Engineering Aspects of Intellectual

Property Rights

MC1691
B. Tech. VI Semester

Dr. Koashal Kishor Mani Pandey

Associate Professor
Department of Mechatronics
Manipal University Jaipur
KKMP Copyright
TRADMARKS
What is Trademarks?
A trademark is a mark capable of being represented
graphically and which is capable of distinguishing the
goods and services of one person from those of others and
may include shape of goods, their packaging and
combination of colors.

Trademark is territorial in nature.

Mark includes device, brand, heading label, ticket, name,

signature, word, letter, numeral, shape of goods, packaging
or combination of colors or any combination thereof.

Note: Now some non-traditional marks such as sound

mark, moving image, hologram etc are using as a trade
mark. To show it graphically depiction of oscillograph or
spectrograph is required.
Function of Trademarks
It identify the goods and services of one trader and
distinguished them from goods and services from other
provider

It signifies that all goods and services bearing a particular

trademark come from single source

It signifies that all goods bearing particular trademark are

of an equal level of quality.

It act as a prime instrument in advertising and selling

Objective of Trademark
It protect the public from confusion and deception by
identifying the source or origin of particular product as
distinguishing from other similar products

It protect the trademark owners trade and business as well

as goodwill which is attached to his trademark
Trademarks
Condition of Registration of Trademark:

It should be mark

It should be capable of represent graphically

Mark must be distinctive

Trademarks
Ground for refusal of Registration

Absolute Grounds (Section 9):

Mark not capable of distinguishing the goods and services
of one person to those of others.

Mark which may serve to designate the kind, quality,

quantity, intended purpose, values, geographical origin or
time of production of goods or rendering of services, or
other characteristics of goods and services (ex. Long
Lasting for perfume, High Tech for computer).

The marks which becomes customary in the bona-fide and

established practices of trade (ex. Auto for automobile).
Trademarks
Ground for refusal of Registration

Absolute Grounds (Section 9): :

It is of such nature as to deceive the public or cause
confusion.

It contain any matter that likely to hurt religious sentiment of

any class or section of citizen of India,

It comprises scandalous or obscene matter.

Prohibited under the Act (Emblem & Name).

Trademarks
Ground for refusal of Registration

Relative Grounds (Section 11):

If the mark is identical to earlier trademark and similarity of

goods or services.

Mark prevented by other laws.

Trademarks
Who can make the Application for Registration of
trademark?

Any person/entity claiming to be the proprietor of trademark

used or proposed to be used by him may apply to the
Registrar in the prescribed manner for the registration of
trademark.

Now a single application may be made for registration of

trademark for different class of goods and services and fee
payable in respect of each such class of goods and
services.
Trademarks
Category of Trademark Application

Ordinary Trade Mark application: Application filed for single

class of goods and services

Multiclass Trademark Application: Application filed for more

than one class of goods and services

Convention Trademark Application: Application filed with

trademark claiming priority from convention country
Trademarks
Trademark Registration offices:
Trademark is registered at any one of the following office
falling under the territorial jurisdiction of applicant:

Mumbai (Head Office)

Kolkata

Chennai

Delhi

Ahmadabad
Procedure of Trademark Application
1. Application will be filed by an applicant at any trademark
registry office which is stipulated for applicant territory in
prescribed manner or by e-filing procedure.

2. After application will be filed, it will be examined by registry

among the registered trademark and pending application
whether there is any marks in same category of goods and
services already.
3. Registrar may accept/refused absolutely or raise the
objection.
4. If there is any objection, applicant must reply within one
months of communication. If need hearing with Registrar,
completed within 3 months. Thereafter Registrar will give
his decision.
5. If accepted it will be advertised in trademark journal ASAP.
Procedure of Trademark Application
6. Within 4 months of advertisement, anyone can make the
opposition.
7. The copy of opposition will be served to applicant within 2
months of receipt of opposition, and parties will be heard
in prescribed manner and time.
8. In case of non opposition within the stipulated time or
decision goes in favor of applicant, the registrar shall
register trademark.
9. The date of registration shall be the date of application.
10. Trademark is registered for the period of 10 years which
may be extended perpetuity for to further period of 10
years.
Trademark Owner
Protection of trademark is based on the principle of
protection of the reputation and goodwill of the trademark
owner which the trademark owner acquires through
constant and exclusive use.

Besides through use, right in trademark can be obtained by

registration, by permission, by license or by assignment.

To claim right in trademark, it is not necessary that

trademark should ne used for a definite period of time.
Even a single use of trademark with an intention to use it
continuously is sufficient.
Trademarks
Trademark Without Registration
A person can get the protection about his trademark without
registration if the trademark is well known by its use.

Hence to get protection to trademark, it is not necessary to

register it.

Symbol of trademark
: For unregistered trademark

: For registered trademark

Right of Registered Trademark Owner
The registered proprietor of the trademark have exclusive
right to use the trademark in relation to goods or services
in respect of which trademark is registered.

The registered proprietor is entitled to obtain relief in

respect of infringement of trademark.
Infringement of Registered Trademark
A non-registered proprietor of trademark is using the mark
in the course of trade.

