August 22, 2023
Acquiring Distinctiveness in Trademarks
Acquired distinctiveness and secondary meaning plays a significant role in trademark consideration. The trademark distinctiveness of a trademark is a key factor in determining if it can be registered. While some trademarks possess inherent distinctiveness from the outset, others develop it over time.
Certain trademarks are naturally distinctive because they are:
Arbitrary: Trademarks that are not directly related to the goods and services.
Fanciful: Trademarks that are completely invented by the Applicant’s own mind.
Suggestive: Trademarks that gives some hint of the product and services.
Each trademark naturally links the goods it represents with a specific source. The longer a trademark is used, the stronger this association becomes. Eventually, a trademark becomes registered or mentally connected with the product and its source in the minds of consumers as a distinctive sign. This phenomenon is known as “acquired distinctiveness” or “secondary meaning.” It signifies that the trademark has gained significance among the public beyond its ordinary dictionary meaning.
CHANCES OF REGISTRATION
The level of uniqueness that a trademark holds for products and services significantly influences its chances of being successfully registered. If a trademark lacks inherent distinctiveness, it becomes necessary to prove acquired distinctiveness. This procedure can be time-consuming and might not always result in success. When a trademark lacks both inherent distinctiveness and the ability to distinguish the applied goods/services, the application is likely to be turned down.
ELEMENTS FOR PROVING ACQUIRED DISTINCTIVENESS IN INDIA
1. Duration of Use in India:
(i) Evidence of consistent, significant usage over time.
(ii) Shows the mark’s role in identifying goods/services.
2. Advertising and Promotion:
(i) Display efforts to promote the mark within India.
(ii) Highlights brand visibility and recognition efforts.
3. Reputation and Position in the Market:
(i) Provide data on market share and reputation.
(ii) Demonstrates mark’s acceptance among Indian consumers.
4. Consumer Recognition and Association:
(i) Present proof of consumer perception and link with the mark.
(ii) Vital for establishing consumer connection to a specific business.
STATUTORY PROVISION IN TRADEMARK
In the Trade Marks Act, section 9 states the provisions of registration of trademark and if a trademark simply describes the product or service, and are non- distinctive it can’t be registered. This rule aims to maintain uniqueness in trademarks.
However, there are exceptions. If a trademark becomes distinctive through its continuous and extensive use before seeking registration, it can still be registered. This concept is termed “acquired distinctiveness.”
The Act also addresses “well-known” trademarks. These are trademarks widely recognized by the public and indicate a connection between goods/services and the trademark owner. Think of brands like Pepsi, Reebok, and McDonald’s.
Additionally, Section 32 permits the presentation of evidence regarding trademark use during registration or legal proceedings. This provision is pivotal for demonstrating that a trademark has gained significance over time.
CASE LAWS
In the legal case of Living Media India Limited V. Jitender V. Jain and Anr. (2002), the court had to decide if the name and logo “AAJ TAK” were generic terms or if they held specific meaning due to prior use. Despite the individual words being descriptive, their combination had gained uniqueness through continuous use by the plaintiff, preventing others from using it.
In J.L. Mehta v. Registrar of Trademarks, the issue centered on the word “SULEKHA”, which means “good handwriting” in Hindi. While descriptive, it became a valid trademark when used for different items like fountain pens, showing that common words can gain trademark status when linked to other goods.
Metropolitan Trading Company v. Shri Mohanlal Agarwal revealed that one “ZODIAC” trademark gained distinctiveness due to prolonged use, while another with shorter use didn’t qualify. This demonstrated the importance of time in “acquiring distinctiveness.”
Ishi Khosla v. Anil Aggarwal showcased that a trademark needn’t be around for years to gain secondary meaning. An innovative idea can quickly become distinctive, depending on its appeal. This clarified that the time for “acquiring distinctiveness” varies case by case. There’s no fixed period for a trademark to become distinctive.
CONCLUSION
In conclusion, Indian trademark law aligns with international standards by placing restrictions on using common words as trademarks. Opting for everyday words as trademarks can lead to confusion among the public. However, there are instances where such descriptive words gain a unique meaning tied to a particular business. This concept, known as “acquired distinctiveness,” comes into play.
This principle is clearly outlined in Section 9 (1) (b) of the Trademarks Act of 1999 and is widely upheld by the courts. The courts carefully examine the evidence that highlights a trademark’s reputation. As a result, this aspect of the law offers solace to many well-intentioned trademark owners.
Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi. She is a Law Graduate from Vivekananda Institute of Professional Studies, GGSIPU.
June 24, 2023
Domain Brand Protection in India | Secure Your Online Identity
In the fast-paced landscape of today, domain names have become invaluable assets for business and individuals seeking an online presence.
As the importance of online branding continues to grow, the question arises: can domain name be registered as trademarks? This article delves into the multifaceted world of trademark registration and explores the intricacies surrounding the possibility of protecting a registration.
Understanding the Nature of Domain Names:
Before delving into the complexities of trademarks registration, it is crucial to grasp the nature of domain name.
Essentially a domain name is a unique alphanumeric identifier that serves as an address for websites on the internet.
It acts as a gateway for users to access specific online location and is often associated with a particular brand, organization, or individual. Domain names enable businesses to establish their online presence and connect with their target audience.
The Essence of Trademarks:
Trademarks are vital legal tools designed to protect distinctive symbols, name, logos or phrases associated with goods or services. By registering a trademark, individuals or businesses acquire exclusive rights to use that mark in connection with identified goods and services.
Trademarks serve a valuable asset, helping to establish brand recognition, consumer trust, and market distinctiveness.
Can Domain Names be Registered as Trademarks?
Although there are similarities between domain name and trademark, their functions differ significantly.
A domain name functions primarily as an online address, facilitating website accessibility, while a trademark acts as a source identifier for goods or services. However, under specific circumstances, a domain name can be registered as a trademark, subject to meeting certain criteria and legal considerations.
Distinctiveness: A Crucial Criterion
The key factor in determining the eligibility of a domain name for trademark registration is its distinctiveness. To obtain trademark protection, domain name should possess inherent distinctiveness, meaning it should not be generic, descriptive or merely functional. For instance, a domain name like “shoes.com” would be considered as generic and may face challenges in securing trademark protection, as it fails to provide unique identifier.
Secondary meaning:
Acquiring distinctiveness over time in cases where a domain name lacks inherent distinctiveness, it may still acquire trademark protection through the establishment of secondary meaning.
Secondary meaning refers to a situation where consumers associate the domain name with a specific source of goods or services, rather than its generic or descriptive nature. By extensively and exclusively using a domain name over time, it acquires secondary meaning, bolstering its chance of obtaining the trademark protection.
The likelihood of confusion:
A critical factor in trademark registration is the likelihood of confusion. If a domain name is identical or similar to an existing registered trademark for similar goods and services, it may result in consumer confusion.
Trademark examiner evaluate this likelihood by considering various factors, including the overall similarity between the marks, the relatedness of the goods and services, the strength of the existing trademarks, and the degree of attention consumers are likely to exercise in making purchasing decisions.
Domain name disputes and the UDRP:
In addition to trademark registration, domain names can also be subject to disputes based on alleged trademark infringement. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) provides a mechanism for resolving such conflicts. If a registered trademark holder believes that a domain name is identical or confusingly similar to their mark, and the domain name registrant has no legitimate interest in it, they can file a complaint to reclaim the domain name.
The UDRP aims to strike a balance between protecting trademark rights and maintaining a fair and efficient domain name system.
How the disputes of domain name can be settled in India?
The ICANN, the regulatory body responsible for overseeing domain names, has established the Uniform Dispute Resolution Policy (UDRP) as a global mechanism to resolve domain name disputes.
However, the jurisdictional challenge arises in the context of domain name disputes and trademark protection due to the absence of geographical boundaries on the internet. In India, the Indian Dispute Resolution Policy (INDRP) governs domain name disputes. The rules and procedures of INDRP have been approved by NIXI. Under INDRP, arbitration proceedings are mandated under the Arbitration and Conciliation Act, 1996 for domain names registered by NIXI.
Regarding the prohibition of another company from using a registered trademark as their internet domain name, it is not an automatic restriction.
The existence of a registered trademark does not necessarily prevent other companies, engaged in similar or different businesses, from using that trademark as their domain name. However, there are circumstances where a trademark owner can seek intervention from NIXI to prohibit the use of their trademark as a domain name.
In cases where a company uses a domain name that is already a registered trademark owned by another company operating in a similar or different line of business, causing confusion among consumers regarding products or services, NIXI may impose restrictions on the use of the trademark as a domain name by the other company.
Furthermore, if the commercial use of a domain name leads to the dilution of the reputation of a famous trademark, restrictions can also be imposed on using the trademark as a domain name.
Landmark Cases
In Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company,
In this particular case, referred to as the complainant, actively contributed the publication of articles in the popular daily newspaper like the “Economic Times” and the “Times of India”.
Further the complainant also published articles on the respective newspaper’s online version, accessible through the domain name “economicstimes.com” and “timesofindia.com”. Conversely the party known as the respondent registered domain names as “theeconomicstimes.com” and “thetimesofindia.com”.
The complainant alleged that the respondent’s choice of sponsored top-level domain name resembled theirs, aiming to capitalized on the complainant’s positive reputation without good intention.
Consequently, dispute was referred to the panel of the Mediation and arbitration Centre of WIPO.
After careful consideration, the panel concluded that the two domain names owned by the respondent should be transferred to the complainant.
In Rediff Communication Ltd. v. Cyberbooth & Another,
The Bombay High Court held that “a domain name is much more than an internet address, therefore, it is equally entitled to protection as a trademark under trademark law”.
In this case, the plaintiff has filed a case against Defendant Company that they use the mark/ domain name “Radiff” similar to their trademark “Rediff” to deceive the consumers. The High Court held that, with the “intention to deceive” the plaintiff, the respondent uses the domain name in bad faith.
Conclusion
Resolving domain name disputes in India requires a comprehensive understanding of trademark law, cyber-squatting issues, and available disputes resolution mechanism.
Registering domain name as trademark, monitoring infringements, and taking prompt legal action when necessary are vital steps in protection rights.
India offers various avenues for resolving domain name dispute, including litigation in courts, alternate dispute resolution mechanism like NIXI, WIPO and anti-cybersquatting provisions. Prompt and proactive action is necessary to safeguard brand reputation and online presence.
By staying informed, seeking legal advice, and implementing proactive brand protection strategies, individuals and businesses can effectively protect their domain names and maintain a strong online presence in India.
Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi. She is a Law Graduate from Vivekananda Institute of Professional Studies, GGSIPU.
Reference –
Lawcorner
June 17, 2023
What To Do If Your Business Name Is Trademarked By Another Company?
A trademark is a crucial component of a company’s intangible properties that often help to make a business successful. Consumers use trademarks to recognize products and services that meet particular quality, origin, and utility standards for a given brand. But what happens when your business name is found to be already trademarked by another company? Read further to find out!
What is a Trademark?
A trademark is the name, symbol, or brand of a good or service. Customers or clients use the trademark to identify goods or services. The Trademarks Act of 1999 governs trademarks in India.
Under the Act, trademark registration is voluntary and not required. The owner of a trademark receives numerous benefits from trademark registration. Protection against trademark infringement is one such advantage. When someone uses a trademark improperly, it is considered trademark infringement.
