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Replying to TRADEMARK Objections

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 A Trademark is a type of intellectual property protection, under which a word, phrase, visual symbol and/or design used by a company to distinguish its goods or services from other similar goods or services originating from a different company can be protected. A trademark registration will confer an exclusive right and legal certainty to the use of registered trademark by the right holder.

 Trademark protection can be obtained by filing a trademark application with the relevant Trade Mark Registrar in the prescribed format and paying the required fees.

 Once a trademark application is filed, the trademark registration application will be allocated to a Trademark Officer in the Trademark Registrar Office. The Trademark Officer would then process the application and analyse it. The Trademark Officer will give its opinion about the Trademark in the form of an “Examination Report”. Based on the Examination Report, the trademark application is published in the trademark journal or an objection is raised for registration of Trademark.

 If the trademark registration application is objected by the Trademark Officer, the trademark applicant has the right to submit a written reply for the objections raised within 1 month from the date of receipt of examination report. The trademark examination reply should include reasons and evidences along with the supporting documents to prove the distinctiveness of the trademark and as to why the trademark should be registered. The application is allowed to be published in the Trademark Journal before registration only if the Trademark officer is satisfied by the reply. Thus, the reply to the Trademark examination report should address all the concerns raised by the Trademark Officer.

The Trademark Officer raises an objection for registration of trademark under Section 9 and Section 11 of “The Trade Marks Act, 1999”.

 

Section 9 of The Trade Marks Act, 1999 states the Absolute grounds for refusal of registration—

 

(1) The trade marks—

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered:

Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

(2) A mark shall not be registered as a trade mark if—

(a) it is of such nature as to deceive the public or cause confusion;

(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;

(c) it comprises or contains scandalous or obscene matter;

(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act,1950 (12 of 1950).

(3) A mark shall not be registered as a trade mark if it consists exclusively of—

(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods. \

Section 11 of The Trade Marks Act, 1999 states the Relative grounds for refusal of registration—

(1) A trade mark shall not be registered if, because of—

(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or

(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

(2) A trade mark which—

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.

(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented—

(a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or

(b) by virtue of law of copyright.

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(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration, and in such case the Registrar may register the mark under special circumstances under section 12.

(5) A trade mark shall not be refused registration on the grounds specified in sub-sections (2) and (3), unless objection on any one or more of those grounds is raised in opposition proceedings by the proprietor of the earlier trade mark.

(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including—

(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;

(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account—

(i) the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services

(iii) the business circles dealing with the goods or services, to which that trade mark applies.

(8) Where a trade mark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.

(9) The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely:—

(i) that the trade mark has been used in India;

(ii) that the trade mark has been registered;

(iii) that the application for registration of the trade mark has been filed in India;

(iv) that the trade mark— (a) is well-known in; or (b) has been registered in; or (c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or

(v) that the trade mark is well-known to the public at large in India.

(10) While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall—

(i) protect a well-known trade mark against the identical or similar trademarks;

(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.

(11) Where a trade mark has been registered in good faith disclosing the material informations to the Registrar or where right to a trade mark has been acquired through use in good faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that trade mark or right to use that trade mark on the ground that such trade mark is identical with or similar to a well-known trade mark.

Thus, if the Trademark officer has raised an objection under Section 9 or Section 11 of the Trade Mark Act, 1999, the reply must contain the judicial precedent and should prove the point with proper evidence.

Do you need a trademark for a logo? Can you patent a logo?
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Trademark of Logo

How do I get a logo trademarked?

“It’s all in the name”!

Designed a logo to represent your business?

How to protect the design of the logo and the business behind it using the Trademark Law?

Before addressing how to trademark your business logo, we should define the terms “trademark” and “logo.”

The terms “Logo” and “trademark” are used interchangeably but they do actually differ slightly from each other. “A logo can be a trademark but a trademark cannot be considered to be a logo”.

A trademark is a unique name, symbol, phrase, motto, or graphic design that is specific to a company name, or its products and services and is used to distinguish the products of one seller from the other. The symbol ‘™’ designates that  the name, symbol or word is a trademark-ed property belonging to a particular company and that specific drawing, logo, or phrase cannot be copied or used by any other business or person, unless specific authorization is given by the trademark owner.

A logo is a brand identity for representing businesses. A logo should represent the the characteristic spirit  manifested in the attitudes and aspirations of the company it stands for. Sometimes people identify the company through the logo; although they might have forgotten the name. Registration of the logo as a trademark makes it a legal document which can be used in the court of law in case of brand infringement.

Selecting trademark for startup business can be tricky but at the same time rewarding to the startup. It is important to do proper research before filing for trademark for startup business in India.

