TRADEMARKS

TERM PAPER

HAIDER ALI KHAN

16390920-051

DR. IJAZ A. QURESHI

 ABSTRACT

Intellectual property rights help people to assert ownership on their creativity and innovations in
numerous fields. There are many kinds of intellectual property rights and one of them being
trademarks. In simple terms trademarks are for products and services to be identified with its
maker and provider respectively. It becomes very appreciated since it is linked with quality and
consumer expectation. Trademarks can be a name, number, logo, coined term, colors or
combination of these and could be the texture or shape of the goods too. Trademark protects both
the attention of the consumer and the trader as the consumer is able to relate the product with the
quality assured by its trader and also the trader being able to block his opponents from using his
mark and gain profits through imitation while making it different. Trademarks define the source
of the product and makes it unique from its sub-standard replicas Goods and services are secret
according to the International Classification of goods and services. Schedule IV of the Act
provides a list of goods and services falling in different classes. The Registrar is the final
authority defining the class in which particular goods or services fall. Before filing an application
for registration the mark should fulfill certain legal necessities such as the selected mark should
be capable of being represented realistically, then it should be capable of unique the goods or
services of one undertaking from those of others and the last requirement being that it should be
used or proposed to be used mark in relevancy merchandise or services for the aim of signifying
about on specify a association within the course of trade between the products or services and a
few person have the correct to use the mark with or while not identity of that person. All these
are required by the act. It is always wise to do a trademark search before filing an application for
recording a trademark to be on the safer side. All accepted applications will be published in the
Trademarks Journal for the purpose of particle any opposition which must be filed within three
month from the date of publication and an extension of one month is available for filing such
oppositions. This body of unwritten principles finally protects customers by elimination firms
from victimization emblems greatly like those of alternative firms which will have a lot of
"brand equity" and client loyalty. Trademark law is planned to avoid consumer misunderstanding
and preventing companies from diluting the marks of other firms. Dilution occurs when a similar
mark adversely affects the reputation of a distinctive trademark irrespective if it leads to
consumer confusion or not. Given the increased importance of stigmatisation and therefore the
tangible amount of the whole (brand equity) in today's expertise economy, trademark law is more
important than ever before.
TRADEMARKS:

A trademark could be a recognizable sign, design, or expression which classifies products or

services of a particular source from those of others, although trademarks used to classify services
are usually called service marks. A brand may be located on a package, a label, a receipt, or on
the product itself. For the sake of corporate self, trademarks are often displayed on company
structures. The first judicial act regarding emblems was passed in 1266 underneath the rule of
Henry III, demanding all bakers to use a distinctive mark for the bread they sold. The first recent
trademark laws emerged in the late 19th era. In France the first comprehensive trademark
scheme in the world was passed into law in 1857. The Trade Marks Act 1938 of the uk modified
the system, allowing registration based on "intent-to-use”, creating an inspection based process,
and making an application publication system. The 1938 Act, which served as a model for
similar legislation elsewhere, contained other novel ideas such as "associated trademarks", a
consent to use system, a apologetic mark system,and non claiming right structure. The symbols
the trademark symbol and the registered trademark symbol can be used to show trademarks; the
latter is only used for use by the owner of a trademark that has been itemized.

INTRODUCTION:

To keep the interest of consumers and protection reputation and goodwill of the proprietors of
sure works used on goods, the Trade and Merchandise Marks Act, 1958 was enacted. It was a
whole piece of legislature dealing with registration and defense of Trade marks. It was a central
unitary law applicable to the whole of the country. With the development in trade and commerce,
globalization of trade and industry and need to inspire investment and transfer of technology and
for simplification and coordination of trade marks management systems, Trade Marks Act, 1999
was enacted canceling the Trade and Merchandise Marks Act, 1958, with the object to provide
for registering and better protection of trade marks for goods and services and for the stoppage of
use of fraudulent marks. Some of the features of the Trade Marks Act, 1999 are: 1. Registration
of trade marks for services also the goods; 2. Not to permit copies of trade marks; 3. Factors to
be slow for defining a well known trade mark; 4. Streamlining the procedure by producing only a
single register and simple application for recording in more than one class; 5. Broadening the
scope of permitted use; 6. Providing for enhanced penalties for offences; 7. Providing for
Appellate Board.

