Category Archive Trademark & Copyright Law Guide

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Types of trademark units in India

Trademarks in India can be registered in different forms like word mark, label, logo and device mark. One of the toughest decisions to make for one before registering a trademark is whether to register the mark as a word mark or as a logo.
 

Word Mark

This simplest of the three, the word mark refers to the brand name for example Reliance or Parle has trademarked only the word, it is known as a word mark. A word mark registers the word itself. Once a trademark is registered for a word mark, the applicant has the right to use and represent the word in any format or font which grants it wider protection including exclusive rights to the word as a whole and depict it in various formats regardless of its style for all the goods and services in respect of the mark.
 

Logo

A logo on the other hand gives one the rights in the combination of images, design and words taken together. For example, Apple, Mercedes etc. If your business logo is easily recognized by the customers, you would want to file a trademark for that logo.
The protection given to the words in a logo mark are limited when compared with the standard word marks since the rights in a logo are only valid as a whole. So if one wishes to register a particular designed appearance or a combination of stylized words and design, filing a trademark as a logo would be appropriate.
 

Logo Composite Mark

Usually a brand name of a business constitutes both of words and logos for example Levi’s has an elaborate logo composite mark, which includes even the position of its label on the back of its jeans. And the best way to protect the intellectual property in such cases would be to file the trademark as both as a word mark and as a logo. However, since filing multiple trademark applications is an expensive affair, it would be best to register the trademark as a word mark.
 
A separate trademark application for word as well as logo should be filed to attain the broadest protection. But it may not be very economical for startup businesses. Hence, it is advisable to file the trademark as a word mark, giving one the next broadest protection against infringers.

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Trade Mark : Importance and Procedure for Registration

Your brand name or your company name is nothing less than your business’s identity. “Trademark” is just another way of referring to a brand. Nowadays, consumers base their decisions on the brand names and their reputation for buying a product or a service. Brand names add value to the business and have become a means to communicate with the consumers at large.

What if your competitor in the market uses a similar brand name and steals a part of your customer base duping them into believing that the products or services offered by them are the same as you?  It would not only harm your business but is also a legal wrong.

Various companies especially start-ups or small-medium enterprises forget to register their trademarks. One of the major reasons is the misconception that registering a company or buying a domain name would be enough to keep the competitors out of line. Another is the fact that they believe incurring cost on such a thing can be kept for a time when they face a legal trouble.
 

Importance of Registering a Trade Mark

Here are a few reasons why registering a trademark is of high importance while running a business:
 

Identification

With the market place being crowded with loads of companies and brands it is difficult to distinguish. The best measure for attracting customers and to stand out is by having a unique trademark for your brand and to build your business’s reputation over it.
 

Everlasting

Trademarks do not come with an expiry date. Once a trademark is registered, it can be renewed every ten years and shall last as long as your brand stay or even more!
 

Protection

It is primary to ensure that your brand is protected against competition. If the brand you are working to build for so long has already been registered as a trademark by someone; you lose not only your business but also the privilege to exclude others from using the trademark. Securing registration of your trademark shall protect your brand, and gives you the provision to prevent someone using similar signs and riding off the back of your business.
 

Cost-effective

Registration of a trademark is a one-time cost. The time period and process of registering a trademark has also been relatively reduced. It takes about 6 months to a year for processing the trademark application. Once the trademark is registered, it is valid for ten years after which it can be renewed timely paying a minimal cost every ten years.
 

Asset

A registered trademark is an asset for the business or the company and brings home goodwill. The value of the trademark grows with the growth of the business. A trademark can be sold, purchased or used as a security for obtaining a loan just like any other tangible asset.
 

Procedure for trademark registration

The procedure to register a trademark involves filing a trademark application, examination, publication or advertisement, opposition, registration and renewal. It is important to engage a trademark attorney for the process to make it easy and reliable.
 

Stage 1: Search for a trademark 

You must choose your trademark wisely. There are various different kinds of trademarks available. Once decided, it is important to conduct a public search on the trademarks database available on the on the online portal of the Trade Marks Registry to ensure that there isn’t another trademark which is either identical or similar to your trademark.

The search reveals the kind of trademarks already available in the market, either registered or unregistered. It also tells whether you have a competition for the same trademark.
 

