TRADEMARK Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

WHAT IS TRADE MARK ? Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

“TRADE MARK”  Brand name or Logo for goods denoted as ® Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

TRADE MARK ™ Today trademarks (often abbreviated as TM in english) are in common usage and most people on the planet could distinguish between the trademarks for the two soft drinks Pepsi-Cola and Coca-Cola. Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

™ ®

A trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise. Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Trademark may also be three-dimensional (e.g. neck of bottle) Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Trademark A trademark is any designation that identifies and distinguishes the source of goods or services. Word/Slogan Symbol letter Name Design Package design Colors Number Devices Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Trademark…… A Word Words: ‘Apple’ for computers Deutsche Bank for a bank, Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Trademark ……. A Logo Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Trademark ……. A Slogan YE DIL MANGE MORE,For Pepsi Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Trademark ……. A Name Ford, Hilton (hotel) Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Trademark ……. Letters GM, FIAT Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Trademark ……. Devices Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Importance of Trade Mark The growing importance of trademarks in commercial activities is due to the increased competition among companies undertaking trade in more than one country Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Trade Mark must be Characteristics of Trademark Not DeceptiveDistinctive Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Types of Trade Mark Service Mark Goods Mark Certification Mark(GI) Association Mark Wellknown Trade mark Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

TM…… Service Marks:- Service marks are names used to identify a service, as opposed to a good (e.g. TATA GROUP is a service mark, whereas TATA INDICA for a car is a trademark) and function like trademarks. Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

TM…. Certification Mark: It used to indicate that a good or service complies with a manufacturing standard or specification (e.g. WOOLMARK which certifies that the goods on which it is used are made of 100% wool), or that those who provide a service have certain level of skills or training. Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

TM.... Collective Marks:- A Collective mark is a mark that belongs to an association which authorizes its members to use the collective mark (e.g. UAW for United Auto Workers) Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

WELL KNOWN TRADE MARK Coco Cola, Frooti, Bata. Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Short & Simple Easy to Spell & Read Easy to Recognize & Remember Easy to Pronounce Can Pronounce in Only One Way Can Pronounce in All Languages Suggests Product Benefits Meets Packaging/Labeling Needs No Undesirable Imagery Always Timely Adapts to Any Advertising Medium Legally Available for Use Thinking about a new TM Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Choosing the Right Mark Two Common Errors: ▫Selecting descriptive marks ▫Failing to “clear” the mark Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Selecting the Right Trademark The Strongest Type ▫A▫An invented word such as XEROX or EXXON The Weakest Type ▫I▫Immediately descriptive, such as QUALITY POTATOES Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

REGEISTRATION OF TM A trade mark may be registered or unregistered. An unregistered trade mark is called common law mark. Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Register the Trademark Having a first-to-register system means registration is absolutely necessary for protection of trademarks unless it is well-known mark Know your country’s laws Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

How is a trademark registered? F irst, an application for registration of a trademark must be filed with the appropriate national or regional trademark office. Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

How is a trademark registered? T he application must contain a clear reproduction of the sign filed for registration, including any colors, forms, or three-dimensional features. Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Select Appropriate Territories for Registration Trademark rights are territorial Some regional registration systems exist ▫C▫Community Trade Mark (Europe) ▫A▫ARIPO (Africa) ▫M▫Madrid Protocol and Madrid Agreement– International filing systems, but registration still depends on registration approval at the national level by the member countries Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Select Territories for Registration Select registration in those countries in which the company will make use of the mark directly or by licensing the mark to a third party In the United States, there are very favorable presumptions that are obtained through federal registration, including the exclusive right to use the mark Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Register the Trademark A majority of countries have first-to-file vs. first- to-use trademark priority systems Some countries with a first-to-file for registration system are: ▫C▫China ▫F▫France ▫G▫Germany ▫J▫Japan ▫S▫Spain A first-to-file for registration system means registration is a necessity Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

How is a trademark registered? T he application must also contain a list of goods or services to which the sign would apply. Trade Mark registration Form Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

CAN TM REGISTERD WORLDWIDE OR NOT Almost all countries in the world register and protect trademarks. The effects of such a registration are, however, limited to the country (or, in the case of a regional registration, countries) concerned. In order to avoid the need to register separately with each national or regional office, WIPO administers a system of international registration of marks. Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Are all Trade Marks registrable ? Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

NNot possible to register a mark which is confusing with a trade mark of another trader or a trade mark which describes the character or quality of the goods. TThe mark should not conflict with a trade mark already registered or pending registration in respect of similar goods.

Enforcement of Trademark Rights

The Importance of Having an Ongoing Enforcement Program To establish a benchmark for monitoring infringement To be consistent in enforcement efforts To put infringers on notice To prevent loss of trademark rights Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Types of Relief Available Opposition proceedings Cancellation proceedings Injunctive relief, corrective advertising, an account of profits, actual damages, statutory damages and/or attorneys’ fees Criminal penalties for trademark counterfeiting Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

Relief for Unregistered Trademarks Based on common law rights “Unfair Competition,” “Passing Off,” “Palming Off,” “False Designation of Origin” ▫I▫If consumers would be misled or confused Use of Copyright Law Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

VALIDITY OF TM Term: 10 years with possibility of indefinite 10- year renewals Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India

THANK YOU Designed and Developed by IP Laboratory, MNNIT Allahabad , Uttar Pradesh, India