Sunday, July 15, 2012

Passing off in Indian Trademarks

The passing off action depends upon the principle that nobody has a right to represent his goods as the goods of somebody. In other words a man is not to sell his goods or services under the pretence that they are those of another person. Passing off is not defined in the Act. It is referred to in section 27(2), 134(1) (c) and 135.Section 27(2) states that the rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof. Section 134(1) (c) refers to injunction of courts to try suits for passing off arising out of the use of any trade mark. Section 135 specifies the remedies available in respect of passing off arising from the use of a trademark.[1] Now the question is arise that why passing off is necessary because already trademark given the protection to goods and services? The Trademark is providing protection to registered goods and services, but the passing off action is providing a protection to unregistered goods and services. The most important point is that the remedy is same in both the cases but the Trademark is available to only the registered goods and services and passing off is available to unregistered goods and services. To more knowledge of this context we can summaries the case of Durga Dutt vs. Navaratna Pharmaceutical[2]; in this case the Supreme Court is set out the distinction between infringement and passing off. The action for infringement is a statutory remedy conferred on the registered owner of a registered Trade mark and has an exclusive right to the use of the trade mark in relation to those goods. And the passing off is available to the unregistered goods and services. The second most important point is that the use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but in the case of an action for infringement this will not applicable. The third important distinction between these two is that if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale marked differences or indicate clearly a trade origin different from that of the registered owner of the mark would be immaterial; but in case of passing off the defendant may escape liability if he can show that the added matter is sufficiently to distinguish his goods from those of the plaintiff.[3] In the cases of infringement the burden is always lies to the plaintiff. In the case of S.M. Dyechem Ltd. v. Cadbury (India) Ltd.[4] In this case an infringement action is fail where plaintiff cannot prove registration or that its registration extends to the goods or to all the goods in question or because the registration is invalid and yet the plaintiff may show that by imitating the mark otherwise, the defendant has done what is calculated to pass off his goods as those plaintiff. What the plaintiff must establish in a passing off action? It is essential for success in a passing off action based on the use of a mark or get up that the plaintiff should show that the disputed mark or get up has become by user distinctive of the plaintiff’s goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trade and the public as indicating the plaintiff’s goods.[5] When the passing off arise? The passing off action is arise when there is misrepresentation, when it is harm the existence plaintiff’s goodwill, when it is made by a trader in the course of trade, which is injure the business of another trader and which cause actual damage to the business or goodwill of the trader by the whom action is brought.[6] But these requirements were reduced to three in Reckitt & Colman Products Ltd. V. Borden Inc.[7] now there are three essential requirements for the passing off action: v The Claimant’s Goodwill: Although damage is the gist of an action for passing off, but the plaintiff must show that there is a reasonable reason of his being injured by the defendant’s action, even if the conduct of the defendant might be calculated to deceive the public. A private individual cannot institute a suit for passing off even if the defendant practices deception upon the public, unless it is proved that the defendant’s action is likely to cause damage to the individual. v Misrepresentation: Misrepresentation in the simplest form of passing off. If A says falsely these goods I am selling are B’s goods. It is a clear case of passing off. In simple way we can say that misrepresentation should lead. Or be likely to lead confusion on the part of consumers. In case of Khemraj v. Garg[8], in this case the defendants had copied the get up, layout, design and colour scheme, etc. and the name “manavpanchang,mani ram panchang” and “shri vallabh Mani Ram panchang” of the plaintiff’s panchang.The court held that it is similar to the plaintiff’s product and Interim injunction was granted. In the case of Rupa & Co. Ltd v. Dawn Mills Co. Ltd.[9] In this case the defendant manufacture an underwear which named dawn as similar to the plaintiff’s manufactured underwear don, which is creating confusion in the minds of people because the layout, get up and colour combination is same to the plaintiff’s product. v Damage: Damages are available in a passing off action. And remedy is available in both cases whether the infringement suit or passing off action in both the cases remedy is given. Now the question of how the passing off action arises? The question of how the passing off action established. I just referred the two cases first case is relating to passing off action in domain name in this regard I just refer the case of Akash Arora vs. Yahoo Inc[10], in this case the court held that the yahooindia is creating a confusion in the mind of the people. And the defendant yahooindia is same as the plaintiff’s yahoo. But as a student of law I am not go with the case decision because my views regarding to the case is that his site may be better than his competitors. And second important thing is that those who access the Internet they are capable to distinguish which site is yahoo. in and which one is yahooindia.So the question of confusion is not create when the people are able to distinguish between the sites then there will be no question of passing off arise. The second case In Reckitt & Colman of India Ltd. vs. M.P. Ramachandran & Anr[11], Hon’ble Calcutta High Court (Barin Ghosh, J.) laid down five principles for granting an injunction in case of comparative advertising: i. A tradesman is entitled to declare his goods to be best in the world even though the declaration is untrue; ii. He can also say that his goods are better than his competitors, even though such statement is untrue; iii. For the purpose of saying that his goods are the best in the world or his goods are better than his competitors he can even compare the advantages of his goods over the goods of others; iv. He however, cannot, while saying that his goods are better than his competitors, say that his competitor’s goods are bad. If he says so, he really slanders the goods of his competitors and their goods, which is not permissible. v. If there is no defamation to the goods or to the manufacturer of such goods no action lies, but if there is such defamation an action lies and if an action lies for recovery of damages for defamation, then the court is also competent to grant an order of injunction restraining repetition of such defamation. The Hon’ble court also observed in this case that “One can boast about technological superiority of his product and while doing so can also compare the advantages of his product with those which are available in the market. He can also say that the technology of the products available in the market has become old or obsolete. He can further add that the new technology available to him is far more superior to the known technology, but he cannot say that the known technology is bad and harmful or that the product made with the known technology is bad and harmful. What he can claim is only that his product and his technology is superior. While comparing the technology and the products manufactured on the basis thereof, he can say that by reason of the new superior technology available to him, his product is much superior to others. He cannot, however while so comparing say that the available technology and the products made in accordance therewith are bad and harmful.” CONCLUSION In the conclusion the researcher concludes that the passing off action is applied in unregistered goods and services, and in infringement of suit and passing off in both the cases the remedy will be same. Then the passing off is arise in three cases first when it is injured the claimants good will, secondly in misrepresentation and thirdly in damages, where the position is same like in infringement suit. And lastly when the concept of passing off is reading with domain name and technological changes then the concept of passing off is in different dimension. From the Desk of Daniel & Boaz Helpline:- 9840787702.

