicides

Class 6. Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery,

small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores Class 7 . Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission

components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs Class 8 . Hand tools and implements (hand-operated); cutlery; side arms; razors

Class 9 . Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking(supervision), life saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound orimages; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cashregisters, calculating machines, data processing equipment and computers; fire extinguishing apparatus

Class 10 . Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles;suture materials

Class 11 . Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating, water supply and sanitarypurposes

Class 12 . Vehicles; apparatus for locomotion by land, air or water Class 13 . Firearms; ammunition and projectiles; explosives; fire works Class 14 . Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery,

precious stones; horological and other chronometric instruments Class 15. Musical instruments Class 16 . Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding

material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters andoffice requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (notincluded in other classes); playing cards; printers' type; printing blocks

Class 17 . Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not included in other classes;plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal

Class 18 . Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins,hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery

Class 19 . Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallictransportable buildings; monuments, not of metal.

Class 20 . Furniture, mirrors, picture frames; goods(not included in other classes) of wood, cork, reed, cane, wicker, horn, bone,ivory, whalebone, shell, amber, mother- of-pearl, meerschaum and substitutes for all these materials, or of plastics

8/14/2019 Trademark Registration and Enforcement

19/47

Classification List

Class 21 . Household or kitchen utensils and containers(not of precious metal or coated therewith); combs andsponges; brushes(except paints brushes); brush making materials; articles for cleaning purposes; steelwool;unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware notincluded in other classes

Class 22 . Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes)

padding and stuffing materials(except of rubber or plastics); raw fibrous textile materials Class 23 . Yarns and threads, for textile use Class 24 . Textiles and textile goods, not included in other classes; bed and table covers. Class 25 . Clothing, footwear, headgear Class 26 . Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial

flowers Class 27 . Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall

hangings(non-textile) Class 28 . Games and playthings, gymnastic and sporting articles not included in other classes; decorations for

Christmas trees Class 29 . Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables;

jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats Class 30 . Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from

cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar,sauces, (condiments); spices; ice

Class 31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals;fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt

Class 32 . Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit juices;syrups and other preparations for making beverages

Class 33 .Alcoholic beverages(except beers) Class 34 . Tobacco, smokers' articles, matches SERVICES Class 35 .Advertising, business management, business administration, office functions. Class 36 .Insurance, financial affairs; monetary affairs; real estate affairs. Class 37 . Building construction; repair; installation services. Class 38. Telecommunications. Class 39. Transport; packaging and storage of goods; travel arrangement. Class 40. Treatment of materials.

Class 41. Education; providing of training; entertainment; sporting and cultural activities. Class 42. Providing of food and drink; temporary accommodation; medical, hygienic and beauty care;veterinary and agricultural services, legal services, scientific and industrial research; computer programming;

8/14/2019 Trademark Registration and Enforcement

20/47

Online Public Search

8/14/2019 Trademark Registration and Enforcement

21/47

8/14/2019 Trademark Registration and Enforcement

22/47

8/14/2019 Trademark Registration and Enforcement

23/47

8/14/2019 Trademark Registration and Enforcement

24/47

8/14/2019 Trademark Registration and Enforcement

25/47

8/14/2019 Trademark Registration and Enforcement

26/47

8/14/2019 Trademark Registration and Enforcement

27/47

26.01.02 - Circles, plain single line; Plain singleline circles

26.11.10 - Rectangles divided once into twosections

26.11.13 - Rectangles (exactly two rectangles);Two rectangles

26.11.21 - Rectangles that are completely orpartially shaded

26.17.13 - Letters or words underlined and/oroverlined by one or more strokes or lines;

Overlined words or letters; Underlined words orletters

8/14/2019 Trademark Registration and Enforcement

28/47

26.03.02 - Ovals, plain single line; Plain single lineovals

26.17.07 - Heat, lines depicting; Lines depicting

speed, propulsion, heat or wind; Propulsion, linesdepicting; Speed, lines depicting; Wind, linesdepicting

26.17.09 - Bands, curved; Bars, curved; Curved

line(s), band(s) or bar(s); Lines, curved

8/14/2019 Trademark Registration and Enforcement

29/47

26.03.03 - Incomplete ovals; Ovals,incomplete

26.03.17 - Concentric ovals; Concentricovals and ovals within ovals; Ovals within

ovals; Ovals, concentric 26.03.21 - Ovals that are completely or

partially shaded

8/14/2019 Trademark Registration and Enforcement

30/47

05.05.25 - Daffodils; Iris (flower); Other flowers05.05.25 - Daffodils; Iris (flower); Other flowers

8/14/2019 Trademark Registration and Enforcement

31/47

03.15.01 Eagles 03.17.16 - Heads of birds 03.17.25 - Beaks; Other parts of birds 26.11.12 - Rectangles with bars, bands and lines 26.11.25 - Rectangles with one or more curved sides

26.17.05 - Bands, horizontal; Bars, horizontal; Horizontalline(s), band(s) or bar(s); Lines, horizontal

26.17.07 - Heat, lines depicting; Lines depicting speed,propulsion, heat or wind; Propulsion, lines depicting; Speed,lines depicting; Wind, lines depicting

8/14/2019 Trademark Registration and Enforcement

32/47

02.11.07 - Arms; Fingers; Hands; Human hands,fingers, arms

26.01.21 - Circles that are totally or partially shaded.