Trademark of a brand has a lasting effect on its consumers. As a business owner, the startup thinks passionately about naming their new business, but while doing so, due consideration should be given to the following two points:

(a) “Unique & Novel” Trademark: The trademark should be new and unique.

(b) Non-conflicting to competitor in same field: The trademark should not conflict with existing trade names who have registered trademarks.

Business names, brand names, logos and taglines are protected legally by way of trademarks, and in case of conflicting names, it might result in a trademark infringement suit. Trademark for startup business should be unique to the business offering.

It is very important to name a business properly. Inorder to highlight the importance of naming a business, we will take an example of International Trademark Infringement.

A South Korean fried chicken restaurant recently lost a trademark battle with designer “Louis Vuitton”. The restaurant’s name- “Louis Vuiton Dak” was too similar to Louis Vuitton. In addition to the name infringement, the restaurant’s logo and packaging closely mirrored the designer’s iconic imagery.

The restaurant ultimately changed the name to “LOUISVUI TONDAK” and was hit with another 14.5 million fine for non-compliance.

Therefore, as may be observed from the above case study, trademark for startup business should be unique, selecting a unique business name and legally protecting it by way of trademarks is very important. Companies can avoid expensive legal battles by avoiding mirroring their brand closely after another brand, even if the products and business strategy have nothing in common.

If a business involves multiple brands, a strong trademark strategy is crucial to manage them. It is advisable to keep business name different from brand name.

In accordance with Indian Trademark Law, it is not mandatory to file for a trademark, but it is highly advisable to file trademark for startup business, register a trademark for the name of your business as well as for the brand names of your products and services.

Accordingly, it is highly advisable to seek assistance from a Trademark Attorney.

Apply for TM Registration and discuss your brand strategy and understand importance of brand, logo and tagline with expert consultants at Tech Corp International Strategist India TCIS, India.

IF YOUR STRATEGY AND DOCUMENTATION ARE IN PLACE WE GET”YOUR” TRADEMARK REGISTERED IN TWO- THREE WEEKS.

Trademark Services

 

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Inventorship and Ownership of Patents?

 

Who is the owner of the patent?

Inventorship and Ownership of a patent are separate and distinct issues. Disputes mainly arise over ownership of inventions between employees and employers.

Generally, the inventor owns a patent. However, the inventor and the owner of the patent may be different. This typically occurs when the inventor assigns the patent to an entity, such as a corporation or a university.

Complex and serious legal issues involving the ownership of a patent often arise when inventorship or the duty of an inventor to assign the patent is not clearly defined.

With patents, the concepts of inventorship and ownership, though related, are distinct:-

Inventorship is a legal concept that is based upon who meets the requirements to be an inventor.

The concept of Ownership relates to who actually owns the legal rights associated with the patent.

In the case of an Independent Inventor, the inventor and the owner of a patent are usually the same. In a University or a Corporate Setting, the inventor does not own the patent. Rather, the University or Corporation is the owner.

Patent applications filed in the United States must be filed in the name of the person who invented the invention.

The act of invention has two parts, “Conception” and “Reduction of Concept to practice.”

Conception is the formulation in the mind of the inventor of the complete means for solving a problem in such a way that a person skilled in the relevant art could practice the invention by following the inventor’s conception.

However, an invention is not complete following conception, It must further be reduced to practice. This can be accomplished in one of two ways.

 There may be an “actual” reduction to practice, which is when the invention is made and tested to determine that it works.

However, reduction to practice does not require the invention to be made. An invention can be “constructively” reduced to practice by filing a patent application claiming the invention.

For purposes of invention, a constructive reduction to practice is considered to be equivalent to an actual reduction to practice.

The inventor is the individual who has concept of the invention, provided of course that there has been a reduction to practice. An individual who reduces the invention to practice by following the conception of the inventor is not considered to be an inventor.

There may be only one inventor, which occurs when one person has conceived of the entire invention. Very commonly, however, invention is a collaborative process involving two or more people. When more than one person contributes to the conception of an invention, each is considered to be a joint inventor.

Joint inventors do not have to have physically worked together on the invention. There must have been some collaboration, however, and each of the inventors must have worked on the same subject matter and must make some contribution to the conception of the invention as it is claimed in the patent. All of the joint inventors do not have to be inventors of every claim.

Even if an individual contributes a conception to only one claim in a patent, that individual is still a joint inventor of the entire patent.

Each of the joint inventors are named on the cover page of a patent. The order of the names of the inventors has no legal significance.

The rights in the patent of one named inventor are the same as those of each of the other named inventors, irrespective of the order in which they are listed.

One final point concerning inventorship is that an individual who has not contributed to the conception of the invention is not an inventor, and is not permitted to be listed on the patent as an inventor.

