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
2016: Delhi HC
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.
2018: Supreme Court
Abhinav Garg, July 29, 2018: The Times of India
The Supreme Court has restrained a chain of schools floated by a group of DPS alumni, including former Union minister Salman Khurshid, from using the ‘Delhi Public School’ trademark.
In a recent order, a three-judge bench of Justices Ranjan Gogoi, R Banumathi and Navin Sinha disagreed with a Delhi high court order permitting Khurshid’s DPS World Foundation to use the words ‘Delhi Public School’.
The court took into account the fact that “the mark/name/ words ‘DPS’ is registered in favour of DPS Society in Class 42 of the Trade Marks Act, 1999, and the words ‘Delhi Public School’ has also been registered during the pendency of the proceedings before the single judge. The logo is also registered.”
It further noted that “We accordingly restrain them from using ‘DPS’ or ‘Delhi Public School’ or the logo” even as the bench made it clear that the observations should be understood to be confined for the purpose of grant of interim relief and would not affect the trial of the main suit.
In 2017, HC had restrained the institute from using ‘DPS’ trademark but had said since the name ‘Delhi Public School’ is not registered as a trademark, it can be used by DPS World Foundation.
HC relief came on a plea by DPS World against a single judge’s order restraining them from using the DPS trademark and its crests. DPS World had challenged the single judge’s April 18, 2016, interim order restraining the foundation, schools floated by a group of DPS alumni, from using the name ‘DPS’ saying it would amount to trademark infringement.
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.“
The ‘territoriality principle’
The SC and Toyota’s ‘Prius’
HIGHLIGHTS
Japanese automobile major Toyota lost a legal battle in the Supreme Court for exclusive trademark rights over ‘Prius’
A Delhi-based auto parts maker had the permission to use the ‘Prius’ trademark
Toyota's hybrid car 'Prius' was launched in India in 2010
Japanese automobile major Toyota lost a legal battle in the Supreme Court for exclusive trademark rights over 'Prius', the name under which it had launched its first mass produced hybrid car in Japan in 1997 and in the UK, Australia and the US in 2000-2001.
The main reason for Toyota losing exclusive use of the 'Prius' trademark in India was the late launch in the country, in 2010. It found that an auto spare parts maker, Prius Auto Industries, had been using the name 'Prius' as well as 'Toyota', 'Toyota Innova' and 'Toyota Device' for automobile parts it manufactured and supplied to the car manufacturing giant.
After several rounds of litigation in court, which Toyota had moved to protect its trademarks, the auto parts maker was restrained from using the name 'Toyota', 'Toyota Innova' and 'Toyota Devices'. However, the Delhi-based auto parts maker was permitted to use the 'Prius' trademark.
Toyota moved the SC seeking to restrain the auto parts manufacturer from using the name 'Prius' and said it had obtained trademark registration of 'Prius' in Japan in 1990 and eventually in other countries. However, since the hybrid car was launched in India in 2010, Toyota had not registered the 'Prius' trademark in India till then.
This delay in seeking cancellation of the 'Prius' trademark, registered by Prius Auto Industries in 2002 for all types of auto spare parts and accessories, played a vital role in Toyota losing the legal battle in the SC.
A bench of Justices Ranjan Gogoi and Navin Sinha applied the 'territoriality principle' governing the field of trademarks and ruled that for a global brand to claim exclusive use of a trademark or brand name in India, it must be able to prove that the name had acquired substantial popularity in the Indian market when it got registered by another person or company.
The bench said information available on the internet on use of 'Prius' trademark by Toyota and a lone mention of the world launch of its hybrid car in February-March 1997 in Economic Times "do not firmly establish the acquisition of goodwill and reputation of the brand name in the Indian market" as advertisements about 'Prius' in India were virtually absent prior to April 2001.
Writing the judgment, Justice Gogoi said, "This would show either lack of goodwill in the domestic market or lack of knowledge and information of the product among a significant section of Indian population. Even proof of knowledge about Prius with that section of small population, which kept domain knowledge about automobiles, is not prominent."
Agreeing with the HC, the bench said, "The brand name of the car Prius had not acquired the degree of goodwill, reputation and the market or popularity in the Indian market so as to get Toyota the necessary attributes of the right of a prior user so as to successfully maintain an action of passing off even against registered owner (Prius Auto Industries)."
See also
Intellectual Property Rights: India
Trade marks: India