Stage 2: Filing a Trade Mark application

An application for the registration of a trademark can be filed in multi-class or a single class depending on the goods and services the business deals with. Form TM-A is required to be filed either online through the IP India website or manually at the Trade Marks Office depending on the jurisdiction.
 
The trademark application has to be supported with various documents and a complete description of the trademark for which registration is sought. If you are claiming prior use in the trademark, then a user affidavit needs to be filed supporting the usage along with its evidence.    
 

Stage 3: Examination of the trademark application

After an application is filed, an examination report is issued by the Examiner after a thorough examination of the application in accordance with the provisions of the Trade Marks Act. The Examination report may reveal some objections either, relative, absolute or procedural. An examination report is issued within a month of having filed the application. A response to the same is needed to be filed within a month of receiving the report stating the arguments and evidence to waive off the objections, if any.
 

Stage 4: Post-examination          

After a response to the examination report is filed, the Examiner may appoint a hearing if he/she is not satisfied by the response filed or the objections are not met. After the hearing, the Examiner may accept the mark and forward the application for publication in the journal or reject the application.
 

Stage 5: Advertisement          

After accepting the application, the trademark is advertised and published in the Trade Marks Journal for a period of 4 months. The objective behind the same is to invite the public for filing an opposition against the registration of the mark. This Trade Marks Journal is available on the Registry’s website and is updated every Monday.
 

Stage 6: Opposition

After a trademark is advertised in the Journal, any aggrieved party can file a notice of opposition against the registration of the advertised trademark. The notice of opposition has to be filed vide Form TM-O within four months of the mark’s advertisement in the Journal. If the applied for mark is opposed, then the due process of law is followed which includes filing the counter-statement, evidence and hearing in order to get the mark registered.
 

Stage 7: Registration

This is the final step where the application proceeds to registration after overcoming the objection and/or the opposition against its registration. In case no one opposes the registration of the mark during the advertisement period, the mark is issued an automated registration certificate within a week’s time. The registration is valid for a period of ten years after which it needs to be renewed within a stipulated time period.

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How to reply to a cease and desist notice in Trademark Infringement case

What is a Cease and Desist Letter?

A cease and desist letter is a written communication, demanding the receiver “cease and desist” from actions that infringe the sender’s legal rights or ownership. Generally sent by an attorney or by a law firm, it threatens lawsuit if the alleged violation of the sender’s rights or ownership does not stop, and compensation for violations that have already taken place. It is important to note that it is not a legally binding, but merely a first step before a legal action.
Cease and desist letters are used in many different situations, but they are most often used in connection with alleged infringement of intellectual property rights, such as trademarks, copyrights, and patents. A typical cease and desist notice lays downs the details of the extent of violation or misuse of sender’s legal rights. It also outlines the requisitions to be complied by the infringer.

In what cases a cease and desist notice could be sent?

A cease and desist letters can be filled in many issues such as –
Infringement of IP rights (trademarks, patents, copyrights)
In defamation such as libel and slander
Breach of contract
For Debt collection

What to do when you receive a cease and desist notice?

Comply With It
The easiest and most cost-effective way of dealing with a cease and desist letter is to comply with it.  If the requested action is minor and will not disrupt your business, you may want to consider complying with the request.

Prepare a Response
Your response could be denying the claims with no explanation or denying the claims with a lengthy explanation, or suggesting negotiations to settle down the claims. If your claims are valid, you could also send your own cease and desist letter. You must address every point made and disprove all the unworthy points with credible evidences from your side.
In many cases, your lawyer would draft and also send the response on your behalf, so that the other side knows that you are working with a lawyer.

Try to Negotiate
Sometimes the best option would be to negotiate with the party that sent you the cease and desist letter. For example, if the letter alleges that you are infringing on a trademark right, you could try to negotiate a license that would allow you to continue using owner’s trademark with his permission.  While this cannot be applicable in all scenarios, negotiating can sometimes satisfy the needs of both parties and do away with expensive litigation.

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Intellectual property Rights in India

Intellectual property is a product of Human Intellect and thus it should be protected by the law.

There are two different forms in which Intellectual Property Laws can be categorised:

1. Literary and Artistic work which is regulated by the copyrights law and

2. Industrial Property which can be categorised under various laws, namely:

  • Patent Law
  • Trademark Law
  • Industrial Design Law
  • Layout Design Law
  • Geographical Indication Law
  • Plant Varieties and Farmers Rights Law
  • Biological Diversity Law

Majorly the following three types are the most essential lot of intellectual property:
 

Patents Act, 1970

A patent is described as an invention for which the inventor claims the exclusive right. The term Invention relates a process or product or both which involves an inventive step and it should be capable of Industrial Application. An invention can be patentable if it is new, useful, not obvious and pertains to patentable subject matter. Application for the same has to be filed in order to get the invention patented.

