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    Protection and Enforcement ofTrademark Rights

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    Why protection of Trademarks

    Consumer Deception

    Quality associated to

    products/services Distinguish traders

    Acts as an advertisement instrumentfor trader

    Protects goodwill

    Prevents Unfair advantage

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    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.

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    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

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    What can be a Trademark ?

    (4) Symbol (Sign) or design

    (5) Device

    (6) Signature

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    What can be a Trademark ?

    (7) Letters

    (8) Numerals

    555 101 777

    (9) Combination of Letters andNumerals

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    What can be a Trademark ?

    (10) Names

    (11) Shape of Goods

    (12) Package of the Goods

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    What can be a Trademark ?

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    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

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    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

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    What marks can be registered?

    Marks which can be representedgraphically; and

    Marks which distinguishproduct/services of one person fromanother.

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    Trademarks Distinctiveness

    ladder

    SuggestiveDescriptiveGeneric FancifulArbitrary

    LESS DISTINCTIVE MORE DISTINCTIVE

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    TM Search

    Trademark

    Search When,Why, Whereand what

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    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)

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    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)

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    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

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    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/
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    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

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    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;

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    Online Public Search

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    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

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    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

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    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

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

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    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

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    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

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    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

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    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

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    01.15.13 - Ripple (single wave); Waves,single

    18.07.08 - Ocean liners; Steamships

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

    Carving boards; Cheese boards; Cutting orcarving boards

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    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.

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

    26.01.21 - Circles that are totally or partiallyshaded.

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    01.07.02 - Globes with meridians andparallels only

    03.15.06 - Ducks; Geese; Swans

    03.15.24 - Stylized birds and bats

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    Other popular paid trademark

    search Databases

    Thomsons Compumark

    SAGES

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    Registration Process Flow

    Chart

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    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

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    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

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    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

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    QA&Vijay Kumar [email protected]

    www.i-winip.com

    mailto:[email protected]:[email protected]
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    ThankyouHave a Happy weekend