Thursday, February 2, 2012

Why to register your Trademark

A trademark is an important legal document that any inventor will want to complete. Registering trademarks goes back almost over one hundred years. There are a number of reasons you would want to take the time to register a trademark. The first reason being the protection of a valuable asset, this is probably the most important reason behind registering a trademark. This preserves your rights re: the creator and owner of said trademark. This also helps with the second reason to file a trademark - to fend off other people who would want to nip at your heels of your creation. Usually competitors, distributors or other thieves look to steal ideas and items from people. A registered trademark can protect you from this.

Now sometimes a trademark can be misappropriated by mistake or coincidence. This is why the registration exists to keep these other people from infringing on your ideas. The third reason behind the trademark registration is the prevention of dilution. A trademark can become diluted when other companies and businesses all use the same style constantly. In a market where your consumer is constantly exposed to similar trademarks all of which are just about the same tend to lessen your own trademark's impact and sales diminish in the market.

The fourth reason spins out of the third with the potential loss of goodwill. A copied trademark can lead to mistrust in the marketplace. By whatever means most of the time a similar or copied trademark is not as high quality as your own. This is where cheap imitations come from in the open market. These imitations can sometimes confuse the consumer and your own trademark becomes known for the quality of the copied and imitated ones. This is the number one cause of loss of goods and sales in the marketplace today.

You can also register a trademark as a defensive measure. This is the act of registering your trademark outside of the United States. This prevents your trademark being used or copied outside of the confines of your home country.

The final reason anyone would want to register a trademark is for licensing purposes. This is how you gauge the value of your trademark. Other than being a tangible good which can be bought or sold, a trademark can also be an idea that can be licensed to other companies for their own use and sale. This is how most companies make their money from their trademarks by licensing them to other companies for production and sale.

From TEAM Daniel & Boaz
Helpline:- 9840787702

Protect your Brand

Irrespective of what your business or enterprise produces, whether it be toy cars, burgers, specialist equipment for the medical industry or sophisticated software applications, it is essential that you protect your intellectual and physical property through a process of brand protection. In an ever competitive marketplace, many businesses are fighting for a smaller chunk of the pie. Grabbing the attention of consumers is becoming increasingly difficult as more companies and suppliers enter the marketplace and actively compete for customers. Innovation in the delivery of products and services is seen by many as the key to gaining market share and increasing profitability.

However, there are other companies that simply aim to replicate the actions of leading and innovative companies to produce 'me-too' products, which are usually inferior in quality, functionality and design. Without the proper brand protection in place, your customers may end up utilising the services or purchasing products of one of these 'me-too' companies. Furthermore, the products being imitated or copied are usually made at a much cheaper cost, meaning the quality of the product is inferior to the original. This may have a negative impact upon the business as perceptions of the quality of the product may be passed onto your company. The end result could be less desirability in the marketplace, culminating in reduced sales and profitability.