A patent can be obtained for a term of 20 years. Priority is given to the applicant who files for the patent first. The date of patent is the date of the application for patent. The applicant has to ensure payment of the patent fee for all years.

Apart from this patent rights are territorial in nature. It is possible that the invention doesn’t get patent in one country but does in the other one. Same applies for the grant of patent as well.

Trademark Act, 1999

A Trademark can be a symbol, logo, word, sound, color, design, or other device that is used to identify a business or a product in commerce.

TM is used as a symbol where intent is to use application filed for product.

SM is used as a symbol where intent is to use application filed for services.

R (within a circle) is used for Registered Trademark.

Here also application has to be filed first for search and then for registration, examination will be done, advertisement of trademark will be done, opposition will be filed and certificate will be issued pursuant to all the compliance.

Trademark is valid for 10 years and can b renewed further. Service Mark rights are reserved for 17 years.
 

Copyright Act, 1957

A Copyright is a right which grants protection to unique expression of Ideas. The work which is to be copyrighted should be original i.e. it should be originated with the author. Copyright protects the expression of an idea and not the idea itself. Literary works, Films, Dramatics, Musicals, Artistic work and Sound recordings are covered.

Application has to be filed to obtain the copyright for the work. The copyright lasts for Author’s lifetime + 50 years from the end of the calendar year in which the author dies, 50 years for films and sound recordings, 25 years for typographical arrangements of a published edition. It will expire on the 31st of December of the last calendar year of protection.

Infringements:

Any reproduction, use, distribution, performance, etc. of the work without permission of the owner is infringement of the owner’s right. Identical or substantial similarity is also covered. A suit can be filed against the same infringement. Punishments are up to 3 years.

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Defend Your Trademark

INTRODUCTION: 

A trademark is said to be infringed when a person, other than the registered proprietor, in the course of trade, in relation to the same good or services for which the mark is registered, user the same mark or a deceptively similar mark which is likely to cause confusion in the mind of the public or is like to cause impression of association of association with the registered trademark. 

The following are the types in which a trademark may be infringed:

  • DECEPTION OR CONFUSION AS TO GOODS: A person may buy the goods seeing a mark which he thinks belongs to a particular brand but it doesn’t. This is the most common type of confusion or deception.
  • DECEPTION OR CONFUSION AS TO TRADE ORIGIN: A person, by looking at a particular mark, may think that it is coming from the same source as some other goods bearing a similar mark which he is familiar with. The deception or confusion is with respect to the origin of the trade.
  • DECEPTION OF CONFUSION AS TO TRADE ORIGIN:Even though a person looking at the mark may not think that is the same as the one with a different brand in his mind, the similarity may make him believe that the two are connected in some way.

PASSING OFF OF TRADE MARK

This means that if one has a registered trademark and another sells goods or provides services under the same trademark without the permission of the first, there may be infringement of trademark. The law of passing off concerns unfair competition as in such a situation, the infringer benefits from the reputation of the origin associated with the registered trademark.

Passing off is a common law tort which can be used to enforce unregistered trademark rightswhere the second user an unregistered trademark of the first user and in doing so, misguides the public into thinking that the goods or services are being offered by the first. Passing off essentially occurs where the reputation of one business is misappropriated by the other party carrying on the same business, such that party B misrepresents the reputation and damages the goodwill of party A.

Second business by the infringer leads to:

  • Misleading the public into thinking that the infringer’s goods are associated with the first one;
  • Damages to the first one in terms of money and reputation.



WHO CAN SUE FOR INFRINGEMENT?

The following people are eligible to sue in case there is any passing off or infringement:

  • Proprietor of the trademark;
  • Legal successor/heirs of the proprietor;
  • A registered user, only when the registered user has sent a notice to the infringer and consequently failed to take any action;
  • If it’s a joint proprietorship, any of the proprietors
  • A foreign proprietor a trademark registered in India, and when infringement occurs in India

The action against passing off lies in instituting a suit which is often combined into a suit for infringement and passing off to claim reliefs.