An individual or business can bring a lawsuit for trademark infringement if someone uses their brand without getting permission, which will stop the unauthorized use of their trademarks.
What should one do if my business name is trademarked by another company?
Before jumping to the solution it is important to understand if a problem really exists in the first place. Since there exists a wide range of businesses, its not possible to have a unique name for everyone but for this particular reason, distinctions have been made.
This is why it is crucial that you answer the below-mentioned questions when you find a trademark that is the same as your business name:
● Find out their area of business, does it fall in the same industry as yours?
● Do they deal in an identical or similar goods/ services to your business?
● How long have they been in their business and how long has the same trademark been used?
● Perform a quick public search to ascertain whether their trademark is registered or not
● Whether a reasonable buyer looking at the goods or services is likely to confuse the two or feel they are similar?
Possible Solutions
It is very important to know that India is a “first to use” country which simply means that if you are the prior user of a mark, you have superior rights to the person or organization who has subsequently registered it.
Therefore the plan of action highly depends on the fact as to who is the prior user of the mark.
If you are only at the stage of development and subsequent to the individual or company who has registered the mark it is suggested to change your trademark/ trading name to avoid any future prosecution or litigations. If you believe that though the marks are similar but there exists no reason of confusion due to territorial difference or difference in the industries, negotiating with the registered proprietor to reach to a possible situation which is beneficial to both the parties.
Whereas if there is a situation when even if your mark is not registered but you are the prior adopter and user of the mark, you have the right to take action of passing off against the registered proprietor.
Due to being an unregistered proprietor, you don’t have any remedies provided to the registered proprietor.
But if the case is as such where both the parties aren’t registered it all comes down to actual use, misrepresentation and damage to goodwill and reputation.
CONCLUSION
Though trademark registration is not mandatory but it is always advised for the adopters and users to get their brand name registered in order to get protections and rights under the act. Though an unregistered mark is still given protection under the common law rights but it becomes difficult to create a stands. It is always advised that in situation like these, one should consult the professions to find the best route possible.
Nagma Kacchi
Nagma Kacchi is a graduate of Mumbai University and she has an in-depth knowledge of branding and value proposition and has participated in various Intellectual Property webinars and is interested in exploring the legal world.
June 15, 2023
How To Register Your Domain Name In India
Registering a domain name is a crucial step in establishing your online presence. If you’re based in India and looking to register a domain name, this article will guide you through the process. From selecting the domain name to choosing a registrar and completing the registration, we’ll cover all the necessary steps to help you secure your online identity.
Table of Contents
IMPORTANCE OF REGISTRATION OF DOMAIN NAME
Domain registration is essential for establishing a strong online presence and building credibility. By registering a domain, you secure a unique online identity that makes it easier for people find your good ad services through an easier mechanism rather than trying to find your products on offline stores. It adds professionalism to your online image demonstrate your commitment to your brand on online platform.
Registering a domain gives you full control and ownership, ensuring that you have exclusive rights to use the domain name and deciding how it is utilized. Additionally, a registered domain allows you to create custom email addresses, enhances your search engine visibility, provides consistency in your online presence, future-proof your brand, and serves as a central hub for your online communication channels.
Before learning about process of domain registration you should learn about domain name protection in India. How domain name settled in India and many more.
PROCESS OF REGISTRATION OF DOMAIN NAME IN INDIA
1) Choosing A Domain Name:
The first step is to choose a unique and memorable domain name that represents your brand or website. Organizations usually use their trademark or combination of words that would incorporate their trademark in order to enhance their presence and search engine visibility.
2) Check Availability:
Once you’ve decided the domain name it is essential to check its availability. Various domain registrars provide search tools that allow you to verify if your desired domain name is available for registration. If your preferred domain name is already taken, consider alternative extensions or slight variations.
3) Select A Registrar:
Next you need to select a reputed registrar, that is accredited with Internet Corporation for Assigned Name and Numbers (ICANN), which is the nonprofit organization responsible for coordinating all of the numerical spaces on the internet. Popular domain registrars in India include Big Rock, GoDaddy, and Namecheap. To make informed choices one can compare prices, features, customer support, and user reviews.
4) Create An Account:
To register a domain, you’ll need to create an account with the chosen registrar. Provide accurate contact information, including your name, email, address and phone number. Ensure that the information you provide is up-to-date and correct to avoid any issue in the future.
5) Complete The Registration:
Once your account is set up, proceed with domain registration process enter the desired domain name and select the extension (e.g., .com, .in .org). Some registrar also offers additional services like privacy protection or website builders that you can consider based on your needs
6) Review And Checkout:
Before finalizing the registration, carefully review your domain name, selected extension, and any additional services or options. Verify that all the information is accurate and proceed to the checkout page. Here, you’ll need to make the necessary payment to complete the registration process.
7) Domain Ownership and Management:
After successfully registering your domain, you become the owner. It’s important to manage your domain settings and renew it periodically to maintain ownership. Familiarize yourself with the registrar control, which allow updating DNS (Domain Name System) settings, managing email accounts and making any necessary changes.
8) Renewal And Maintenance:
Domain registrations are typically valid for a limited time, ranging from one to ten years. It’s essential to keep track of your domain’s expiration date and renew it before it expires to maintain ownership. Set reminders or enable auto-renewal options provided by your registrar to ensure your domain remains active. Additionally, keep your contact information updated with the registrar to receive renewal notifications and other important domain-related communications.
DOMAIN DISPUTES IN INDIA
In India, if a dispute arises regarding a domain registered, there are specific processes and mechanisms in place to address such disputes. The primary avenue for resolving domain disputes is through the .IN Registry, which is managed by the National Internet Exchange of India (NIXI). NIXI has established the INDRP (Indian Domain Name Dispute Resolution Policy) to handle domain disputes in a fair and efficient manner.
Here’s an overview of the steps involved in resolving a domain dispute in India:
1) the Complaint: To initiate the domain dispute resolution process, the party claiming rights to a domain must file a complaint with NIXI under the INDRP. The complaint must strictly adhere to the INDRP rules and guidelines, providing necessary details such as the domain name in question, the complainant’s rights to the domain, and the grounds for the dispute.
2) Appointment of Arbitrator: Upon receiving the complaint, NIXI appoints a qualified arbitrator who possesses expertise in domain name disputes. The arbitrator must be independent and impartial, ensuring fair and unbiased resolution proceedings.
3) Notification to the Domain Holder: The arbitrator serves a notice to the domain holder, informing them of the complaint and providing a stipulated timeframe for response. The domain holder is granted an opportunity to present their defense, evidence, and arguments supporting their claim to the domain.
4) Examination and Decision: The arbitrator thoroughly examines the submissions, evidence, and arguments put forth by both parties. They consider various factors, including the similarity between the domain name and the complainant’s trademark or business name, the legitimate rights or interests of the domain holder, and whether the domain was registered and used in bad faith. Based on a comprehensive analysis, the arbitrator renders a decision.
5) Remedies and Enforcement: If the arbitrator determines that the domain should be transferred to the complainant, they issue a decision to that effect. The decision is binding on both parties, and the registry responsible for the domain’s management implements the decision, facilitating the transfer of the domain accordingly.
6) Appeal: In the event of disagreement with the arbitrator’s decision, either party has the right to file an appeal. The appeal is reviewed by a designated appellate authority, which carefully assesses the merits of the case. The appellate authority’s decision is considered final and binding.
CONCLUSION
Registering a domain in India is a critical step in establishing your online presence and should be approached with careful consideration and adherence to the necessary procedures. By following the step-by-step guide provided in this article, you can navigate the domain registration process effectively and protect your rights as a domain owner.
Start by selecting a reliable domain registrar that meets your requirements and offers the desired domain extensions. Conduct a thorough search to ensure the availability of your chosen domain name and proceed with the registration process by providing accurate and complete information.
Once your domain is registered, it is essential to stay informed about the legal framework and dispute resolution mechanisms in India. In the event that a dispute arises regarding your registered domain, it is crucial to be aware of the available options for resolution.
The primary avenue for resolving domain disputes in India is through the INDRP (Indian Domain Name Dispute Resolution Policy) managed by NIXI. Familiarize yourself with the INDRP rules and guidelines to understand the process and requirements for filing a complaint and engaging in arbitration.
Consider attempting negotiation or mediation as a first step to resolve the dispute amicably. If these methods fail or are not applicable, proceed with arbitration under the INDRP. Present your case effectively, providing evidence to support your claim and ensure compliance with the decision rendered by the arbitrator.
If necessary, be prepared to seek legal counsel from professionals with expertise in domain disputes and Indian intellectual property laws. They can provide guidance throughout the resolution process and represent your interests effectively, especially if the dispute escalates to legal proceedings.
By being proactive and knowledgeable about the domain registration process and the available mechanisms for dispute resolution, you can minimize potential conflicts and protect your rights as a domain owner in India.
Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi. She is a Law Graduate from Vivekananda Institute of Professional Studies, GGSIPU.
June 12, 2023
Effective Strategies to Respond to Trademark Objections
Intellectual property such as trademarks is crucial for a company. Numerous trademark applications are made each year but not all of them are accepted.
The truth is that some trademarks are not registered because they are either abandoned. In order to determine whether an applied trademark is eligible for registration the same goes through formality check and examination as per the provisions of the act to determine whether the same is liable to be refused as per the provisions of Section 9 and Section 11 or whether the mark has some other faults that needs to be cured. If the mark is not registerable as per the provisions of the Act, the Examiner issues an report stating the objections to which the Applicant has to responded as to why the trademark should be registered.
The question stands- How do you respond to Trademark Objection? In this article, we’ll discuss how to respond to trademark objections.
What is the difference between Objection and Opposition?
The fundamental distinction between a trademark objection and an opposition is that an objection to trademark registration is made by the examiner at a preliminary stage following the submission of the application. As opposed to this, trademark opposition is brought forth by anyone who has a problem with a trademark that has been registered after it has been advertised for 4 months in the trademarks journal.
Why is it Necessary to Reply to Trademark Objection
Here are some reasons for reply to trademark objection as soon as possible –
To Prevent Abandonment
To proceed to the next step in the registration procedure, you must submit a response to the examination report. As per the Trade marks Rules 2017, the Trademark Application would be deemed to have been abandoned if the reply to the examination report is not submitted within a month of the report’s dispatch date.
Establish your Mark’s Distinctiveness
The trademark objection reply letter gives the applicant the chance to explain why he or she is qualified to have their mark registered. One can present their views on why the objections do not apply to the TM application and highlight the distinctive qualities of the mark in a written response to the report.
How to File Trademark Objection Reply
It is mandatory to file a Trademark objection reply within the given time frame as to prevent the Application from getting abandoned.
Step-1: Analyze the Trademark Objection
The first and foremost step, is to analyze the objections that have been raised by the examiner and understand the reasons for the same. It will help you give clear and to-the-point replies.
Step-2: Drafting of Trademark Objection Reply
Moving on to the next step of the process, you need to draft your reply to the objections raised in the report. This should be done within a span of 1 month from the date when you received the notice.
Section 9 pertains to absolute refusal whereas Section 11 pertains to Relative grounds of refusal.
Depending on the objection, the Applicant has to establish as to how its mark is distinctive (in cases of Section 9) or how the applied mark is different from the mark cited in the examination report (Section 11).
