Lect_3_Trade_mark

Trade mark &
Trade secret
Trademark
• Keeping in view the changes in trade and commercial practices,
globalization of trade, need for simplification and
harmonization of trade marks registration systems etc., a
comprehensive review of the Trade and Merchandise Marks
Act, 1958 was made and replaced with Trademark Act passed
by Parliament and notified in the Gazette on 30.12.1999.
• It is covered under the Act called the Trade Marks Act, 1999.
• The Act came into effect on September 15, 2003.
• This Act not only makes Trade Marks Law, TRIPS compatibility
but also harmonizes it with international systems and practices.
• It extends to the whole of India.

What is a Trademark?
A symbol, logo, word, sound, color, design or other device that is used to identify a
business or a product in commerce. Or
Any sign which can distinguish the goods and services of one trader from those of
another.
Trademark can be a word, name, brand, symbol, label etc. used by a company to create
a unique identity for their product. Trademark can be registered, and then use ™ ®.
A trademark is a -
 sign, words, letters, slogans, numbers, logos
 drawings, pictures, emblem,
 colours or combination of colours,
 three-dimensional shapes and sometimes sounds and gestures
 graphic representation or packaging or
 any combination of the above
as applied to an article or a product that identifies and distinguishes the source of goods of one party from
those of others.
e.g., LUX, Godrej, TVS ,Telco, 555, APPLE
• It is used as a marketing tool so that customers can recognize the product of a

particular trader.
Applicability of trademark
• A trademark is a sign Used on, or in
connection with the marketing of goods or
services.
• “Used on” the goods means that it may

appear not only on the goods themselves but
on the container or wrapper in which the
goods are sold.
Forms of TM:
• Visual: Words, letters, numerals, devices including
drawings and symbols or 2-D representations of
object or a combination of two or more of these,
colour combinations or colour per se, 3-D sign as
shape of goods or packaging.
• Audio: Sounds, Musical Notes
• Olfactory: Smells
Different Symbols are:

– ™ Intent to use application filed for product
– SM Intent to use application filed for services
– ® Registered trademark
WELLKNOWN MARKS
•Coca Cola for soft drink
•Toblerone (Triangular-
shaped chocolates)
Trade Names
•Godrej- Furniture, Refrigerators, Storewell, Compactor etc.
•GE- Bulbs
Trademark
Trademark Examples
Words Phrases
Trademark Examples
Symbols Design
Unconventional Trademarks
Single colors (Louis Vuitton)
Three-dimensional signs
(shapes of products
or packaging)
Audible signs (sounds)
Olfactory signs (smells)

• Set apart from
surrounding
text
• Specify font,
size, proportion
& placement
Proper Use – Avoiding Genericide
Always use the mark followed by a noun

• Wrong: A KLEENEX
• Right: KLEENEX tissue
Never plural
• Wrong: Two NOKIAS
• Right: Two NOKIA phones
Never possessive
• Wrong: POST-IT’s quality
• Right: POST-IT note pads’ quality
Proper Use – Avoiding Genericide
Never a verb
• Wrong: Xerox a document
• Right: Photocopy a document
on a XEROX copier
Proper spelling
• Wrong: H and M
• Right: H&M
What is protected and what’s not?
• Right to use TM in relation to

goods/services as registered are
protected (If TM consists of several
parts, protection is for TM as a
whole)
• State Emblems, Official Hallmarks,

Emblems of Intergovernmental
Organizations cannot be used as
TM.
COLLECTIVE MARK
• COLLECTIVE MARK is a Mark that distinguishes
the goods or services of members of association
from marks of other undertakings
• Who owns collective Mark?

Association of persons
• It could be manufacturers, producers, suppliers,

traders or other profession bodies like institute of
chartered accountants, test cricketers association
etc.
Service Mark
A service mark is the same as a trademark, except
that it identifies and distinguishes the source of
a service, rather than a product.
• Service Marks include banking, education, finance,
insurance, real estate, entertainment, repairs, transport,
conveying news and information, advertising etc.
• Certification Trade marks: Certified by the owner as

having characteristics like geographical origin,
ingredients, quality e.g. AGMARK, WOOLMARK Certification
mark cannot be used as a trade mark.
» Certifies that the goods on which it is applied

are made of 100% wool. It is registered in 140
countries and licensed to the companies
which assure that they will fulfill with the
strict standards set out by the Woolmark
company , the owner of the mark.
“Trademark” and “Mark”
Both of these terms are used to refer

to trademarks (goods or products)
and service marks (services).
Other Kinds of Mark
Collective Mark
Certification Mark
Trademark vs Trade/Business Name
Trade/ Business Name
Identifies a Company or Business e.g.
The Coca Cola Company
Trademark
Identifies the products or Services of that
Company
Process of Selection of Mark
• Brainstorming
• Registrability
• Availability
• Registration
Functions of Trademark
Indicates the source of origin of goods or services
Helps guarantee the quality of goods bearing the

mark
Creates and maintains a demand for the product
Used as a marketing tool to build a brand
Can have great value to a company