A classic example in the modern economy is the near endless copying of Apple products by companies located in countries where the copyright laws are somewhat relaxed. Since the launch of the very popular iPhone and iPad, there have been literally hundreds of copied products on the market. They even look like the real deal, but unfortunately, they are cheap copies that do not even compare to the original product in relation to quality, functionality, connectedness and value. So how does Apple still sell millions of their products each and every year? The answer is simple... through the use of trademark registration and brand protection. Apple has invested a paramount figure into the development of their products and brand, and through the use of trademark protection and intellectual property registrations, has effectively promoted and protected the brand itself. Now people don't simply want a mobile phone with advanced interconnectivity options, they want an Apple.

No matter what industry you or your business are in, or current size of operation, it is essential that you afford yourself the appropriate level of protection in the marketplace. You wouldn't buy a Ferrari and have it unprotected? So why would you do this for your business, when there are available options for brand protection.

From TEAM Daniel & Boaz
Helpline:- +919962999008

The Benefits of Registering a Trademark

A trademark is a sign or logo used to distinguish goods and services of one company from another. It can be described as a brand identity for a specific individual or company in the market place and must be unique and distinguishable. It is vital for a company or individual to have a registered trademark so that competitors in the market are unable to exploit their brand identity, this is known as "passing off".

Benefits of Registering a Trademark

The main advantage of registering your trademark is to obtain a set of exclusive rights that are applicable to the mark owner only. In addition, registering your mark ensures that it is protected from unauthorized use by any third party or competitor.

In the case that a third party does use your mark without your authorization, you can seek the appropriate legal action in court. Essentially, trademark registration provides the owner with unlimited protection from cases of passing off and infringement of intellectual property rights.

Furthermore, it helps companies to create enhanced brand awareness in all countries the mark is registered in. Effective marketing will enable customers to recognize and associate the mark with the company products resulting in increased customer loyalty.

Trademark Registries

Trademark registration must be sought from the relevant intellectual property registry in your selected country of registration, thus ensuring your trademark rights are protected in all jurisdictions where you use the mark commercially.

The two main IPO's for multiple jurisdiction registration are the following;

Office for Harmonization of the Internal Market (OHIM): is the registry which monitors and issues approvals for registration across all 27 member states in Europe.

World Intellectual Property License (WIPO): is the registry that monitors the protection of trademarks and issues registration certificates for marks which meet the applicable WIPO standards.

The process to acquire a registered trademark is quite complex thus it is advised to seek the assistance of experienced consultants or attorneys who specialize in trademark registration.

How to Register a Trademark

1. Seek a professional and unique design

The process of registering a trademark is relatively easy with the guidance of a professional firm. The first step in registering is to design the mark. Your mark be unique and must not resemble any other existing trademarks, while also being capable of graphical representation.

2. Determine your jurisdictions for registration

You must then decide which jurisdictions are appropriate to register the trademark in. If the mark is to be deployed in only one jurisdiction, only the regulations and requirements of that country's specific intellectual property office will apply. Essentially most companies wish to register their trademark in more than one jurisdiction to obtain greater intellectual property protection, it's why many opt to go through WIPO or OHIM.

3. Perform a thorough search

The main concern and issue that most companies face is duplication of existing trademarks. In order to make sure that your company's mark is unique and distinct, a thorough search must be conducted. This will enable the company to determine whether their mark is already in use or similar to one which already exists.

4. Publish your trademark registration

Generally, the applicable intellectual property registry will conduct their own search to validate if the trademark is available or not. Once approved, the mark is published in an official publication or 'gazette' for a specified period of time in order to give the trademark the chance to be opposed by third parties.

5. Make an Appeal

In some cases, even if the trademark is not granted registration, a company is able to make an appeal on the decision of rejection in a bid to seek final approval for registration.

From TEAM Daniel & Boaz
Helpline:- 9840787702

Friday, January 20, 2012

Intro to Trade Mark Registration

A trademark is a sign or combination of signs that distinguish goods or services of one person or enterprise from those of another[1]. Its origin dates back to ancient times, when craftsmen reproduced their signatures, or "marks" on their artistic or utilitarian products.

The first trademark law in India was passed in the year 1940 and was known as the Trade Marks Act, 1940. This law was subsequently replaced by the Trade and Merchandise Act, 1958. Thereafter the Government of India amended this Act in order to bring the Indian trademark law in compliance with its TRIPS obligations. The new Act that was passed was the Trade Marks Act, 1999. This Act came into force in the year 2003. The Trade Marks Act, 1999 and the Trade Marks Rules, 2002, presently govern the trademark law in India.