Even if someone has contributed a large amount of money to permit the inventors to work, or if someone heads the research department in which the inventors work, that person is not an inventor.

Inclusion of such a person’s name as an inventor on a patent, with knowledge that the person does not qualify as an inventor, can result in invalidity of the patent. Therefore, that person’s name must not be listed as an inventor on the patent.

Absent any contrary agreement or duty to assign the patent, the named inventor is the owner of the patent.

As the owner of the patent, the inventor has the right to prevent others from making, using, selling, offering to sell, or importing the patented invention.

If there are joint inventors, unless there is a contract, each of the inventors has an undivided interest in the entire invention as claimed in the patent.

Each of the joint inventors may practice the invention without consent of the other inventors and without any duty to pay the other inventors a portion of the profits from the exploitation of the patent. There is no fiduciary duty between the joint inventors.

Also, each joint inventor may license the patent without approval of the other inventors and without paying them a share of any royalties received from the licensee.

Because of this, in any situation involving more than one inventor, the inventors should agree by contract how the rights in the patent will be apportioned.

For example, the inventors may agree that all proceeds from licensing the invention will be split regardless of which inventor actually licenses the invention, or that each of the inventors will have separate exclusive rights to the patent in different geographical regions of the territory.

Often, inventors assign their inventions to their corporate or university employers. When this occurs, inventorship and ownership of the patent differs.

Here, the corporate or university assignee, and not the inventors themselves, owns the rights in the patent.

Unless there is an agreement requiring it, the assignee/owner does not have to make any payments to the assignor/inventor for exploiting the patent.

An obligation to assign a patent usually arises when there is a contract between the inventor and the assignee requiring an assignment, such as when a contractor is hired to solve a particular problem, or when certain employer/employee relationships exist.

Generally, an employee must assign an invention to an employer if the employee has a specific contractual obligation to assign or if the employee was hired to invent or is directed by the employer to solve a particular problem.

Although courts have divided on this issue, employees who have been hired to do research in general usually do not have to assign their inventions to their employers. Also, employees who have been hired for purposes other than to do research have no duty to assign their inventions to the employers.

Of course, parties may define their rights by contract. It is a good idea for companies and universities to have contracts in place with their researchers that require assignment of any invention discovered in the course of their employment.

European trademark law effective efficient
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European Union Trademark Reforms

How to reforms laws?

Reform the world is to reform the nation and reform the nation is to reform the laws.

The European Union trademark reform that has been introduced in order to bring a substantial and an important change to the original and unabridged EU trademark system that existed since 1996. The newly amended EU trademark law is referred to as the Regulation (EU) 2015/2424 which was passed in December 2015 and on March 23, 2016 the first part of its regulation came into force. On October 1, 2017 the remaining provisions will come into effect.

This change in the trademark law will bring an important change not only to the community trademarks that allows to obtain with a single application a trademark valid in all the territory of the European Union but also for national trademark owners in the European Union (EU).

Before dealing with what these reforms have in the bag for trademark owners in the EU, we first need to shed some light on the legislation that are behind the whole reform unit. There are two legislation namely, the amended Community Trademark Regulation (Regulation (EU) 2015/2424) which provides for the rules and regulations that are to be compelled with and which came into force on 23 March 2016. The second legislation is the new Trademarks Directive (Directive (EU) 2015/2436) intends to balance the national trademark systems of the EU member state and which came into force on 13th January 2016.

This reform consists of various innovations, including the alteration to the fee structure, criteria concerning the registration of trademarks and the procedural issue as well as alterations relevant to infringement proceedings and custom seizures. The new regulation is applicable to all the EUTM (European Union Trademark) registrations and as a result of this many trademark owners who have their trademark stipulation contain class headings from the nice specifications have to take actions in order to prevent a cutback in their protection.

According to Article 28 EUTMR class headings of the class specifications that are mentioned in the EU trademark specifications will only cover the goods and the services which are covered by the literal meaning of the respective words. Further the EUTMR has also proposed a new European Union certification mark in Article 74a-74k EUTMR and the applications for such marks can only be filled after 1st October 2017. Under this proposal the owner of an EU certification mark will not act as the supplier of the goods and services in the market but will be responsible for certifying and monitoring the qualities of goods of services.

Along with the innovations there are changes such as:

The Community Trademark (CTM) is renamed to the European Trademark (EUTM) and the office for Harmonization in the Internal Market (OHIM) has become the European Union Intellectual Property Office (EUIPO).

Trademark applicants have to no longer represent marks graphically. This change makes it easier for the non-traditional signs such as sound and smell to be registered easily.