“A trademark is any sign that modifies the goods of a given enterprise and distinguishes them
from the goods of its competitors.” This definition comprises two aspects, which are sometimes
denoted to as the different functions of the trademark, but which are, however, interdependent
and for all applied purposes should always be looked at collected.

In order to individualize a product for the consumer, the trademark must indicate its source. This
does not mean that it must inform the consumer of the actual person who has manufactured the
product or even the one who is interchange in it. It is sufficient that the consumer can trust in a
given creativity, not necessarily known to him, being answerable for the product sold under the
trademark.
The function of signifying the source as described above supposes that the trademark decides the
goods of a given enterprise from those of other creativities; only if it allows the consumer to
differentiate a product sold under it from the goods of other enterprises presented on the market
can the trademark fulfill this purpose. This shows that the distinctive function and the function of
indicating the source cannot really be separated. For practical purposes one can even simply rely
on the distinguishing function of the trademark, and define it as “any visible sign capable of
distinctive the goods or services of an enterprise from those of other creativities.”

1. CLASSIFICATION SYSTEM Various kinds of Goods and services, which are confidential
according to the International Organization of goods and services, are covered under trade mark.
Currently schedule IV of the Trade Marks Act, 1999 provides a list of such goods and services
falling in changed classes. 2. REQUIREMENTS FOR FILING TRADE MARK APPLICATION
Any person claiming to be the owner of a trade mark used or projected to be used can apply for
trade mark registration. Following are the requirements for filing trade mark request. a. Name &
Address of the Applicant Company / Person

b. Trademark / Logo (10 copies)

c. Class(es)

d. Description of goods / services

e. Original priority documents, if import is claimed. (can be filed within two months from the
date of filing in India). f. Power of Attorney duly authenticated (can be submitted later).

3. REGISTERATION PROCEDURE An acknowledged registration process would take around

twelve to fifteen months involving phases After the trade mark is published in the TM Journal
any person can file opposition within four months from the date of magazine. After hearing both
the parties the Registrar of Trade Mark shall decide consequently and register or discard the
trade mark.

4. TERM & RENEWAL OF TRADE MARK The term of a trademark is ten years. It can be
transformed further after every ten years. The application for renewal has to be made within six
month from the date of expiry of the trade mark. 5. LICENSING AND ASSIGNMENT Trade
Mark can be given or licensed in respect of all or helping of the goods or services for which they
are registered. Assignment or License Agreements of Skill Marks must be made in writing and
recorded with the Registrar of Trade Marks for its reasonableness and enforcement. 6.
ENFORCEMENT The remedies available to the owner of a trade mark for unlawful use of his
mark by third party are a) an action for violation in case of a registered trade mark, and

b) an action for transitory off in case of an unregistered trade mark. The action for violation is a
statutory remedy and action for passing off is a common law remedy. In a suit for infringement
or for transitory off, the relief that the court may grant includes order, damages, account for
profits and/or order for delivery of the infringing labels and marks for obliteration.

Usage:

A trademark classifies the brand holder of a specific product or service. Trademarks can be used
by others under certifying agreements; for example, Bullyland found a license to produce Smurf
collectibles; the Lego Group purchased a license from Lucasfilm in order to be permitted to
unveiling Lego Star Wars; TT Toys Toys is a constructor of licensed ride-on replica cars for
children. The unauthorized usage of trademarks by producing and interchange fake consumer
goods is recognized as brand piracy.

The possessor of a trademark may pursue lawful action against trademark violation. The United
States, Canada and other countries also know common law trademark rights, which means action
can be taken to protect an unregistered trademark if it is in use. Still, common law trademarks
offer the holder, in general, less legal protection than recorded trademarks.