If a person is using the mark which can create the

confusion among public due to identity with registered
trademark and similarity of goods and services.

If a person is using the mark which is identical to

registered trademark but different in goods and services.
In this case person using the mark may get unfair
advantage of the repute of registered mark.
Remedies for Infringement of registered
Trademark

Civil Remedies:
To restrain the defendant from using the registered
trademark, damage/account of profit

Criminal Remedies:
Imprisonment of 6 months to 3 years and fined 50000 to
200000.

To seize the goods related with infringement of TM.

Law of Passing Off
The passing off is an unfair trade competition by which one
person through deception attempt to obtain an economic
benefit of the reputation which another have established for
himself for particular trade or business.

Passing off provides the remedies for the infringement

of non registered trademark under the law of torts.
Trademark & Domain Name
Domain Name
Many developed countries have exclusive law related with
domain name.

In India there is no exclusive law for domain name.

Law of Trademark has been extended to domain name to

protect from cybersquatting/trafficking/trading in India
Trademark & Domain Name
The Internet Corporation of Assigned Names and Numbers
(ICANN) is responsible for the administration of top level
domain names

A trademark is protected by the laws of a country where

such trademark is registered. And trademark may have
multiple registrations in many countries throughout the
world. On the other hand, since the internet allows for
access without any geographical limitation, a domain name
is potentially accessible irrespective of the geographical
location of the consumers.
Domain Name
What is Cybersquatting
It is a practice of registering an Internet domain name that
is likely to be wanted by another person, or organization in
the hope that it can be sold to them at profit.

The person who have registered the domain name does

not possess rights of such names.

Person registered the domain name with intention of

trading on the reputation and goodwill of such third parties
by either confusing customers or to even sell the domain
name to the rightful owner at a profit.
Domain Name
Case Study:
Yahoo! Inc. v. Akash Arora nad Anothers: An attempt was
made to use the domain name <yahooindia.com> for Internet
related services as against domain name i.e. <yahoo.com>.

The Court observed the degree of the similarity of the marks

and possibility of confusion and deception. When both the
domain names are considered, it is crystal clear that the two
names being almost identical or similar in nature, there is
every possibility of an Internet user being confused and
deceived in believing that both the domain names belong to
one common source and connection, although the two
belongs to two different concerns.
Domain Name
Case Study:
Dell filed a lawsuit in against another party that had
registered the URL "DellFinacncialServices.com" alleging
cybersquatting. In that case, the defendants had registered
misspelled confusingly similar domains to those owned by
Dell with the intention of capturing the traffic from people
mistyping "DellFinancialServices.com
Protection of Trademark through
International Registration
India joined Madrid Protocol in July 2013. There are total 98
contracting parties till todate of Madrid Protocol.

Thereafter Trademark (Amendment) Act 2010 was inserted

to provide special provision for international application for
international registration under Madrid Protocol.

International application is presented to International Bureau

of WIPO by Registrar of Trademark Office.

Where application complies application requirement, the

mark is recorded in the international register and published
in the WIPO Gazette of International Mark.
Protection of Trademark through
International Registration
The Bureau then notify each contracting party in which
protection has been requested.

Each designated party has right to accept or refuse the

protection of mark as per the country prevailing law and
inform the Bureau within stipulated period of time as
prescribed in Madrid Protocol.

Where India is designated state, Registrar will receive the

international application and take the decision of
accepting or refusing the mark as registered trademark,
and inform so to the Bureau.
Design
Design
As per The Design Act 2000:

Design is a feature of shape, configuration, pattern,

ornament or composition of colors applied to any article
whether in two dimension or three dimension by any industrial
process, which in the finished article appeal to eye.
Criteria for the Registration of Design
It is new or original

It has not been disclosed in the public

It is significantly distinguishable from known design or

combination of known design

It does not comprise scandalous or obscene matter

Its use would not be contrary to public order

Application for Registration of Design
Applicant may file the application for the registration of
design at Patent and Design head office Kolkata or Delhi,
Mumbai, Chennai sub offices.

However Delhi, Mumbai and Chennai office referred all

application to Kolkata head office for further processing.

Thereafter design application will be examined

automatically (No separate request is required like patent).

The examiner will be search for novelty in the available

database.
Application for Registration of Design
If there is any objection raised by examiner, the applicant
have to reply within 3 months from the date of
communication of statement of objection.

The period of objection shall not exceed six months from

date of filling the application.

On conclusion of the response of applicant, Controller will

take final decision about registration.

The design registration is protected for 10 years which is

further extended up to 5 more years after renewal.
Remedies for infringement of Design
If anyone is pirating registered design, under section 22 of
Design Act 2000, he shall pay proprietor sum not
exceeding 25000/ for every contravention. But total sum
recoverable is not more than 50000/-

Damages/Account of Profit

Interlocutory injunction
Trademarks
Difference between Trademark & Design

Trademark points to the source/identity/quality of the

product and services, whereas design points to the physical
appearance of the product to attract the customer

Trademark is a device, label, color, name or any other mark

on the product to link the manufacturer/producer while
design is a feature, shape, pattern ornament, color applied
to object to make it appealing