The Applicant can rely on judgments, details and information about its mark not limited to use, goodwill, reputation, presence in the market or social media.
Step-3: Trademark Hearing
It the Examiner is not satisfied by the reply as submitted by the Applicant, a show cause hearing is scheduled where the Applicant or its authorized representative/ agent can make submissions as to why the mark should be proceed for the registration.
The Applicant can in support of show-cause hearing file documents such as extracts from internet/ social media/ e-commerce websites showing the use and presence of the mark. The Applicant can also attach the invoices pertaining to the goods/ services under the applied mark, any certification applied for in respect of the same, or any other document that support the Application.
Step-4: Publication in Trademark Journal
If the examiner if convinces with the submissions, the mark moves forward with the advertisement in the Trademark Journal. Whereas if the Examiner is not convinces either another hearing is allotted or the mark is refused.
Applicant if believes that the Examiner didn’t consider the submissions of that the refusal order doesn’t consist the reasons for doing so, can move a Review Application within a month from the order or an Appeal to the IPD within 3 months from the date of the impugned order.
Step-5: Registration
After publication, if any third party believes that the mark should not be registered, they have the right to oppose the mark within 4 months from the date of Application. If such an opposition is filed than the registration is delayed as the proceedings of Opposition take place. Whereas if no third-party issue is raised during that period, the trademark further proceeds toward registration, and a registration certificate is issued by the registry.
CONCLUSION
Filing a reply to Trademark Objection is quite important and should be done within the mentioned time and in the right way. It is a very crucial step in your journey toward getting registration and can make or break the case for you.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
June 10, 2023
How Fashion Companies Enforce Their IP Rights
The fashion industry is highly dynamic and that’s the beauty of it. But what keeps them motivated and protected? In this article we’ll discuss the different ways that help Fashion Companies enforce their IP rights.
INTRODUCTION
Fashion designing is a branch of arts that focuses on producing clothing and other items for daily life. A person needs to be artistic and imaginative to work as a designer.
The ideas of fashion designers are translated into clothing, footwear and accessorise through their strong visual imagination.
Fashion designers demonstrate more than just an interest in learning new things by reading books, periodicals, and journals about the history of fashion design and current trends. They have to be aware of the demands of the fashion industry, including the necessity to safeguard their intellectual property (IP). The fashion business generates and commercially exploits innovative ideas and creativity on a regular basis.
In order to gain the competitive advantage needed for success in the fashion industry, creativity is not only confined to the act of designing but also encompasses the marketing of items, whether they are high fashion or every day wear.
The worth of the fashion business is ultimately determined by all of this intellectual property connected to a distinctive brand. However, many companies, particularly those in the fashion industry, fail to protect their intellectual property. Because the IP regulations are so permissive, designers frequently “steal” ideas from one another in a sector that earns hundreds of billions of dollars annually and prides itself on creativity and aspiration. Business managers must quickly recognize these important intangible assets, as well as their business’s needs and relevance, and progress on them to protect their rights and use the leverage efficiently.
Fashion Design and IPR
The fashion industry is rife with plagiarism, but the consequences are particularly severe for up-and-coming designers for whom every sale is crucial. Gary Assim, partner and intellectual property specialist at the London legal firm shoosmiths, stated that imitations do “double damage.”
“First of all, it deprives the designer of the sales revenue from his or her product, which frequently represents the return on a sizeable investment in research and development.”
Additionally, it deprives the designer of the proper credit as the original developer.
A clothes designer’s legal rights might be advantageous in two different ways:
Protection: They can prevent someone from utilizing your product or textile without your consent, and they can prevent others from profiting from your labor.
Exploitation: By enabling you to enter into licensing agreements for your designs with third parties, they can make money off of your creations.
IP rights cover more than merely preventing copying. They might be seen as serving a more subdued purpose, namely identifying the material producer. Fashion firms can go to the next level of sophistication where they are proactively managing their IP rights separately from their business operations by taking a more media and entertainment industry-inspired strategy.
Fashion designers have access to a wide range of rights under intellectual property law. Some of these will develop naturally, like copyright, while others, like trademark registration, ask for registration.
How is IPR relevant to the fashion industry?
The fact is that IPR and fashion are inseparable. The designs that are regarded as fashions are the result of an individual’s intellectual inventions, and the law of our country aims to preserve those creations by granting them an exclusive right to use those creations and to be exploited for financial gain.
The legal system attempts to foster creativity by encouraging more people to come up with ideas that may ultimately fuel the expansion of an economy by adhering to the same premise.
The country will suffer severe losses if the aforementioned rules are ineffective in protecting creativity since no one will step forward to develop and no new works of art will be produced. As a result, it is possible to see the strong connection between IPR and fashion. The Trademark Act, Copyright Act, Designs Act, and Geographical Indication of Goods Act are just a few of the several laws that aim to safeguard the intellectual property rights associated with works produced by the fashion industry.
Need to Register
One effective way through which fashion companies enforce their IP rights is through registration. In fact, registered IP can be a valuable commercial asset.
A registered IP not just instills a right that can be enforced against infringement, but also provides an exclusive right that allows one to use the design and authorizes how other people may use the same, as specified in the registration. Just like any other asset, a registered intellectual property in the fashion industry, in the future, grows and can be sold too.
The legal protection of IP rights provides designers, artists, business people, entrepreneurs, and inventors with the exclusive right to use and control, and therefore profit from, their intellectual and creative work. IP is a very valuable asset for those in the design industry and an important differentiating factor between one designer and the next.
What is protected under IPR for Fashion Industry?
Types of IP Protection | What is Protected? | Explanation | What Are The Terms of Protection? |
Two and three-dimensional product designs (e.g. the texture of a fabric, or the shape of a skirt) | A product's functionality is not protected, only its external looks are. The registered design or the look of the whole or part of a product arising from the feature of, in particular, the lines, contour, colors, shape, texture, and/or materials of the product itself and/or its ornamentation, has the exclusive right to use, sell, or license to the owner. | Your design is originally protected by registration for ten years from the date of application or from the date of priority claimed. The design registration may be renewed for an additional five years. | |
Artistic Work, Literary Work, Music, Cinematographic films, etc | Ideas themselves are not protected; only the owner's creative expression of the ideas is. The copyrighted work may only be used, sold, or licensed by the owner. | A creative work's copyright is valid for 60 years following the author's passing. But if the artistic work is commercialized, mostly in the case of fashion industry, the same is not protected under copyright act. | |
Letters, numbers, words, colors, a phrase, sounds, scents, logos, shapes, pictures, aspects of packaging or any combination of the above-mentioned. | Trademark distinguishes a trader's specific goods or services from those of other traders. The trademark may only be used, sold, or licensed by the owner. | As long as the renewal payments are paid every ten years, a trademark is first registered for a ten-year period and remains so eternally. | |
Inventions | A patent safeguards an invention's operation or use. The invention's owner has the sole right to make use of, sell, or license it. | For all types of inventions, the patent is valid for 20 years from the date of filing. |
Infringement of IPR and Remedies Available to Fashion Companies
Infringement in layman terms can be said to be unauthorized use or commercialization of someone else’s Intellectual property. The term unauthorized means use by someone who isn’t the proprietor or the permitted user of the Intellectual property.
But the definition, grounds and remedies against infringement varies depending upon the Intellectual property who’s right is being violated.
Though broadly specifying there are two types of remedies:
1. Civil : where the aggrieved can take-
• injunction against the infringer
• compensation
• delivery up of infringing products
2. Criminal: where the infringer is penalized by way of penalty or imprisonment (as stated in copyright and trademark laws).
CONCLUSION
The ability to register allows fashion innovators to stop the exploitation or misuse of any original concepts, elements, or products. Designs and trends receive significant investment, which is subsequently shared with the public in order to boost their appeal and grow business operations.
Although the registration process is costly and time-consuming, it must be availed in order to prevent dishonest rivals from gaining monetary advantage because of such dishonest acts.
Naseem Sheikh
Naseem Sheikh is a trademark enthusiastic and has been practicing in intellectual property law for close to six years.
May 29, 2023
Strategic Insights into IP Licensing
Intellectual property (IP) is an intangible product produced thanks to the human mind. To put it in simple words, IP is a mental invention.
Such inventors are granted legal rights known as intellectual property rights (IPRs). Copyright, trademarks, patents, industrial designs, geographical indicators, are some of the examples of IP. To ensure that ideas are safeguarded and commercialized, governments worldwide have passed laws, regulations policies and treaties.
The objective is to safeguard original ideas and works from competitors who could simply duplicate and monetize someone else’s hardwork.
IP commercialization turns a concept or innovation into a monetary-valued good or service. The most common method for monetizing creativity is the selling of such a good or invention. IPRs are quite important in these situations. It stops rivals from using protected features in an unlawful manner.
In this article, we’ll be discussing in detail the role of IP licensing in Commercializing Technology Innovations. Keep reading!
Innovation and IPR
As per World Intellectual Property Organization (WIPO), “Innovation means doing something new that improves a product, process or service. Many innovations can be protected through intellectual property (IP) rights.”
IP rights make a company’s inventions, including products and services, visible and aid in defining the distinctiveness of its offerings. While certain intellectual property rights are inherent to the creation such as the copyright, others require formal registration such as an industrial design, patent, trademark, etc..
Commercializing Innovation
Success in today’s fast-changing technological environment depends on innovation and taking one step ahead than the rest. Industry changes, as well as changes in how people live, work, and connect with the rest of the world, could stem from the introduction of new products and technology.
On the other side, bringing new technology or product to market is often a challenging and expensive process requiring significant investments in R&D, manufacturing, marketing, and distribution.
By utilizing licensing and technology transfer, businesses can get around these limitations and provide new products and innovations to the market faster and more effectively.
Under this process, one business gives another the right to use its intellectual property (IP), such as patents, trademarks, copyrights, and trade secrets, in return for a fee or royalty. Licensing may be a good option for businesses that have produced significant intellectual property but lack the funds, know-how, or market presence to commercialize it.
Role of IP Licensing in Commercializing and Different Ways of Achieving It
Businesses can generate income, broaden their market reach, and make use of the skills of their partners to more quickly and successfully bring their products and ideas to market by licensing their intellectual property to other companies.
Here are the different types of licenses that are used for this purpose:
1. Exclusive License: An exclusive license gives only one party the sole authority to utilize the licensed Intellectual Property in a particular industry or region. This kind of license can help licensees who want to stop rivals from utilizing the same intellectual property, but it can also reduce the market for the licensed technology or product.
2. Non-Exclusive License: A non-exclusive license allows the licensor to give multiple parties comparable licenses to use the licensed intellectual property. For licensees that want to avoid the expense and complexity of an exclusive license, this kind of license may be advantageous, but it could also lead to increased competition and decreased profitability.
3. Cross-License: A cross-license is a contract allowing two businesses to use each other’s intellectual property. Companies with comparable technology or goods may find this kind of license advantageous since it can lower licensing costs and speed up product development.
4. Sub-License: A sub-license is a license given to a third party by the licensee. This kind of license might be advantageous for licensees that want to increase their market reach or profit from their licensed intellectual property.
