Trade marks: India
Is it Trade Mark, Trademark or Trade-mark?
Brookes Batchellor/ BB-IP.com advises us:
Trade Mark, i.e. two separate words, is the correct way of spelling the term in most of the English-speaking world – on the basis that that is the usage in the legislation that sets out trade mark rights, e.g., in the UK, the Trade Marks Act 1994. The use of a single word, Trademark, is the correct in the USA and the Philippines .
Indpaedia adds: The Government of India has adopted the mainstream practice in, for example, The Trade Mark Rules, 2017. Indpaedia has followed suit.
This is a collection of articles archived for the excellence of their content. |
Contents |
The Trade Mark Rules, 2017
Sound marks
Lubna Kably | TNN. Jingles and chimes can make trademark noise, Mar 27, 2017, The Times of India
MUMBAI: Did you know that the National Stock Exchange's theme song is registered as a sound mark in India? The Trade Mark Rules, 2017, which were notified recently, have revised the procedures and made it easier for companies to file applications for registration of sound marks, by appending an MP3 file in the application.
Over the years, there have been only a handful of registrations of sound marks in India—the first being the 'Yahoo Yodel' of Yahoo Inc, which applied in 2004 for registration of the sound of a human voice yodelling the word 'Yahoo'. For a sound mark to be registered, the applicant needs to prove factual distinctiveness of the sound—in other words, there must be a recall of the sound with the product or service.
Sounds can be a corporate jingle (ICICI Bank) or the sound heard on logging into a device (Nokia). "In today's world, where people have access to various technologies, sound plays an important role in the marketing process. People associate goods or services with the sound which represents it," points out Vikrant Rana, managing partner, SS Rana & Co, an IP law firm. Shwetasree Majumder, co-founder, Fidus Law Chambers, agrees: "It takes brand recognition to another level. It paves the way for asserting a trademark even when you can't use a word or a logo in a setting. In businesses that are largely intangible, registration of sound marks is certainly of value". Traditionally, companies registered words, names, labels, acronyms, signatures with the trademark registry. Procedural challenges deterred many companies from registering sound marks. "Prior to notification of the revised rules on March 6, an application for registration of a sound mark required the applicant to submit its graphical representation, viz: musical notations and written description. As not many people can read music, this itself was an obstacle at all stages involved in the registration process—be it examination by the trade mark registrar or opposition to its registration," points out Rana.
The sound mark was published in the trademark journal as a graphical representation which not many people would understand and the registration certificate also consisted of the sound mark as a graphical representation, he adds.
"The new rules permit applicants to attach an MP3 sound track, together with graphical representation of the musical notation, this will be helpful and will encourage companies to come forward and protect their sound marks," says Raja Selvam, managing attorney at law firm, Selvam and Selvam. This small but crucial change in the application procedures could see a renewed interest in registration of sound marks.
Key sound marks registered in India
- National Stock Exchange - (Theme song)
- ICICI Bank - (Corporate jingle - Dhin Chik Dhin Chik)
- Britannia Industries (Four note bell sound)
- Cisco - (Tune heard on logging in to the conferencing service Web Ex)
- Edgar Rice Burroughs - (Tarzan Yell by its toy action figure)
- Nokia - (Guitar notes on switching on the device)
- Yahoo -(Human voice yodelling Yahoo)
Alumni can't use school’s name
The Times of India, Apr 19 2016
DPS alumni schools can't use name: HC
Abhinav Garg
The Delhi high court restrained a franchisee of schools floated by a group of Delhi Public School alumni, including former Union minister Salman Khurshid, from using “DPS“ on the ground of trademark infringement and copyright violations.
Justice V K Rao directed DPS World Foundation to drop the word from its operations and al so barred any of its agents, trustees, members, employees, franchisees, assignees etc from using the word claimed by Delhi Public School Society .
DPS World Foundation is headed by Louise Khurshid, wife of Salman who himself is a life trustee along with other wellknown people such as Montek Singh Ahluwalia. It runs schools in several cities, including Greater Noida, Patna and Pune.
In a detailed order, Justice Rao held that the recently launched initiative had infringed on the right of DPS Society and they couldn't claim that by virtue of being “DiPSites“, the word could be relaunched in a new mode.
The order came on a suit filed by DPS Society accusing the foundation of trademark violation by using the DPS acro nymn in schools affiliated to the latter's trust.
The society learnt in 2015 that DPS World Foundation had launched schools using the name and a deceptively similar logo that is also reflected on its website, said its lawyers, Sandeep Sethi and Puneet Mittal. Seeking permanent injunction, the society said the public was being misled that DPS World Foundation had a connection or even a nexus with Delhi Public School.
Phonetically similar brand names
The Times of India, Apr 16 2016
HC: Phonetic similarity not enough to act in brand row
Swati Deshpande
Holding that mere phonetic similarity is not sufficient to warrant judicial interference, the Bombay high court did not grant relief to owners of the London Dairy brand of ice cream who alleged trademark infringement by candy-making company Parle Products. International Foodstuffs, a Dubai-based company in business since 1975, had moved the high court against Parle Products for using the mark `Londonderry' for its boiled confectionary sweets, in an alleged bid to pass the candy off as being linked to the ice cream brand, `London Dairy'.
But after hearing both sides, Justice Gautam Patel in an interim order dismissed the plea to restrain Parle from using the name Londonderry for sweets -a product, he said, is “far removed from ice cream“. The order comes as a sweet interim victory for Parle candy .
The judge, in 16 pages of reasoning, said, “There is a very great deal of controversy about whether the plaintiff (International Foodstuffs) does or does not have any entitlement to the mark in question.“
But that aside, he said the London Dairy mark is uniquely depicted as two distinct words on a ribbon that has a gold border and the word London is depicted against a London Bridge pictorial. Also, it is used only for ice cream.
The Parle company , on the other hand, uses its mark as a single word in a different colour scheme, with different fonts and background of a “splendid pastoral scene with well-fed farm animals roaming hither and yon and a winsome milkmaid in a flowing dress and an apron“.
Justice Patel said, “Is a court to ignore all these only because of a phonetic similarity? No law says that all this must be ignored, or that a solitary test of pronunciation will suffice to defeat all else that weighs against.“
See also
Intellectual Property Rights: India
Trade marks: India