Value of Trademark
• Amazon ranks number one globally with its brand valued at
$299 billion. As a market leader in online retail, it has strong
brand loyalty in its B2C segment which generates its largest
share of revenue, and is a key player in cloud services for its
B2B platforms.
• Apple is in close second with a $298 billion brand. It’s

important to note that both tech giants brands fell in
value from last year, as supply chain disruptions, labor
market constraints, and slower forecasted revenue impacted
their brands.
• Tata Group retains top position as most valuable Indian

brand at US$24 billion
Trademark Registration
Trademark Registration Cond…
Obtaining Trademark Rights
• Rights are territorial
• Rights are obtained either:

• By registration
• By use (common law)
Trademark Registration
• Registrability
• Meets the legal requirements - not generic, not
immoral, etc.
• Availability
• Does not conflict with prior registrations/applications
• Application Procedure
• With the national trademark office
Trademark Registration Cond…
Registration of Trade Mark
• Trade Marks are registered by national trade
mark registries and are valid in that country
• Registration is made after examination and
publication
• Trademark is valid for 10 years from the date of
application which may be renewed for further
period of 10 years on payment of prescribed
fees.
• Service mark Rights are reserved exclusively for
owners for 17 years & it can also be renewed.
• The Govt. fees is Rs. 2,500 for each class of
goods or services.
Registration procedure
• Application for search
• Application for registration
• Examination of trademark
• Advertisement of trademark
• Filing of opposition
• Certificate issued
TM Registration Proceedings
Trade secret
 Trade Secrets: Trade secret is any intellectual work or product used for a
business purpose that can be classified as belonging to that business
provided it is not based on information in public domain.
• A trade secret consists of

– a formula, device, idea, process, pattern or compilation of information
that gives the owner a competitive advantage in the marketplace
– a novel idea that is not common knowledge and is kept in a confidential
state
 When the individual and organization owing an intellectual property to
any one and keep it as a closely guarded secret to promote his business
interest
 The best guarded secret of the modern times concerns the formulation of
Coca Cola
 In the area of biotechnology- cell lines, microorganism strain, production
process etc.
Trade Secrets
• A trade secret is not protected by federal law
•Can only be protected through employment contracts
and/or maintaining tight security
Restricting number of people having access to secret
information
Signing confidentiality agreements with business
partners and employees
Using protective techniques like digital data security
tools and restricting entry into area where trade secret
is worked or held
National legislations provide protection in form of
injunction and damages if secret information is illegally
acquired or used.
Advantages of trade secret
• They are for unlimited duration

• Not necessary to satisfy the rather stringent
requirements for protection under, say, patent
• Cost of filling, contesting and enforcing patent is
saved
• Risk of someone improving upon the product,
process etc. is minimized
Drawbacks of trade secret
• Maintaining a trade secret is a costly affair

• It offer no protection for independent innovation/
invention
• Non disclosure of the invention/innovation does not
gives others a chance to improve upon the original
invention
• It cannot be applied to many inventions e.g.
equipment design, plant varieties, books etc.
NATIONAL LAWS OF RELEVANCE
• Indian Copyright Act, 1957

• Seeds Act, 1966
• Patents Act, 1970
• Geographical Indications of Goods
Act, 1999
• Trade Marks Act, 1999
• Designs Act, 2000
• Protection of Plant Varieties and
Farmers Right Act, 2001
• Biological Diversity Act, 2002
• Scheduled Tribes and other
Traditional Forest Dwellers
(Recognition of Forest Rights) Act,
Policing and Protecting Trademarks
Subscribe to Watch Services
Internet Searches
Internal “eyes and ears”

Elements of Trademark Claims
Elements of Trademark Claims
Paris Convention Protection for
Well-Known Marks

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Trade mark &

• The Act came into effect on September 15, 2003.

• It extends to the whole of India.

e.g., LUX, Godrej, TVS ,Telco, 555, APPLE

• It is used as a marketing tool so that customers can recognize the product of a

• “Used on” the goods means that it may

Different Symbols are:

Audible signs (sounds)

Olfactory signs (smells)

Always use the mark followed by a noun

• Right to use TM in relation to

• State Emblems, Official Hallmarks,

• Who owns collective Mark?

• It could be manufacturers, producers, suppliers,

• Certification Trade marks: Certified by the owner as

» Certifies that the goods on which it is applied

Both of these terms are used to refer

Helps guarantee the quality of goods bearing the

Creates and maintains a demand for the product

Used as a marketing tool to build a brand

Can have great value to a company

• Apple is in close second with a $298 billion brand. It’s

• Tata Group retains top position as most valuable Indian

• Rights are territorial

• Rights are obtained either:

• A trade secret consists of

• They are for unlimited duration

• Maintaining a trade secret is a costly affair

• Indian Copyright Act, 1957

Internal “eyes and ears”

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