Add Your Heading Text IP Licensing and Technology Transfer for Commercialization
The process of formally transferring a new technology, innovation, or knowledge and its associated intellectual property rights from the creator (inventor) or owner to a second party or organization is known as technology transfer. This is typically done in order to commercialize the technology on a larger scale. In order to assist researchers and academics with this procedure, the majority of contemporary institutions have specialized staff in a Technology Transfer Office (TTO).
Another tactic that companies might use to advertise new goods and technologies is technology transfer. Knowledge, skill, and technology are transferred across organizations through technology transfer, usually from a research institution to a business. Businesses that lack the money, know-how, or access to state-of-the-art research and development facilities required to independently create new goods and technologies may benefit from technology transfer.
Technology transfer can take many distinct forms, each of which has special qualities and ethical implications. These consist of:
1. Licensing: As was already said, licensing is a crucial part of technology transfer because it enables companies to use and gain access to already-developed innovations produced by academic institutions
2. Spin-Off Companies: Companies formed to commercialize innovations created by research institutes are known as spin-off companies. These businesses are frequently founded by researchers or businesspeople who have recognized a commercial demand for a specific technology.
3. Joint ventures: Partnerships between research institutes and companies are created in order to develop and market novel goods and technologies. Joint ventures can be advantageous for companies looking to share the expenses and risks of product development while utilizing the know-how of academic institutions.
4. Collaborative Research Agreements: Collaborative research agreements are contracts that allow corporations and research institutions to work together on joint R&D projects. These arrangements might be advantageous for companies that wish to work with academic institutions while also having access to cutting-edge research facilities and expertise.
Commercialization and monetization through exclusive licensing agreements: Pros
● A common strategy for commercialization and monetization is to sign an exclusive licensing agreement to the company’s core patents in order to secure a royalty stream. Licensing out IP can generate a stream of licensing royalties.
● It can always help you promote your brand further.
● It will further possibly influence innovations and inventions.
● It adds to another income stream of the business.
Case Studies
A few examples are mentioned below that highlight the positive impact of IP licensing in commercializing technology innovations:
1. Biocon Ltd.
On the tenets of innovation and fierce intellectual property protection, Biocon was established. The company’s innovations support its success on the one hand, while on the other hand, they have a number of positive societal repercussions, all of which are substantially aided by IP. Because it enables the business to either license in or licenses out technology and intellectual property for research and development projects, licensing is a vital and essential component of Biocon’s partnerships and collaborations.
2. Tropical Botanical Garden and Research Institute (TBGRI)
The ‘Jeevani’ drug, derived from the arogyapaacha plant, was developed by the Jawaharlal Nehru Tropical Botanical Garden (JNTBGRI). In 1955, they agreed to a licensing deal with Arya Vaidya Pharmacy Ltd. and made $50,000 USD. JNTBGRI faced certain difficulties since it lacked worldwide IP protection; as a result, it eventually understood that IP protection is one of the most important tactics for success.
3. Dr. Milind V. Rane / Unidyne Energy Environment Systems Pvt. Ltd.
When it came to the inherent advantages of utilizing the patent system efficiently to commercialize the MHRU, Dr. Rane was well aware of them. Although working together to produce intellectual property has many benefits for both corporations and inventors, benefit sharing can cause conflict if contentious issues are not settled beforehand. The work of Dr. Rane and Unidyne illustrates that these difficulties can be addressed with sufficient contract requirements and responsibilities.
4. Council of Scientific and Industrial Research
Through smart use of the IP system and R&D, CSIR was able to successfully license a technology that has the potential to provide affordable, life-saving medicine to people all over the world. By granting Nostrum Pharma a license to use its medication in 2010, CSIR earned a total of US$150 million.
Summing Up…
The world has actually become smaller due to globalization and the development of digital technologies, increasing the need for protection. Building an IP asset is just as important as protecting its ownership, management, and commercialization. It’s past time for corporations to grasp the advantages of these rights and make use of them.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India & Delhi High Court Bar Association. He regularly appears before various judicial and quasi-judicial forums including various High Courts, District Courts, Trademarks Registry, IPAB, and Customs office.
May 27, 2023
The Future of Intellectual Property Law and Policy In Light Of Emerging Technologies
Intellectual property (IP) law has become increasingly closely related to technical advancements and the laws that govern them throughout time.
New waves of technology present ongoing challenges to IP law because it is frequently necessary to offer protection for them.
New technologies also present fresh opportunities to abuse protected works. In fact, IP law and these rules have been in ongoing conversation as technology has evolved into an autonomous subject matter controlled by distinct requirements.
The boundaries of the field have been dramatically changed by this interaction between IP law and technology. In this article we will examine the effect of emerging technologies on IP and explore the various possibilities in brief.
The Impact of Emerging Technologies
It is no hidden fact that the emerging technologies play a huge role in governing the future of IP implementation and on the laws that govern it in India.
Artificial intelligence (AI), blockchain, and the Internet of Things (IoT) are the beginning of a new era for the world of Intellectual Property Rights. They are already contributing to simplifying the mere existence of Intellectual Property in India, and also encourage innovation. At the same time, these technologies are raising new legal questions, different interpretations and challenges, particularly in the areas of copyright and patent law. For instance, as AI becomes more involved in the creative process, it raises questions about who should be credited as the creator of a work. Similarly, the use of blockchain for IP registration and management is creating new opportunities for innovation and efficiency. Learn more about AI Effect on Intellectual Property
An Overview of Important Changes and Developments in India's IP Landscape
The intellectual property (IP) landscape in India is changing and expanding along with the country’s economy.
The future of IP law in India is continuously changing, from new laws and regulations to changing market trends and cutting-edge technologies. Here, we take a closer look at some of the major predictions and trends influencing India’s IP legislation in the future.
The Evolution of Digital IP
The expansion of digital IP is one of the main trends in IP law. Businesses are relying more and more on intellectual property (IP) to secure their online assets as digital technologies like the internet, social media, and e-commerce are used more often. Due to this, there has been an increase in legal issues involving digital IP in India, including those involving trademark and copyright infringement, domain name disputes, and cybersecurity breaches.
This has broadened the horizon of this field and encouraged the legal fraternity to explore the roads less taken to understand the intricacies of IP more closely.
Focus on Patent Protection Has Increased
The increased attention being paid to patent protection is another development in IP law.
Strong patent protection is becoming increasingly important as India’s technology sector continues to expand in order to encourage innovation and draw outside capital.
The National IPR Policy and the Patent Prosecution Highway (PPH) programme are only two of the many policies and initiatives that India has implemented in recent years with the goal of enhancing patent protection.
Another fascinating programme recently introduced by the Indian Patent Office is expedited patent evaluation with a focus on entrepreneurs.
Addressing India's Trademark Pendency
For many years, trademark pendency in India has been a major problem, with many firms having to wait a very lengthy period for the processing of their trademark applications.
The Indian Trademark Office has made efforts recently to alleviate this problem and enhance the effectiveness of the trademark registration procedure, nevertheless.
The adoption of an online application system, which has expedited the application process and decreased the time required to file applications, has been one of the most significant advances.
Furthermore, the Trademark Office has implemented a system of expedited assessment for some sorts of applications, such as those pertaining to startups, which can aid in speeding up the procedure for enterprises that need to protect their intellectual property rapidly.
In order to clear the backlog of outstanding trademark applications, the Trademark Office has also taken action. In order to ensure that applications are handled quickly and effectively, it has, for instance, increased the number of examiners and implemented a system of random application allocation to examiners.
The pendency of trademarks in India has been positively impacted by these initiatives, and wait times for trademark registration have dramatically decreased recently.
As a result, companies wishing to protect their trademarks and intellectual property in India may do so more quickly and effectively, which makes the country more appealing as a location for international investment and commercial expansion.
Other Benefits of Technology in IP
• Organizations are able to set up Trademark Monitoring system, which not only assists but reduces the burden manifold for them as well as the law firms to continuously and vigilantly keep an eye on possible infringements.
• Getting assistance in drafting error free IP Applications.
Possible Threats and Challenges for IP
Every coin has two sides. While we’ve actively celebrated the positive impact of emerging technologies on IP, one simply cannot ignore the possible threats that it may pose too in near future. If one does not act on time, these challenges hold the power to create uncontrollable chaos.
The advancement of AI technology presents several challenges for intellectual property. For instance, it should be emphasized that AI can be used to remove digital content watermarks and to create “smart imitations,” which refers to figuring out the murky areas where a candidate might create an infringement-infringing design or utilize a corporate identity without being held accountable.
According to predictions on the danger posed by deepfake technology, up to 90% of web material could be produced artificially by 2026. It was determined that new kinds of crime will need to be policed as a result of the influence that such technology has on privacy and personal security.
Another fear that comes up with increasing advancement in how technology can assist the violators in finding the loophole.
The Patent is an invention which is novel, inventive and non-obvious. To determine the same, the invention is usually compared to prior arts. With better softwares, the infringers and violators can manipulate the prior work in a way that the same is not detected and mere cosmetic changes would provide them with protection and violate the rights of the original inventor.
Conclusion
In conclusion, a number of significant trends and developments, such as the growth of digital IP, increased emphasis on patent protection, modifications to trademark law, and the influence of emerging technologies, are expected to have an impact on the direction of IP law in India in the future.
The only question that still stands is “whether it will be for the good or not?”. Before we find the answer to this burning question, to manage this emerging change positively businesses and legal professionals need to be informed of the most recent developments and adjust their strategy as these trends continue to shift. By doing this, they may successfully negotiate India’s complicated IP legal system and stay on top of this quickly developing area.
- Naseem Sheikh
- May 27, 2023
May 23, 2023
The Role Of IP In The Fashion Industry
The Role Of IP In The Fashion Industry: Protecting Designs, Trademarks, And Copyright
The fashion industry is always changing, imposing new trends and styles on the entire world. The intellectual property (IP) rights derived from these creations must therefore be safeguarded. This encompasses a range of additional intellectual property rights that can be secured, from the industrial design of each garment manufactured to the protection of the name or trademark by which such garments are recognized in the market.
The multi-million dollar fashion industry has made intellectual property a crucial component that is helping to drive corporate growth and boost organizations’ positions in the market. The development and monetization of a powerful brand that represents them and has the IP protection necessary to safeguard its rights against competitors show the organizational capacity of a firm and its potential for expansion.
The monetization of a trademark is accomplished by producing marketable items, such as prints and designs utilized in various clothing items, through which a specific brand is identified and favored in trade.
The many intellectual property rights that can be safeguarded in the garment sector will be covered in more detail below in this article.
What is Intellectual Property in the Fashion Industry?
New fashion trends are currently having a big impact on the fashion industry globally. Fashion today encompasses more than simply clothes and accessories. Intellectual property rights fall under the category of intangible rights. The owner’s creative process produces IP rights. It is used to protect a notion or idea. Various types of intellectual property rights, such as copyright, trademark protection, and patent registration, amongst others, may be used to safeguard works based on that particular notion. Intellectual property rights also have a creative and expressive quality. They are utilized in the fashion business in a variety of ways.
Given the creative character of the fashion industry, which increasingly goes beyond only fashion garments, IP regulation both helps and has a big impact on the fashion industry.