The trademarks are followed by a new fee structure and the renewals have indeed become generously cheaper but the trademark applications which are containing 3 or more classes have increased. Further there are concerns that arose with these innovations and changes such as the grounds for refusal and invalidity of the trademark.

 VARIOUS GROUNDS OF EU REFORMS

Absolute grounds for Refusal or Invalidity: Signs which dwell completely of other characteristics of which results from the nature of the goods or is necessary in order to obtain a technical result or give a generous value to the goods, may not be registered. These absolute grounds cannot be affected on evidence of acquired uniqueness and has been drawn out to include ‘other characteristics’ apart from shape.Additional grounds such as designations of origin, geographical indications, and traditional terms for wine, traditional specialties guaranteed and plant varieties have been added for refusal.

Relative grounds for Refusal or Invalidity: The owner of a designation of origin or a geographical indication can depend upon these rights in order to prevent the registration and use of a consecutive trademarks.

Marks with a reputation: This ground has been introduced in order to prevent the registration of the trademark where the goods and services are same. This ground can be based upon a reputation claim, irrespective of the fact whether the goods and services concealed by the inimical applications are similar or dissimilar to the goods or services for which reputation is claimed and where such use would lead to an unfair advantage of or to the modesty of the earlier mark.

Infringement: Using a registered trademark as a trade or company name is a specific infringement.

At the end trademark reforms include some large-scale alterations that will definitely restore and modernize the European Union trademark law and will ensure greater balance in trademark practices and procedures across the European Union. It will strength the rights of the trademark owners while bringing a bright prospective towards the working of it.

IF YOUR STRATEGY AND DOCUMENTATION ARE IN PLACE WE GET”YOUR” TRADEMARK REGISTERED IN TWO- THREE WEEKS

Apply for TM Registration and discuss your brand strategy  and understand importance of brand, logo and tagline with expert consultants at Tech Corp International Strategist India TCIS, India.

Locations: Delhi, Gurgaon, Noida, Mumbai, Banglore

IF YOUR STRATEGY AND DOCUMENTATION ARE IN PLACE WE GET”YOUR” TRADEMARK REGISTERED IN TWO- THREE WEEKS

 We at Tech Corp International Strategist India(TCIS) provide Trademark services:

Trademark Office Action Responses

We at TCIS,India evaluate your office action after client discussion and understanding his business quotes and let you know if there is a fair chance to get your trademark application approved. If you decide to hire our trademark lawyers / trademark attorneys at TCIS to draft a response to the office action, cost effective flat rates are available.

As experienced trademark attorneys we at TCIS are well versed in responding to office action letters issued by trademark examining attorneys at the Indian Patent Office(IPO) and Indian Trademark Office.

Trademark Monitoring Services

We at TCIS,India also offers trademark monitoring services for OUR  clients. This service is designed to protect the client’s trademark by periodically reviewing the records of the Indian Patent Office(IPO) and Indian Trademark Office, and additional sources, depending on the monitoring service requested, for applications to register, or use of, confusingly similar marks.

Other Services

The firm offers a variety of services, including representation in cancellation and opposition proceedings at the Trademark Trial and Appeal Board. 

CALL NOW FOR YOUR FREE CONSULTATION WITH TRADEMARK ATTORNEY  at 011 6654 4992 OR SEND AN EMAIL TO legal_desk@patentbusinessidea.com

When you contact Trademark attorney at TCIS,India whether by phone or email, you can expect to receive prompt, professional, efficient and courteous service.

Clients of the firm enjoy the following:

  • Free initial trademark consultation with an experienced trademark attorney
  • Review of office actions by an experienced trademark attorney                
  • Trademark attorney personal attention to their matters                                        
  • Firm ideology of involvement that requires “going the extra mile”                      
  • Firm policy to return client phone calls and respond to emails immediately whenever practical                                                                                                  
  • Cost-effective flat rates 

OUR CLIENTS ARE LOCATED THROUGHOUT THE WORLD INDIA,UNITED STATES, AUSTRALIA, CANADA, CHINA, DENMARK, ECUADOR, HONG KONG, MALAYSIA, SINGAPORE, INDIA, ITALY, INDONESIA, SOUTH AFRICA, SOUTH KOREA, SWEDEN, FRANCE, SWITZERLAND,  U.A.E. ,  UK.  

Co Author

Food Strategy | Foodservice Design food culture strategy

Anshika Bhardwaj

Food Law Strategist, Patent Associate at Tech Corp International Strategist *Startup India Expert Tech Corp International Strategist *Startup India Expert

IF YOUR STRATEGY AND DOCUMENTATION ARE IN PLACE WE GET"YOUR" TRADEMARK REGISTERED IN TWO- THREE WEEKS