Designation:

A trademark could also be selected by the subsequent symbols:

™ (the "trademark symbol", which is the letters "TM" in superscript, for an unregistered
trademark, a mark used to promote or brand goods)

℠ (which is that the letters "SM" in superscript, for an unregistered service mark, a mark used to
promote or brand services)

® (the letter "R" bounded by a circle, for a recorded symbol)

Styles:

A trademark is naturally a name, word, phrase, logo, sign, design, image, or a mixture of these
elements. There is also a range of non-conventional trademarks including marks which do not
fall into these typical categories, such as those based on colour, smell, or sound (like tinkles).
Symbols which are measured offensive are often rejected according to a nation's trademark law.

The term trademark is also used informally to refer to any unique attribute by which an separate
is readily identified, such as the well-known features of celebrities. When a symbol is used in
relation to services rather than products, it may sometimes be called a service mark, mainly in
the United States.
Fundamental concepts:

The vital function of a trademark is to wholly identify the saleable source or origin of products or
services, so a logo, correctly called, shows source or serves as a symbol of origin. The use of a
logo in this way is known as trademark use. Certain limited rights attach to a listed mark.

Trademark rights generally arise out of the use of, or to maintain exclusive rights over, that sign
in relation to certain products or services, assuming there are no other trademark objections.

Different product and services are classified by the International (Nice) Classification {of
product|of products} and Services into forty five Trademark categories (1 to thirty four cowl
goods, and 35 to 45 cover services). The idea behind this system is to stipulate and limit the
extension of the intelligent property right by determining which goods or services are bounded
by the mark, and to unify organization systems around the world.

Symbols:

The two signs connected with emblems, ™ (the trademark symbol) and ® (the listed trademark
symbol), represent the standing of a mark and so its level of protection.

While ™ can be used with any joint law usage of a mark, ® may only be used by the owner of a
mark subsequent registration with the relevant national specialist, such as the U.S. Patent and
Trademark Office (USPTO or PTO). The proper way to display either symbol is directly
following the mark in superscript style.

Different types of trademark:

 Conventional Trademarks.
It include letters, numerals, words, pictures.

 Unconventional trademarks.
1. Color trademarks.
2. Sound marks
3. Packaging trademarks
4. Holograms
5. Shape of goods.
Color Trademark:

a. Single Color

Very uncommon and rare in trade and can be documented by dealers and clients.

Eg. Purple color of Cadbury in chocolate goods class.

b. Combination of colors

Depends on exclusivity and what they are applied to.

Sound Marks:

Trademark may consists of a sound and signified by a series of musical notes with or without
words.Eg. Musical tone of Kingfisher.

Holograms:

If holograms are capable of distinguishing the goods or

services of one responsibility from those of other undertaking and are capable of representing
graphically then they can be used as trademarks.

Shape of goods:

Shape can also be used as symbol if it can be signified clearly. But there are confident cases
where shape cannot be used as trademark

1. Shape results from nature of goods itself.

2. Shape necessary to obtain a technical result.

3. Shape which gives substantial value to goods.

Registration:

The law considers a symbol to be a form of property. Branded rights in relation to a trademark
may be recognized through actual use in the market, or through recording of the mark with the
trademarks office (or "trademarks registry") of a particular power. In some controls, trademark
rights can be established through either or both means. Certain powers usually do not recognize
trademarks rights arising complete use. If trademark owners do not hold processes for their
marks in such authorities, the extent to which they will be able to apply their rights through
trademark infringement records will therefore be limited. In cases of dispute, this disparity of
rights is often referred to as "first to file" as different to "first to use." Other countries such as
Germany offer a partial amount of common law rights for unregistered marks where to gain
shield, the goods or services must inhabit a highly significant position in the marketplace —
where this could be 40% or more market share for sales in the specific class of goods or
facilities.