Importance of Intellectual Property Rights in the Fashion Industry
The absolute essence of the fashion industry is to inspire and entice consumers with their carefully curated garments. In today’s era when change is the only constant, renewing old styles has become a recent favorite. These often become works of art and classics of fashion and emphasize the importance of protecting intellectual property rights as a fundamental in the world of fashion.
It is the only way to create a safe and healthy environment for designers to have the peace of mind that their creations will be properly protected.
A brand’s reputation is the pure basis of its success. While everyone is aware of markets like Sarojini, Palika, and Janpath for their copies available at throwaway prices, prevention of counterfeiting is indeed extremely difficult. Nevertheless, you can always reduce or completely eliminate risks and damages by investing in your intellectual property rights.
Types of IP rights that are applicable to the fashion sector
Intellectual property rights are a collection of copyrights, patents, designs, and trademarks. These types of IP Rights provide protection for fashion designs and items under IP legislation against piracy and imitation. Fashion designers and other creators are significantly protected from the dangers of copying and counterfeiting because of IP.
Trademarks
To distinguish one brand from another, trademarked signs, symbols, logos, and markings are used. It avoids clients’ “probability of confusion” problems. Every product has a distinctive brand that makes it stand out, that conveys a lot without ever saying a word. For instance, both the “Jaguar” and the “Tick” from the Puma and Nike brand pass for trademarks.
The sector most impacted by trademarks is the fashion industry. Any trademarked brand that wants to be protected against imitation must be registered. By registering their trademarks, brands are protected from having an identical mark that can deceive and turn away potential customers. Trademark registration is governed by the Trademark Act of 1999. Know how to trademark my brand
Trade Dress
When a thing gets a secondary significance, trademark protection for intellectual property rights enters the picture. Consumers can infer the manufacturer of a product from the aesthetic characteristics of the product or its packaging.
It distinguishes between a product’s visual and physical characteristics and determines its origin. A component or facet of trademark law is trade dress. Any product’s external design, internal layout, packaging, or interior might be considered a trade dress. For example, the distinct style and color of an Adidas shoe or the Burberry ‘check pattern’.
Design Registration
Trademark and design registration provides intellectual property rights protection when something acquires secondary significance. The aesthetic qualities of a product or its packaging might be used by consumers to infer the producer.
It determines a product’s provenance and distinguishes between its aesthetic and physical qualities. Trade dress can be protected through design registration for any product’s exterior design, internal layout, packaging, or interior. It also includes the appearance and sound of any products or items, such as the distinctive design and hue of an Adidas shoe. The Designs Act of 2000 safeguards the aesthetic qualities and design components of any design, including its shapes, arrangements, patterns, ornamentation, lines, and hues. The protection offered by the design legislation only applies to original designs.
Copyrights
Copyrights are used to protect literary, dramatic, artistic, and musical works. It is governed by the Copyright Act of 1956. Giving the owner of a certain copyright financial compensation encourages the development and production of new artistic works. A design’s structural and graphical elements are shielded by copyright. It is not necessary to defend the beneficial part of it. However, the fine line between copyright registration and design frequently blurs.
Trade Secrets
By using software tools for fashion design, computer-implemented, software-based business models, and logistics management of the full value chain, it alludes to the fundamental ideas. A corporate concern can govern its market share, profit margins, differentiation, and innovation through the protection of information by IP, aiming for a well-established market position and reducing the danger of IP infringement. In the eyes of the investor and customer, IP protection of assets provides a general impression.
Some examples are: Zara used an innovative information technology system to reduce its production cycle to just 30 days, compared to its competitors’ range of 4 to 12 months. Additionally, a cutting-edge distribution system with over 400 chutes and 200 km of underground traces makes sure that the finished goods are dispatched and reach retailers in under 48 hours.
Customers can design and purchase garments through the online store of the clothing platform Shirtsdotnet. The provision of mass customization clothing solutions has been accomplished through the use of proprietary software that is shielded as a trade secret.
Patents
Patent law protects a design’s creative element in the fashion industry. For a design to be registered as a patent, it must be noble and distinctive. Additionally, the design must be technically and scientifically feasible. However, the fashion industry rarely makes use of patent law. They are more common in the technology sector. The procedure of registering a patent is expensive and time-consuming. Due to its high level of change, the fashion industry has limited value in this market. Nonetheless, there are some great examples that make use of this IP right:
- For the purpose of protecting textiles, the Danish biotech company Novozymes has created an enzyme and cellulose-producing microbes. This gives the denim a weathered appearance by removing some of the indigo pigment. This is currently on a global list for production procedure improvement.
- The Suberis fabric by the Italian firm GrindiSrl is another creative material. It is thought to be as light as silk, as smooth as velvet, and as fireproof as well as machine washable and waterproof. This is mostly utilized in the production of apparel, footwear, and athletic wear, among many other uses.
- The famous Bella Hadid “spray-painted dress” by Coperni runway sans clothing is one of the most recent and talked about examples today.
Some Examples of Intellectual Property Disputes in the Fashion Industry
● My Other Bag v. Louis Vuitton
This example of copyright violation is well-known. In this instance, the company ‘My Other Bag’ created a spoof tote bag with a print of a Louis Vuitton image. My other bag was the target of a lawsuit by Louis Vuitton for design and copyright theft.
In this case, the court ruled that the parody accounts could convey two contemporaneous, diametrically opposed meanings. Louis Vuitton, the petitioner, complained that the defendant had attempted to imitate their copyrighted design. The petitioner added that it is attempting to defend its IP rights in its reply. The court rejected the accusations since the defendant’s offering was a parody.
● Puma v. Forever 21
Infringement of copyright and design are issues in this case. Puma sued forever 21 and the latter have imitated the limited-edition sneakers created by well-known singer Rihanna under the Puma brand. The singer Rihanna personally developed the Creeper Sneaker, Fur Slide, and Bow Slide for the Fenty line.
The court in this case decided that a product does not automatically fall under the umbrella of copyright production merely because a particular celebrity is associated with it or has supported it. Copyright is issued based on the originality and novelty of a particular design as well as the design’s individuality. There was no mention of Rihanna in the lawsuit or in this case.
● Unicolor, Inc. v. Urban Outfitters, Inc.
According to the court, the print pattern of a woman’s garment can be protected by copyright, and any company that copies the design or pattern will be held liable for infringement in this case. So, a print pattern on garments or a specific shoe style can only be imitated. The typical copyright duration is the lifetime of the author or artist plus 60 years beginning with the year of death.
● Ritika Apparels v. BIBA
In this case, a clothing company copied designs from one fashion house and used them in their own product, resulting in Ms. Ritu Kumar suffering a loss of income. The Copyright Act’s Section 15(2), states that if a creation that qualifies for design law protection has not been registered with the design authorities and has been copied more than fifty times, the copyright in the same product will be deemed permanently lost, has a flaw that allowed BIBA to get away with it.
● Fossil, Inc. v. Romag Fasteners, Inc.
One of the most well-known examples is this. After bringing a trademark and patent infringement case against well-known watchmaker Fossil, Romag, a modest company with headquarters in the US, quickly gained recognition. A trademark is frequently used to determine consumer interest and attention since the products are distinctive and innovative in concept.
● Star Athletica, LLC v. Varsity Brands, Inc.
The dispute, which was heard by the US Supreme Court, concerns the copyrightability of cheerleading uniform designs and the idea of “separability,” which is a need for clothing or another usable item to be covered by US copyright law. Clothes, dresses, shoes, purses, and other utilitarian products are not covered by copyright protection as a whole because the law does not aim to protect or establish a monopoly over them. In order to qualify for copyright protection in the United States, a design element must be able to be physically removed from a garment or other useful or functional object. Since only specific components of their outfits, rather not the entire item, are protectable, the whole situation has long been a big source of annoyance for American designers.
● Parfümerie Akzente GmbH v. Coty Germany GmbH
The case involving third-party internet retailers like Amazon and luxury cosmetics maker Coty led to this significant ruling. In this case, the Court of Justice of the European Union (CJEU) determined that luxury brand owners are permitted to limit the sale of their products by their authorized distributors to online third-party platforms, such as Amazon, in order to safeguard the luxury aspect of their goods.
Determining whether these restrictions violated European competition laws was the case’s original goal. However, it is also very much an IP-related matter because it focuses on how trademark owners can safeguard the value of their premium brands when their items are sold by authorized distributors to unaffiliated third-party online marketplaces.
The CJEU effectively ruled in this case that Coty, which holds the licenses for a wide range of branded fragrances like Calvin Klein, Prada, and Marc Jacobs, has the right to prevent brands from selling their goods on independent online retail websites.
Benefits of Having Intellectual Property Rights in the Fashion Industry
=> Strategic assets and efficient marketing
A strong and well-known brand is recognized for its strategic assets and efficient marketing. The brand’s reputation is essential for luring new customers and promoting corporate growth. For this purpose intellectual property rights must be distributed and used wisely. IP rights frequently result in a brand’s reputation progressing. Hence, to maximize output and growth, a brand might distribute and monetize its intellectual property rights in a number of ways.
=> Long-term growth and reputation
Since everyone is seeking to get a competitive edge in today’s world of counterfeit goods by adopting immoral strategies like copying, imitating, and counterfeiting, it is essential to recognize, establish, and register intellectual property rights. In the digital age, registering an IP address is a simple and inexpensive process. Spending money on IP creation leads to a corporation’s long-term growth. As a result, a brand gets the right recognition.
A brand’s reputation can be improved via IP rights. Popular fashion brands like Zara and Sabyasachi are frequently seen by customers as being more dependable and sincere. Consumers commonly relate personal values to brand ideas. Having a strong portfolio of your intellectual property rights is just as important as registering those rights. In order to make intellectual property rights more appealing to customers, they should be commercialized in a novel way. In addition to everything else, it’s important to invest in a strong marketing and HR team, especially today as the entire world is digital.
=> Builds the trust and interest of customers
Geographical markers can help improve a brand’s image of quality and assist customers in determining the product’s origins. With the help of carefully established IP rights, a brand’s overall reputation can improve and its position in the market can be solidified. It gives you a competitive advantage as well.
CONCLUSION
Today’s market is rife with competition. Businesses must now more than ever compete in a much bigger market. The brands must therefore expand their online and worldwide presence. In order to increase their global footprint, international IP rights registration is necessary. To establish their presence online, an effective internet marketing strategy is needed. Additionally, it is essential to safeguard your online assets, such as by registering domain names.
Fashion retailers have access to a range of e-commerce websites to showcase their products. This will gradually increase their visibility and guarantee that their authors receive the right recognition.
All businesses must establish and keep a strong brand identity. To promote further growth in the fashion industry, intellectual property assets must be distributed and made commercially viable.
- Apoorva Sharma
- May 23, 2023
May 16, 2023
Trademark Monitoring
The Importance of Trademark Monitoring In the Digital Age
Building a company and its brand name takes countless efforts and energy. If the brand is violated in any way, they risk losing their goodwill and reputation. As a result, it becomes crucial for companies to register their trademarks in order to protect their brand against infringement. However, submitting the application and obtaining registration is just the start. Every organization needs to be on the lookout for companies that might use their trademark or a mark so similar to it that it would cause confusion or deception. When this happens, trademark monitoring is suggested.
What is ‘Trademark Monitoring’ you ask? In this article, you will get a brief insight into this subject and how to prevent it.
What Is Trademark Monitoring?