The trademark law in India is a ‘first-to-file’ system that requires no evidence of prior use of the mark in commerce. A trademark application can be filed on a ‘proposed to be used or intent-to-use’ basis or based on use of the mark in commerce. The term ‘use’ under The Trade Marks Act, 1999 has acquired a broad meaning and does not necessarily mean the physical presence of the goods in India. Presence of the trademark on the Internet and publication in international magazines and journals having circulation in India are also considered as use in India. One of the first landmark judgments in this regard is the “Whirlpool case” [N. R. Dongre v. Whirlpool Corporation 1996 (16) PTC 583] in which the Court held that a rights holder can maintain a passing off action against an infringer on the basis of the trans-border reputation of its trademarks and that the actual presence of the goods or the actual use of the mark in India is not mandatory. It would suffice if the rights holder has attained reputation and goodwill in respect of the mark in India through advertisements or other means. Another judgment in this regard by the Supreme Court of India is of Milmet Oftho Industries & Ors. v. Allergan, Inc. (2006 (32) PTC 495), in which the court confirmed an order of interlocutory injunction restraining an Indian company from using the trademark Ocuflox and stating that “the mere fact that the Respondents have not been using the mark in India is irrelevant if they were first in the world market”. The interim injunction was therefore not vacated by the Court despite the fact that Allergan, Inc. neither made any use of the mark Ocuflox in India nor was their trademark registered in India. Subsequently, the Calcutta High Court decreed the suit in favor of Allergan, Inc. and against Milmet Oftho Industries who was restrained from using the trademark Ocuflox.

A trademark registration in India gives exclusive proprietary rights to the rights holder for protection of their trademark in India. However as the Indian legal system is based on the common law system, even an unregistered trademark is entitled to protection and the rights holder of the unregistered trademark can initiate action against a third party under the law of passing off.

Daniel & Boaz
Chennai Trademark Law firm
Trademark registration for Tamilnadu, Andhra Pradesh, Kerala, Karnataka, Pondicherry & Lakshadeep is done in the Chennai Trade Mark Registry. We offers free trademark search.
TEL:- 9840787702

Registering Trade Mark

A mark can be protected even before filing an application. As soon as you use your mark anywhere (such as on a diskette), put the “tm”, or in the case of services, the “sm” insignia immediately after your mark. You can find examples of this almost anywhere, such as on the cover of this magazine. By using the “tm” or “sm”, you put the world on notice that you are using this mark in your trade, and that unauthorized use of this mark can lead to infringement liability.
If you have a mark, it is probably time to think about registering it as soon as possible. Registering a trademark is not a very cumbersome task. Usually, just filing a trademark application is all that is required. The application process consists of a few steps. Filling out the application is fairly easy, but it is very important to specify, as accurately as possible, the nature of the goods or services. Since the Trademark Registry will use this description in determining the extent of your mark’s protection, as well as what class or classes the mark will be placed in, it is necessary to describe your goods or services definitively, since the description can not be added to after it’s submitted. The failure to accurately describe your goods or services will limit the protection the Trademark Registry affords you.
In determining what class your program should belong in, you may choose from the list of classes, or you may let the Trademark Registry choose for you (which would probably be easier). Another consideration is the fee. The fee is Rs.3,500/- per class, so you should be careful how many classes you choose to seek protection under. You must include at least Rs.3,500/- with the application, and if the Trademark Registry determines that your work should be included in more than one class, they will inform you and give you the option of paying the additional fee for the other classes. Finally, you will need to send samples of the mark to the Trademark Registry, which will be used as proof for your mark.
After you have submitted the application, it could take over a year before the Trademark Registry approves your trademark. When your application is received, the Trademark Registry will first look to see if someone else is using your mark in the same class in which your program will be classified. Since fees are non refundable, it might be a wise investment to have a trademark search done first, before spending the additional time and money trying to register your mark, only to find out that it is already being used. Next, the Trademark Registry will publish your application in their gazette, which allows anyone to file a claim against your mark. Whether there is a claim against your mark will determine the length of the registration period.
What do you do if your not ready to sell your program even though you have a name for it? The trademark laws will still allow you to file an application based on an intent to use your mark later. The application and fees are basically the same, however there is no need to submit the examples until your ready to actually put your program on the market. The process at the Trademark Registry is also the same, but instead of getting a certificate of registration, you will receive a notice which allows you six months to use the mark in commerce, or file for an extension of time. Once you have been given your trademark registration, you may then replace the “tm” or “sm” with the “®”. Finally, trademarks are renewable indefinitely in ten year increments if the owner certifies that the mark is still being used in commerce, or at least it has not been abandoned. During the first ten year period, the owner will have to file an affidavit showing his or her continued use of the mark. Of course, there is a fee for this as well.
Daniel & Boaz
Chennai Trademark Law firm
Trademark registration for Tamilnadu, Andhra Pradesh, Kerala, Karnataka, Pondicherry & Lakshadeep is done in the Chennai Trade Mark Registry. We offers free seach for Trademark in India.
TEL:- 9840787702