26.09.12 - Squares with bars, bands and lines 26.09.21 - Squares that are completely or partially

shaded

26.11.12 - Rectangles with bars, bands and lines

26.11.21 - Rectan les that are com letel or artiall

8/14/2019 Trademark Registration and Enforcement

33/47

8/14/2019 Trademark Registration and Enforcement

34/47

02.01.01 - Busts of men facing forward;Heads of men facing forward; Men -heads, portraiture, or busts facing

forward; Portraiture of men facingforward

02.01.05 - Historical men (American);Men, famous; Presidents (American)

16.03.07 - Eyeglasses; Frames, eyeglass;Glasses, eye; Glasses, safety; Goggles;Safety goggles; Spectacles; Sunglasses

26.09.21 - Squares that are completely or

partially shaded

8/14/2019 Trademark Registration and Enforcement

35/47

01.01.04 - Star - a single star with six points 02.03.24 - Women, stylized, including women

depicted in caricature form 26.11.21 - Rectangles that are completely or partially

shaded

8/14/2019 Trademark Registration and Enforcement

36/47

01.15.13 - Ripple (single wave); Waves,single

18.07.08 - Ocean liners; Steamships

8/14/2019 Trademark Registration and Enforcement

37/47

01.15.05 - Smoke; Steam; Vapor 08.01.12 Pizza 11.01.09 - Blocks, chopping; Boards, cutting;

Carving boards; Cheese boards; Cutting orcarving boards

8/14/2019 Trademark Registration and Enforcement

38/47

03.01.01 Lions 03.01.16 - Heads of cats, dogs, wolves, foxes, bears, lions, tigers 04.09.01 - Face Masks (costume); Masks, Halloween (costume); Masks,

theatrical masks 16.03.03 - Film, photographic; Reels, movie film; X-ray negatives

24.09.07 - Advertising, banners; Banners 26.01.02 - Circles, plain single line; Plain single line circles 26.01.05 - Circles made of broken or dotted lines 26.01.08 - Circles having letters or numerals as a border; Circles having

punctuation as a border; Letters, numerals or punctuation forming orbordering the perimeter of a circle

26.01.17 - Circles, two concentric; Concentric circles, two; Two concentric

circles 26.01.21 - Circles that are totally or partially shaded.

8/14/2019 Trademark Registration and Enforcement

39/47

03.15.06 - Ducks; Geese; Swans 03.15.24 - Stylized birds and bats

26.01.21 - Circles that are totally or partiallyshaded.

8/14/2019 Trademark Registration and Enforcement

40/47

01.07.02 - Globes with meridians andparallels only

03.15.06 - Ducks; Geese; Swans

03.15.24 - Stylized birds and bats

8/14/2019 Trademark Registration and Enforcement

41/47

Other popular paid trademark

search Databases

Thomsons Compumark

SAGES

8/14/2019 Trademark Registration and Enforcement

42/47

Registration Process Flow

Chart

8/14/2019 Trademark Registration and Enforcement

43/47

Registration Process

Application Data Entry Formalities Check up

Examination Report with Objections byExaminer

Compliance of Examination Report byApplicant

Acceptance Publication in Trademark Journal Opposition Proceeding (if any) Registration

Renewals

8/14/2019 Trademark Registration and Enforcement

44/47

Scope of Rights

The exclusive right to use themark

The right to prevent others fromusing an identical or similarmark for identical or similar

goods or services

8/14/2019 Trademark Registration and Enforcement

45/47

Post Registration care

Actively use the mark in the market Provide proper Notice of Registration of mark Dont use variations of the mark Dont Misspell Dont use it as verb; always use it as adjective Dont use in part or in combination with another

mark. Trademark Watch Timely Renewals Protection/Registration should extended to other

classes as you diversify your business Protection/Registration should extend to other

Geographic territories as your market expands Enforce your right against third party aggressively Use Mark on Internet (Register as many domain

names with the mark as possible) Licensing/ Franchising / Permitting Registered Users

8/14/2019 Trademark Registration and Enforcement

46/47

QA&Vijay Kumar M.vijay@i-winip.com

www.i-winip.com

mailto:vijay@i-winip.commailto:vijay@i-winip.com

8/14/2019 Trademark Registration and Enforcement

47/47

ThankyouHave a Happy weekend