The technique of continuously monitoring and analyzing how other businesses are using a registered trademark in commerce is known as trademark monitoring.
It requires keeping a watchful eye on the brand to stop infringement, misuse, dilution, or counterfeiting of the goods or services.
Trademark monitoring is done to protect the brand’s identity, reputation, and consumer trust. Additionally, trademark monitoring aids in promptly spotting any potential dangers so that suitable precautions can be taken to safeguard the brand from any harm.
Effective trademark monitoring to safeguard intellectual property rights requires both proactive and reactive strategies.
What Is The Importance Of Trademark Monitoring?
With more brands entering the physical and online markets, the importance of trademark monitoring has increased.
An essential step in successfully pursuing your trademark rights is the early detection of cases of infringement.
The initial stage of identifying infringing trademarks aids in the development of misuse evidence that is used to prosecute them in court. Furthermore, the threat of potential legal action for trademark infringement serves as a deterrent for dishonest competitors who want to capitalize on the goodwill of your carefully created trademarks.
Trademark monitoring is essential in the contemporary digital world because it has become simpler for infringers to use the brand without being noticed. By keeping an eye on the internet market, you can spot and stop infringement, safeguarding both your trademark and your customers from damage and misunderstanding.
What Are The Benefits Of Trademark Monitoring?
Any company that values its brand and wants to protect it from threats must use trademark monitoring. Some advantages of trademark monitoring include the following:
- Prevention of Infringement
Trademark monitoring searches for infringement in the offline and online worlds and promptly notifies the company of a potential threat. The use of a brand’s exclusive trademarks without the owner’s consent, authorization, or license constitutes trademark infringement. Furthermore, in this day of a globalized economy, trademark infringement is on the rise. With the aid of the most recent techniques and technologies, a trademark monitoring service increases the efficiency of infringement searches. The number of infringement cases is decreased by early detection of violations and the implementation of corrective actions.
Trademark dilution and infringement are terms that are frequently used interchangeably. But there is a slight distinction between the two. While customer misunderstanding is a factor in infringement, dilution can happen even when consumers are fully aware that copying is taking place.
- Early detection of violations
Trademark monitoring, which helps firms swiftly detect any alleged infringing behavior, can enable early infringement identification. This is important because the longer a breach persists, the harder it will be to stop it and the greater harm it might bring to the company.
- Protection Against Knock-Offs
Businesses can find counterfeit products using their brand and stop their sales of them with the aid of trademark monitoring. The difficulty of counterfeiting is getting worse for businesses everywhere.
- Safeguards Brand and Customer Trust
Being noticed by customers in a world full of new and developing businesses is a difficult task. One of the most efficient ways to foster brand loyalty is through careful brand nurturing. Businesses may make sure that their brand is exclusively associated with the goods or services they provide by keeping an eye on the trademark. This helps maintain consumer confidence and brand reputation.
- Prevention Of Trademark Dilution
The distinctiveness of the original mark may be compromised when a third party adopts a mark that is confusingly similar to a well-known brand. The unapproved use of a trademark that lessens the originality of a brand is referred to as trademark dilution. Market dilution can take many different forms if it is not controlled. Trademark surveillance prevents imitation and controls dilution activity. Additionally, it prevents the market from being overrun by cheap imitations of the brand’s goods.
- Keep up with the competition
Additionally, trademark monitoring provides information about your competitors’ global strategies. While keeping an eye on things, one could notice fresh changes that could be crucial in drawing customers’ attention to your brand. A trademark is a valuable asset, so it is important to research how the competition is faring in this area.
- Ensure Damage Control for the Present and Future
In some cases, a trademark may be worthless or at the bottom of the popularity scale. That does not, however, mean that it won’t climb soon. Finding low-lying trademarks with enormous potential is one of the goals of trademark monitoring, and you should adjust your brand strategy accordingly to prevent potential present and future harm.
- Counter against Doctrine of Laches
Typically, a defendant in a legal case will make the doctrine of laches an affirmative defence. The unreasonable delay in pursuing a claim prevents a party from bringing it up. By identifying potentially controversial businesses and trademarks early on through trademark monitoring, a strong argument against the doctrine of laches can be made.
How Does Trademark Monitoring Work?
The act of closely observing how your registered trademark is being used and identifying any potential trademark infringements is known as trademark monitoring. The process of trademark monitoring involves routinely looking for any instances of unlicensed use of your trademark on the internet, social media, or other platforms. The following steps are part of the monitoring process:
- Step 1: The first thing to do is to find the registered trademark that needs to be kept an eye on. This refers to the trademark’s name, emblem, or other distinctive feature.
- Step 2: You must develop a monitoring criterion after selecting the trademark. The trademark that you want to monitor’s keywords, phrases, and variations.
- Step 3: Trademark monitoring involves routinely monitoring online activity on sites like social media, websites, and e-commerce platforms in order to avoid any unauthorized use of the trademark. Either manually or with the use of specialized software, this can be accomplished.
- Step 4: It will be informed and alerted if any infringement behaviors are discovered during the monitoring process. Analyzing the outcomes is crucial in order to determine the seriousness of the violation and the appropriate line of action.
- Step 5: If trademark infringement is discovered, you must take legal action to defend the brand. This can require filing a lawsuit to defend the trademark.
Consequences of Not Monitoring Your Trademark
Despite all of its benefits, you could still be wary of ongoing trademark surveillance. Understanding what occurs if you don’t have a strong trademark monitoring plan is therefore vital. Failure to keep track of the registered trademark can have detrimental consequences for the business. Here are a few to begin with:
1. Loss of Trademark Rights: If your trademark is not regularly monitored, it might be used so frequently in the market that it stops serving as brand identifier. Long-term use of your trademark by third parties could undermine your case and result in the loss of your trademark rights. If the infringer is a rival offering services and goods that are similar to yours, the situation gets even more serious.
2. Reduced Brand Value: A trademark is an intangible asset that has a high market value. Years of careful planning go into developing a brand, and a trademark is a crucial component of the branding strategy. Some of the most well-known brands in the world are worth billions of dollars. Uncontrolled and unauthorized use of a trademark has a negative effect on brand value. Customers are less likely to interact with a brand that does not value uniqueness. In addition to customers, other stakeholders like creditors, suppliers, etc. are hesitant to sign long-term contracts with the company. The organization has a financial loss as a result of diminished brand credibility.
3. Loss of Uniqueness in a Brand: A spectacular product or service is not sufficient in and of itself. One needs to generate the correct amount of buzz around the brand in order to leave a lasting impression on the target market. Because of this, marketers invest a lot of time and money in creating a compelling narrative. It is as crucial to defend your brand with trademark monitoring after you have established one. An attitude of complacency can result in imitators gaining from your success while dissipating the brand’s uniqueness.
How to Monitor Your Trademark?
Since trademark monitoring is a vital organ when it comes to protecting the brand and intellectual property. Here are some ways to monitor the trademark:
- Seek the help of a trademark attorney
- Setting up alerts and implementing social media monitoring
- Utilizing trademark monitoring services
- Conduct regular searches
Conclusion
A vital part of preserving your brand and your rights include keeping track of your registered trademark. Staying vigilant and keeping an eye out for any possible infringements comes part and parcel of protecting your trademark. Any failure to act on time can result in a loss of trademark protection, legal disputes, and damage to the reputation. However, by proactively hiring an attorney or setting up alerts and using trademark monitoring services, the business can effectively protect its registered trademarks. As the trademark is essential to the business, protecting it should be a top priority.
frequently asked questions
By submitting an application under the “Expedited” system, you can hasten the registration of your trademark in India. This option is offered for trademark applications and can lead to quicker processing timeframes. An Applicant after filing the trademark application can file TM-M for expedited registration and fast track the registration process.
Indian Trademark Registry provides free public search portal where anyone can look for the trademark they desire to apply, and find if the trademark is available or is already taken by third party applicant/ proprietor. The search can be conducted for “Starts with”, “Contains” and “Matches with” to have an exhausting list as to determine if the mark is distinctive or is similar to previous marks.
By spotting potential instances of infringement or unauthorized usage, trademark monitoring assists in protecting a company’s valuable intellectual property.
To monitor your trademark you can take the following steps:
- Conduct regular searches
- Hire trademark monitoring services from a Firm.
- Keep a watch on Trademark Journal
- Naseem Sheikh
- May 16, 2023
May 8, 2023
Trademark Squatting
In recent trends, the term Trademark Squatting has become a quite popular activity that continues to haunt every brand’s reputation and hard work. Wondering what it is and how to deal with it?
Read here…
Understanding Trade Mark Squatting: What You Need To Know
As per World Intellectual Property Organization (WIPO), Trademark squatting is “the registration or use of a generally well-known foreign trademark that is not registered in the country or is invalid as a result of non-use”.
Frequently, trademark squatters adopt, submit applications for, and use someone else’s trademarks with the sole intent of later selling them for a profit. The usual situation is for a squatter to file a trademark registration for a well-known company and then wait until the brand owner makes an appearance on the local market.
A court may force the squatter to hand over the registration or application to the actual proprietor if it is shown to the court through documents and evidence that the aggrieved is the actual user and adopter of the mark. Additionally, the court may award financial compensation to the owner of the mark. However, it will be challenging for a proprietor to preserve rights in the trademark if the aforementioned trademark does not have a widespread reputation. As a result, the owner may need to engage in protracted legal actions before the tribunal and/or the Court or negotiate a price with the squatter for the trademark’s purchase.
Knowing the Reasons for Trademark Squatting
The goal of a trademark squatter is typically to persuade the legitimate trademark owner to buy the Trademark Registration from them. The profit made from this sum is significantly greater than what they spent on a false trademark application. A bad faith registration can be challenging, expensive, and time-consuming to cancel.
A trademark squatter may even use legal action against the legitimate owner of the mark if the country where the trademark was first filed allows it. Additionally, he or she has the option of asking the customs officers to hold for export goods that belong to the legitimate owner. Any company, regardless of how big or little, can become the target of trademark squatting.
Some trademark squatters concentrate on trademarks in a particular industry or class. Based on their thorough research in this field, they plan the squatting, even keep track of how far along the legitimate owner is with their trademark application, and then promptly file new applications to obstruct further progress. Rarely will trademark squatters use the registered trademarks of other owners to uncover gaps in their registration, seek out similar trademarks in bad faith, and lay a trap for the target company’s commercial progress. After receiving the necessary rights, the trademark squatters manage and preserve their trademark registrations in order to achieve their ultimate goal of trademark squatting. They even consciously create and hold the evidence of trademark “use” in order to defend against the cancellation action.
The Dangers of Trade Mark Squatting: Protecting Your Brand
It has been observed that trademark registration presents a significant barrier for overseas businesses because many domestic trademark infringements attempt to register their marks in order to market their goods and generate large profits once they have established a reputation and goodwill on a global scale. For legitimate trademark owners, trademark squatting poses the following risks:
1. The introduction of brands into overseas nations is delayed. Time management is crucial, especially in sectors like gaming and electronics.
2. The legal process can be expensive and drawn out, often taking months to get an order.
3. In the event that the trademark squatter uses the mark or sells it to a third party for use, there is a risk of trademark dilution, which might seriously damage the goodwill and reputation of the legitimate owner.