In the United States, the registration process includes several steps This review includes
procedural matters such as making sure the applicant's goods or services are identified properly.
It also includes more substantive matters such as making sure the applicant's mark is not merely
descriptive or likely to cause confusion with a pre-existing applied-for or registered mark. If the
application runs afoul of any requirement, the examining attorney will issue an office action
requiring the applicant to address certain issues or refusals prior to registration of the mark. If the
examining attorney approves the application, it will be "published for opposition." Throughout
this 30-day period third parties who may be pretentious by the registration of the trademark may
step forward to file an Antagonism Proceeding to stop the registering of the mark. If an Hostility
proceeding is filed it institutes a case before the Trademark Trial and Appeal Board to determine
both the validity of the lands for the hostility as well as the ability of the applicant to register the
mark at matter. Finally, provided that no third-party opposes the registration of the mark during
the opposition period or the opposition is ultimately decided in the applicant's favor the mark
will be registered in due course.

While trade marks as a concept have been intertwined in civilisation for quite some time, with
traders and merchants using unique symbols to indicate their products separate from their
competitors, it has only between in the last 200 years that clear rules and guidance has been
given.Merchandise Marks Act 1862- this was the first Act of Parliament that specifically made
copying another person’s merchant mark for personal gain a criminal offence.

Trade Marks Registration Act 1875- created a system of formal registration for trade marks with
the records held at the UK Patent Office.

The 1875 act also changed the definition of a trade mark. The new definition was "a device, or
mark, or name of an individual or firm printed in some particular and distinctive manner; or a
written signature or copy of a written signature of an individual or firm; or a distinctive label or
ticket"Following the creation of the formal registration system, January 1st 1876- the first trade
mark was registered by Bass Brewery.

Patents and Trade Marks Act 1883- This act again revived trade mark law by reducing
application cost and expanding the scope allowing ‘fancy words not in common use’ to be
registered.

Maintaining rights:
Trademarks rights must be upheld throughh actual lawful use of the brand. These rights will
cease if a mark is not actively used for a period of time, normally 5 years in most influences. In
the case of a trademark registration, letdown to actively use the mark in the legal course of trade,
or to impose the registration in the event of breach, may also expose the registration itself to
become liable for an request for the exclusion from the register after a certain period of time on
the grounds of "non-use".

It is not essential for a symbol owner to take implementation action against all infringement if it
can be shown that the owner apparent the infringement to be minor and petty. This is designed to
prevent owners from continually being tied up in litigation for fear of cancellation. An owner can
at any time begin action for infringement against a third party as long as it had not before
notified the third party of its dissatisfaction following third party use and then failed to take act
within a sensible period of time (called acquiescence). The owner can always reserve the right to
take lawful action until a court chooses that the third party had increased notoriety which the
owner 'must' have been alert of. It will be for the third party to prove their use of the mark is
considerable as it is the onus of a company using a mark to check they are not invading
previously listed rights. In the US, owing to the irresistible number of unregistered rights,
trademark applicants are advised to perform searches not just of the trademark register but of
local business almanacks and relevant trade press. Dedicated search companies perform such
tasks past to application.

All authorities with a mature trademark registration system provide a device for removal in the
occasion of such non use, which is usually a period of either three or five years. The meaning to
use a trademark can be proven by a wide range of acts as shown in the "Wooly Bull" and Aston v
Harlee cases.

In the U.S., failure to use a symbol for this period of time will result in desertion of the mark,
whereby any party may use the mark. An wild mark is not irrevocably in the public domain, but
may in its place be re-registered by any party which has re-established select and active use, and
must be related or linked with the original mark owner. A mark is listed in combination with a
account of a specific type of goods, and if the party uses the mark but in unification with a
different type of goods, the mark may still be careful uncontrolled, as was the case in Lens.com,
Inc. v. 1-800 Contacts, Inc. If a court rules that a trademark has become "generic" through
common use (such that the mark no longer performs the essential trademark function and the
average consumer no longer reflects that select rights attach to it), the conforming registration
may also be ruled illegal.
Advantages:

In regards to the trademark symbols getting used like “TM” (trademark), “SM” (service mark) or
“®”, they need totally different uses. The “TM” and “SM” may be wont to claim the possession
of a product or service even while not registration to the USPTO. The registration image “®”
will solely be used when the trademark is registered with success to the USPTO.