4. Since prior usage is irrelevant in countries with superior rights to first-to-file, it may even happen that a brand never manages to register its mark if there is already a bad faith registration in existence.
How to Detect and Prevent Trademarks from Squatters
Despite the existence of various international conventions targeting the protection of trademarks that are ‘well-known’ such as the Paris Convention, the TRIPS Agreement, the Madrid Protocol as well as the WIPO Joint Recommendation Concerning Well Known Marks, these are not enough to put an end to this problem. In India, the Trade Marks Act, 1999, has provided for the protection of foreign trademarks following the ‘Trans-border Reputation’ principle.
This principle allows the unregistered trademarks in India to maintain an action for passing off without the requirement of having commercial use in India.
Even though trademark squatters use complex and innumerable methods for trademark squatting, bona fide prior owners are not completely deficient in retaliatory strategies. It is critical to outline a complete strategy with precise actions. Since it is expensive and tough to cancel bad-faith trademarks, prevention is the best strategy for countering them.
It is not always realistic for businesses to register their trademarks in every nation around the world; however, companies should take active steps to discourage bad-faith trademark squatters and make informed decisions on where to file for trademark registrations.
Businesses should consider registering their mark in countries where:
- The goods or services they provide are sold;
- Manufacturing of products or parts for their products takes place;
- Their research and development facilities are located;
- During shipping their products pass through;
- Expansion of business is possible in the near future; and
- Problems like Counterfeiting are quite likely.
Proactive Strategies to Combat Trademark Squatting
Trademark squatting is becoming a menace to society. It leaves the brand aggrieved in a vulnerable position, with tireless litigation, and a damaged reputation. Here are a few practice strategies that can be equipped to combat trademark squatting:
1. Get your Mark registered: To prevent any trademark squatters from making benefit on your brand’s reputation, it is suggested that you get your Trademark duly registered within time. Nip the problem right from the bud!
2. Look out for possible trademark squatters: Staying vigilant and keeping updates on the market you wish to enter can help prevent a trademark squatter from going through with its malicious plans. It’s also crucial to be aware of any additional internet resources, like social media accounts, that are connected to your brand name.
3. Registering your trademarked name as a domain name and keeping a close eye out for any attempts to register similar names are the best ways to defend your company from trademark squatting.
4. Hire a Trademark Firm to offer their expertise for a bulletproof plan: While a proactive approach is quite the need of the hour to prevent future damage, the truth is that this process of prevention can be quite time-consuming and energy-taking. Therefore, taking the aid of a trademark firm can come to your rescue.
Domain Name v. Trademark: the difference between the two and their Squatting
A universal resource locator (URL), which is used to access online sites, is a series of letters, numbers, and dashes that is referred to as a domain name. Every website has a different domain name that is used to access it. They start with “www.,” are then followed by a distinctive name, such as “XYZ,” and end with domain name extensions, such as “.com,” “.org,” “.edu,” “.net,” “.ac.in,” etc. The domain name appears as “www.xyz.com” as a result. Over time, the purpose of domain names has changed from just serving as a communication and internet address to a platform for performing commercial operations.
A trademark is the exclusive means through which the goods or services of its owner may be identified. According to the definition of a trademark, it is “a mark that can be graphically represented and that can distinguish the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors.” By granting the owner the exclusive right to use the mark for just his goods and services, a registered trademark sets its owner’s products and services apart from those of competitors in the marketplace.
As a result, a trademark is always used in relation to the goods and services that its owner offers. This is how domain names and trademarks are connected. Regarding the goods and services they offer, each is distinctive. Therefore, it is accurate to say that both domain names and trademarks are “identifiers”.
The methods used to register a domain name and a trademark is different. A domain name can be registered for a few Rupees in under an hour, as opposed to a trademark, which requires a lengthy and complicated process to register. The process of registering a domain name is what causes the problem of cybersquatting.
Case Studies: Famous Brands Battling Trademark Squatters
- Yahoo!, Inc. vs Akash Arora [(1999) IIAD Delhi 229]: This was the first time the Indian Courts were presented with an opportunity to deal with a cybersquatting case. In this case, the defendant was utilizing a domain name for online services that are confusingly similar to the trademark “Yahoo.com” owned by the plaintiff. In this case, the court noted that there is every chance and potential of creating confusion and deception, making the degree of likeness of the marks extremely crucial and substantial to bring an action of passing off. Looking at both domain names, it is obvious that they are identical or similar in nature, and there is a good chance that an Internet user will be misled into thinking that both of the domain names are owned by the same person when in fact they are owned by two distinct people. A temporary injunction prohibiting the defendant from using “Yahooindia.com” or any other trademark or domain name that is confusingly similar to the plaintiff’s trademark was successfully obtained by the plaintiff.
2. N.R. Dongre and Ors. v. Whirlpool Corporation and Ors. [(1996) PTC (16)]: In this judgment, while upholding the decision of the single bench and division bench of the High Court of Delhi, the Supreme Court of India in this judgment, recognized the principle of trans-border reputation in India.
In this case, Whirlpool Corporation applied for registration of the Whirlpool mark in 1956 for use on laundry equipment such as washers, dishwashers, and clothes dryers. However, the registration of said trademark expired in 1977 as a result of non-renewal. Mr. N.R. Dongre submitted a registration application for the Whirlpool mark in 1986, which was later opposed by the Whirlpool Corporation on January 16, 1989, after being published in the Trade Marks Journal on October 16, 1988. The Registrar of Trade Marks rejected the opposition on the grounds that Whirlpool was not used and had no reputation in India. This led to the appeal being heard by the High Court of Delhi’s Single Bench. A single bench of the High Court of Delhi concluded that Whirlpool Corporation was the trademark’s original user and had a trans-border reputation in India based on the documents Whirlpool Corporation submitted before the court demonstrating these facts.
3. Hengst SE & Anr. v. Tejmeet Singh Sethi & Anr. [CS(COMM) 600/2021]: The Court noted that a total of 378 well-known marks belonging to various companies were squatted by the Defendants. According to the court’s instructions, the defendants accepted the plaintiffs’ rights in their written undertaking and agreed to withdraw all other applications that would have violated well-known marks in addition to the one that would have violated the plaintiffs’ rights.
The Plaintiffs were also given permission to request the revival of the current lawsuit and to pursue their claim for damages of INR 2 crore in addition to the additional costs if the Defendants failed to pay the cost of INR 10 lakh to the Plaintiffs’ counsel in the specified amount of time.
Other Examples:-
1. Due to trademark squatting, Apple had a problem with its trademark registrations in 2012 and was forced to pay a significant sum of $60 million to the owner of the “iPad” brand in China.
2. When Tesla Motors sought to expand its business into China, it learned that a man by the name of Mr. Zhan had already filed for registration of the trademark “TESLA” in class 12, which was reserved for motors and other comparable goods. In order to revoke the trademark, Tesla Motors submitted both a non-use and an invalidation application. In reaction, Mr. Zhan sued Tesla Co. for trademark infringement. He demanded that Tesla Co. cease selling infringing items and engaging in associated promotional activities and pay damages of 23.94 million RMB. After five years, the parties finally reached a settlement. Tesla Co. eliminated all claims for damages against Mr. Zhan at the same time as Mr. Zhan renounced all use of the TESLA marks.
3. When Sony PlayStation most recently sought to introduce the PS5 game console in India, it was discovered that Delhi resident Hitesh Aswani had previously registered the PS5 brand as a trademark in India back in October 2019. Hitesh Aswani was forced to withdraw the trademark application but this act substantially delayed the timeline in which Sony wanted to launch its product.
FAQs
- How does Trademark squatting affect businesses?
Squatting on trademarks can harm businesses in a number of ways. Trademark squatters can confuse consumers, lower the value of the original trademark, and harm a company’s reputation by registering a mark that is confusingly similar to one used by an already established business. Losses in sales, a decline in brand recognition, and legal fees incurred in contesting the trademark squatter’s registration can follow from this.
2. How can I identify if my Trademark has been squatted upon?
You can run a trademark search on the Indian Trademark Registry website to find out if your trademark has been illegally used in India. This will enable you to see if other people have registered any trademarks that are identical or similar to yours. To make sure that no one is violating your rights or trying to register a trademark that is identical to yours, you can also periodically monitor your trademark. Additionally, you can look for assistance from a trademark lawyer or agent, who can help you do a comprehensive search and take the necessary legal action if your trademark has been infringed upon.
3. Can Trade Mark squatting occur in different countries?
Yes, trademark squatting can occur in different countries. In fact, it is a common issue in the global marketplace, where businesses may operate in multiple countries and have trademarks registered in different jurisdictions.
4. How long does it typically take to resolve a Trademark squatting dispute?
In India, the time it takes to settle a trademark squatting lawsuit can vary based on several variables, including the case’s complexity, the strength of the evidence, and the backlog of cases at the court or registry. A trademark squatting case in India can often be resolved in a few months to a few years. The establishment of specialized intellectual property courts and tribunals by the Indian government, which can serve to streamline the legal process and decrease the time and expenses associated with resolving disputes, has been made in an effort to hasten the resolution of such issues. Additionally, alternative dispute resolution methods are also used actively to speed up the process.
5. Can Trademark monitoring services help in preventing squatting?
Yes, trademark monitoring services can help in preventing squatting by regularly monitoring the trademark databases and alerting businesses to any potentially infringing trademarks.
Apoorva Sharma
Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi.
April 6, 2023
Artificial Intelligence and Copyright
Artificial Intelligence and Copyright: Exploring the Intersection
Our daily lives have changed as a result of artificial intelligence’s expanding importance in the fields of medicine, space, education, entertainment (music, art, gaming, and movies), industry, and many other fields, and there is no exception in the field of intellectual property rights. The contribution of AI to creativity and innovation has gained widespread acceptance. Particularly in copyright, patents, designs, and trade secrets among other sorts of IPRs, AI has a vital role to play. Besides writing blogs, books, poetry, and music, AI is also capable of creating paintings and sketches. Nonetheless, it is important to distinguish between works produced by humans with AI’s assistance and those produced entirely by AI.
AI has created serious issues and posed challenges in the areas of intellectual property rights more particularly in copyright law along with its legal position in several countries.
The Role of AI in Copyright Infringement and Plagiarism
Today artificial intelligence is capable of doing almost anything, from generating virtual images through text or making websites in just a few seconds with a set of instructions. This, however, affects the originality of most things. As of now, anybody is capable of producing content in the form of images, text, or videos. Copying it from any other creator or inventor is easy for anybody who is well in touch with artificial intelligence. This leads to problems like copyright infringement and plagiarism in content. But then various tools run on AI-based algorithm that assists in Plagiarism detection as well as the removal of plagiarism. This therefore often comes in the grey zone as to whether AI is actually assisting the industry or making the path of plagiarism and hiding the same in plain sight possible.
Protecting Copyrighted Works in an AI-Driven World
Since there are uncountable ways of stealing a person’s literary or artistic work, it becomes increasingly important to maintain and develop a system that can prevent these infringements. Common practices like watermarking artistic work and keeping a normal vigil spreading awareness about AI detection tools are some suggestions that can help protect your work from infringement or plagiarism.
AI's Impact on Fair Use and Transformative Works
Fair use is the situation in which a person’s original work is used for the purpose of criticism, making a commentary, for an educational/non-profit function, or for a new purpose. With the addition of artificial intelligence to the equation it is much more complex now. As the artificial systems that have been made to flag copyright infringement content might also flag the fair use work.