Besides, trademark owner even have another vital blessings. most significantly, it'll facilitate the
owner defend their mark from getting used by competitors, even once that's an identical mark to
the mark registered. USPTO additionally states that if there's any party making an attempt to use
the trademark, the owner will take legal actions against that party in tribunal and claim charges
counting on the case.

Once an organization has the trademark possession, it'll have perquisite to use it nationwide and
for all the merchandise that area unit listed within the registration. additionally, the mark are
listed within the USPTO’s on-line databases and if there's any similar mark to the registered
mark for connected merchandise, the new registration are refused. Mark Trademan additionally
aforesaid within the Trademark data Network’s video podcast that trademark will last forever as
long because it is getting used, merchandise area unit still being factory-made and sold-out on
the market.

Disadvantages:

On the opposite hand, trademark registration additionally has some disadvantages for the owner.
within the article “Emulation: Right or Wrong?” revealed by SAM Pettus in 2000, he mentioned
some disadvantages of trademark protection. Firstly, the owner can ought to show proof of use at
regular intervals, the primary submission is between 5-6 years when registration, the second is
five years later and each ten years thenceforth. If the owner don’t file these documents on time, it
could lead on to the loss of trademark. The trademark is additionally represented because the
weakest variety of property protection because it protects simply promoting ideas and not
continuously product itself. Therefore, trademark ought to go together with different property
rights like patent. Another disadvantage for trademark house owners is that they're going to
ought to pay fee for registration and renewal. The fee depends on the quantity of categories of
merchandise that area unit coated within the application and a few a lot of extra fees.

History:

In trademark treatises it's sometimes rumored that blacksmiths World Health Organization
created swords within the empire area unit thought of as being the primary users of logos.Other
notable logos that are used for a protracted time embody Löwenbräu, that claims use of its lion
mark since 1383.The first trademark legislation was glided by the Parliament of England beneath
the reign of King Henry III in 1266, that needed all bakers to use a particular mark for the bread
they oversubscribed.

The first trendy trademark laws emerged within the late nineteenth century. In France the
primary comprehensive trademark system within the world was passed into law in 1857 with the
"Manufacture and merchandise Mark Act". In Britain, the Merchandise Marks Act 1862 created
it a criminal offence to imitate another's trade mark 'with intent to swindle or to change another
to defraud'. In 1875, the Trade Marks Registration Act was passed that allowed formal
registration of trade marks at the united kingdom agency for the primary time. Registration was
thought-about to comprise clear proof of possession of a trade mark and registration of marks
began on one January 1876. The 1875 Act outlined a registrable trade mark as 'a device, or mark,
or name of a personal or firm written in some specific and distinctive manner; or a written
signature or copy of a written signature of a personal or firm; or a particular label or ticket'.

In the us, Congress initial tried to ascertain a federal trademark regime in 1870. This statute
imagined to be associate degree exercise of Congress' Copyright Clause powers. However, the
Supreme Court affected down the 1870 statute within the Trade-Mark Cases anon within the
decade. In 1881, Congress passed a replacement trademark act, now consistent to its Commerce
Clause powers. Congress revised the Trademark Act in 1905.The Lanham Act of 1946 updated
the law and has served, with many amendments, because the primary federal law on logos.

The Trade Marks Act 1938 within the uk got wind of the primary registration system supported
the “intent-to-use” principle. The Act additionally established associate degree application
business procedure and enlarged the rights of the trademark holder to incorporate the riddance of
trademark use even in cases wherever confusion remained unlikely. This Act served as a model
for similar legislation elsewhere

Trademark Infringement:

Trademark infringement is that the unauthorized use of a trademark or service mark (or a well
similar mark) on competitory or connected merchandise and services. The success of a legal
proceeding to prevent the infringement activates whether or not the defendant's use causes a
probability of confusion within the average client.

When infringement happens, a trademark owner (the plaintiff) might file a legal proceeding
against the infringing user of identical or similar mark (the defendant) to forestall more use of the
mark and collect cash damages for the wrongful use. associate infringement action could also be
brought in state court or in judicature if the mark in question is protected beneath the Lanham
Act, that applies to each registered and unregistered marks that square measure utilized in
commerce that Congress might regulate.

The success of associate infringement usually activates whether or not the defendant’s use causes
a probability of confusion and then weakens the worth of the plaintiff’s mark. A mark needn't be
just like one already in use to infringe upon the owner’s rights. If the planned mark is analogous
enough to the sooner mark to risk confusing the common client, its use might represent
infringement if the services or merchandise on that the 2 marks square measure used square
measure associated with every other—that is, they share identical market. For additional on the
standards of confusion see the articles and queries, below.

Example of trademarks infringement cases:

 South Korea: Louis Vuitton v. Louis Vuiton Dak

 In one of the more shocking examples of international trademark infringement, a South

Korean fried chicken restaurant recently lost a trademark battle with designer Louis
Vuitton. The court ruled in the designer's favor after determining that the restaurant's
name of Louis Vuiton Dak was too similar to Louis Vuitton. In addition to the name
infringement, the restaurant's logo and packaging closely mirrored the designer's iconic
imagery.
 The restaurant was ultimately hit with another 14.5 million fine for non-compliance, after
changing their name immediately after the first ruling to LOUISVUI TONDAK. Many
brands can avoid similarly expensive legal battles by avoiding mirroring their brand
closely after another, even if the products and purchase channels have nothing in
common.

Verdict in Favor of Louis Vuitton

 China: 3M v. 3N

 A lawsuit by The 3M company against Changzhou Huawei Advanced Material Co Ltd

for the use of 3N resulted in a win for 3M and "significant damages" for 3M. It was
 ultimately ruled that, despite some dissimilarities in products and pricing, the notoriety of
the 3M mark and the fact that 3N had managed to acquire clients and market share by use
of the similar mark, constituted infringement.

 One analysis notes this can be indicative of trademark case results in Chinese courts,
where these matters are taken "seriously." While this particular case was complex and
confusing, 3N definitely veered into dangerous zones by emulating the trademarked
named of such a well-known brand. It was ultimately held that the "3M" trademark had a
high distinctiveness and reputation.

Verdict in Favor of 3M.

 US: D2 Holdings v. House of Cards

 Massachusetts-based D2 holdings recently filed a lawsuit against MRC II Distribution

company, the brand behind the Netflix hit political thriller House of Cards. D2 has
held the trademark for House of Cards for "entertainment goods and services" since
2009, which has been licensed to a gaming radio show distributed by Granary Media.
MRC reportedly filed for a trademark for House of Cards multiple times for the show
which premiered in 2013 and has now been renewed for a fifth season.

 D2's lawsuit asks for multiple types of infringement to cease, including fan
merchandise and gaming machines. It's likely that MRC was aware that D2 held the
trademark, based on their repeated failure to obtain a trademark through the U.S.
Patent and Trademark Office. The failure could be in the distribution company's
decision to change the show's title, based on their inability to obtain a trademark.

 US: Adidas v. Forever21

 Adidas very recently filed a lawsuit against clothing retailer Forever21 alleging that
the retailer's products, which contain a "three stripe" design, constitute "counterfeit
products." Adidas reports they have "invested millions" to build and protect the three-
stripe design as a trademark component of their brand and own "numerous" patents.
 While representatives for Adidas and Forever21 have not released further comments
in regards to the lawsuit since initial statements, it remains to be seen how the courts
will respond to the lawsuit. Given the similarity of Forever21 and Adidas' products
and distribution channels, Forever21 may have been able to avoid this lawsuit by
evaluating their recent designs against Adidas' products and trademarks.

 Adidas has agreed to an out-of-court settlement in a recent trademark case arising

from the brands' long-term disputes concerning Adidas' allegations that Forever21 is
wrongfully using the registered "three stripe" mark.

References:
https://en.wikipedia.org/wiki/Trademark
https://www.investopedia.com/terms/t/trademark.asp
https://www.minclaw.com/legal-resource-center/what-is-trademark-infringement/
https://www.trademarknow.com/blog/9-nasty-trademark-infringement-cases-and-how-to-
avoid-them
http://businessinsides.com/trademark-advantages-disadvantages.html