Transformative work is the procedure of copying one’s original creation and then adding value in form of some research or anything that adds to it. In simple terms, it is just making a personal touch to the original work with a few upgrades. This can also be flagged by the automated artificial intelligence software that is looking for infringement content. No matter the advancement we have seen so far, the system or a program to differentiate the infringing content and fair use work and infringement work is yet to be developed, and till then for such identification and differentiation, the involvement of human intelligence would be required.
Ethical Considerations for AI and Copyright Protection
While we’ve discussed the position of AI and Copyright and how they work alongside each other, quite recently some ethical considerations have also emerged. Some are mentioned below:
Generation of an enormous amount of work from an authorless source.
With little money invested and in a relatively short length of time, AI has the ability to produce vast amounts of labor. Due to their originality, AI-created works can be eligible for copyright protection in all relevant jurisdictions. By virtue of the “programming and parameter on which such AI really compiles and develops the work,” the criteria of use of “skill and judgment” in originality may be regarded to have been satisfied. But, in the event of work produced by AI, there won’t be an author. Human intervention is present in AI-assisted works. Hence, in the latter situation, the person who employed artificial intelligence to create the work may claim to be its author; however, this is not the case when AI independently developed the work without human involvement. The question of authorship in these situations has perplexed nations all across the world.
Can machine creativity and human creativity be on the same pedestal?
The author is encouraged to generate more creative works by employing his abilities, labor, and judgment thanks to copyright protection. The legal recognition of AI as an author and the copyright protection of AI-generated works would put “human creativity” and “machine creativity” on an equal footing. On the other hand, if copyright laws do not apply to AI-generated works, it would imply that human innovation is favored over that of machines. Long-term destruction of human creativity is likely to result from elevating machine creativity above that of humans or from placing both on an equal footing.
Lack of human filters can cause irreparable damage to societal sentiments.
Many problems could arise if AI was thought of as the author of the AI-generated piece. AI-generated content might not be error-free. The AI may employ derogatory or obscene language, encourage conflict along racial, ethnic, or religious lines, or result in any other unintended outcome. Due to AI’s lack of legal recognition as a person, it will be challenging to determine its civil and criminal liability in this situation. At most, such work could be removed, and at worst, AI software could be outlawed, but by that point, it might already be too late and the damage might already be irreparable. Hence, in the latter situation, the person who employed artificial intelligence to create the work may claim to be its author; however, this is not the case when AI independently developed the work without human involvement. This question of authorship in these situations has perplexed nations all across the world.
The duration of protection will always be in the grey area.
The AI does not pass away the way a person does. Yet, according to the rules of the various countries, one may argue that the term could be measured from the date of publication for a period of 50 or 60 years. The idea that copyright protection should be granted to AI with regard to works produced by AI is contested on the grounds that humans are mortal and get tired while working. Hence, a human author only produces a finite number of works over his or her lifetime, and the copyright is justifiable since the author’s efforts should be recognized. An AI, on the other hand, is capable of creating an infinite number of works and is immortal. It is “equivocal and disputable” to provide AI-generated works copyright protection. Furthermore, the experts who oppose copyright protection for AI-generated works contend that AI will always create the same results provided the same model and inputs are used. As a result, it is challenging to describe it as “original and inventive”.
The question of royalty
AI will find it challenging to protect the rights that the author has under copyright law and negotiate royalties with other parties. Making AI the author of the work will be a difficult endeavor because it is likely to cause more problems than it will solve.
Authorship or public domain?
Another viewpoint that comes out of the topic is that AI-generated work should not have an author and should instead belong to the “public domain.” There are various reasons to make AI-generated artwork available to the general audience. One of the reasons is that since AI-generated work incurs no costs during the production, making it freely available to the general public makes perfect sense. Second, AI is able to produce as many iterations of its own work as needed without using additional resources or money. Last but not least, one of the goals of copyright law is to give the creator of the work incentives in the form of financial and moral rights to encourage him to create new works for the benefit of society. As AI is not human, it does not need such inspiration to produce art.
However, one should also take into account the possibility that if AI-generated works are not protected and the public is allowed to use them without restriction or payment of a fee, it could spell the end for the businesses that have made significant investments in AI systems that produce these works. Intelligent individuals will begin to commercialize such works in numerous ways without spending any money, competing with businesses that have made the investment. It may therefore be necessary to provide some protection for works produced by AI in order to motivate AI programmers and businesses to continue funding R&D projects connected to AI.
Should AI be considered joint authors?
The idea that AI and human authors are co-authors of the work created in this way is not a good one. The cause is that not all AI processes are under human supervision, and AI functions autonomously. The definition of “works of collaborative authorship” does not apply to this. A “work of joint authorship,” for instance, is defined as “a work produced by the collaboration of two or more authors in which the contribution of one author is not distinguishable from the contribution of the other author or authors” in the Indian Copyright Act of 1957. Rich notes that “machine learning often produces models that are so intricate that even the algorithm’s original programmers don’t fully understand how or why the created model generates reliable predictions. The idea that an AI-generated program should have a joint authorship between the AI programmer and the AI user is likewise unsound.”
AI and the issue of deep-fakes- what would be its impact on copyright?
A new problem, copyright concerns in “deep fakes,” has been recognized by Wipo in addition to the authorship issue. The creation of artificial likenesses of people and their characteristics, such as voice and look, is essentially what is meant by “deep fakes.” Deep-fake technology increasingly relies on AI. When someone is shown in a deep fake without their consent and the behaviors and views of the person are revealed, there may be additional difficulties than just copyright, such as privacy concerns and defamation, and such work is not authentic. The profound false audio-visuals of well-known athletes, performers, leaders, and other prominent figures could become highly well-liked by the general public and have a very large market. Even after the passing of such people, these profoundly false works can survive and generate lucrative earnings for their authors.
The questions that emerges in this situation is whether a profoundly false work if created without the consent of the party in question should even be covered by copyright laws. What rights under copyright law will the person in question have in such works if permission has been granted by them? Can a system of fair compensation be created for the individual who creates profound fakes and the people who are portrayed in the work? These concerns need to be addressed to better the position of copyright in the AI world.
International and Indian Perspective on Copyright Law and AI-Produced Work
THE PERSPECTIVE OF SOME EUROPEAN COUNTRIES (GERMANY, FRANCE, SPAIN, UK)
The idea that civil law nations like Spain, Germany, and France represent is that works produced must have the “imprint of the author’s personality.” As a result, since AI lacks personality, authorship of AI-generated works should be denied to AI. Making AI a legal person would entail giving it the ability to sign contracts with other people. Additionally, it will be obligated by the law and accountable for its actions. The ability “to sue and be sued” under the law is most vital and therefore majority of nations oppose giving AI legal status.
Nonetheless, it won’t be out of place to note that the European Parliament has argued for giving “autonomous robots” the legal character of “electronic persons” in order to protect them under copyright law. The “music composition AI from Artificial Intelligence Virtual Artist (AIVA) Technologies becomes the first in the world to be formally accorded the status of a composer,” and it can now release music and get royalties under the name AIVA because SACEM, France, and Luxembourg author’s right society have formally acknowledged it as a composer. It is also interesting that Sophia, an AI humanoid robot, was given citizenship by Saudi Arabia in 2017. In the paper titled “Entering the Age of Living Intelligence Systems and Android Society,” Dr. David Hanson, the inventor of Sophia, predicts that as AI advances, there will eventually come a tipping point where robots will awaken and demand their rights to exist, to live freely, and to evolve to their full potential. Additionally, it indicates that they will be requesting intellectual property protection for any new intellectual property rights (hence referred to as “IPRs”) they develop. He predicted that by 2045, “advanced robots will have the ability to vote in general elections, own land, and get married.”
Computer-generated work is covered by the UK’s Copyright, Designs and Patents Act, or CDPA, since 1988. According to the CDPA, a “computer-generated” work is one that “is generated by a computer in circumstances such that there is no human author of the work.” To “provide an exception to the need of human authorship in order to give fair acknowledgment and protection for the work that goes into designing a program capable of autonomously generating works,” according to the justification for such a clause. According to section 9(3) of the CDPA, the author is “considered to be the person by whom the arrangements necessary for the development of the work are undertaken” in the event of “literary, dramatic, musical, or artistic work which is computer-generated.”
USA
According to Andres Guadamuz, authorship in this situation belongs to the coder and not the user. He uses Microsoft, which created the word processing tool “Word” to allow users to generate original works, to illustrate his point. A work created by a user using that program cannot be protected by Microsoft’s copyright. The user of the application, who will be acknowledged as the creator because they used that program to generate the work, will own the copyright to that work. In the case of Express Newspapers Ltd v. Liverpool Daily Post & Echo ([1985] FSR 306), the court saw the computer in the same way that it would a pen. If the author can prove that an AI program was employed as a tool or medium in the development of the work, they may be eligible for a copyright in the United States as well. The court in the United States found that the monkey could not be taken as the author of the selfies it clicked in Naruto v. Slater (2016 US Dist. Lexis 11041), also known as the “Monkey Selfie” case. In the United States, a human author is the only one who may be granted copyright; neither machines nor animals are permitted.
Nevertheless, when it comes to “artificial intelligence algorithms,” which have the capability of producing work on their own, the scenario will be different. There is an “apparent gap between the human’s input and the computer’s output” when an AI-powered computer behaves as an “autonomous actor” and produces works “algorithmically, sequentially or non-deterministically”. In this case, the user’s involvement in generating the work might not go beyond clicking a button that instructs the machine to produce the desired result. In this instance, it is appropriate to consider “the person creating the arrangements for the work to be generated” to be a programmer. Another way to put it is that “it can be assumed that the programming of the AI is built in such a manner that it can develop and identify equations to generate a result on its own, and thus, the creativity may vest with the programmer who has created the AI, given proper programming.”
BERNE CONVENTION, 1886
The Berne Convention, 1886 did not address “non-human authorship” on a global scale. The Trade-Related Aspects of Intellectual Property Rights Agreement (hereafter referred to as “TRIPs Agreement”), which contains the Berne Convention’s provisions, may be deemed to hold the same position as the Berne Convention. Regarding the WIPO Performances and Phonograms Treaty of 1996 and the WIPO Copyright Treaty, a similar stance may be judged to be accurate (WIPO Internet Treaties). On the other hand, it might also be argued that the notion of non-human authorship in national legislation was not disallowed by the international legal regime on copyright. In most cases, international treaties specify the minimal common norms that must be observed. The nations are required to abide by them, while at the same time; they are free to provide better protection than what has been laid down in the treaties.
INDIA
In contrast to CDPA, the Indian Copyright Act does not define “computer-generated work.” Yet, it defines “author” as “the person who causes the work to be made” in connection to “any literary, dramatic, musical, or aesthetic work which is computer-generated.” The Delhi High Court provided additional clarification on the definition of “author” in Camlin Pvt. Ltd. v. National Pencil Industries (AIR 1986 Delhi 444). Because it was impossible to identify the author of the carton, the courts ruled that the “mechanically replicated printed carton” was not a subject matter of copyright. The Court added, “Copyright is only granted to authors or those who are natural persons who are the source of the work. Given the facts, the plaintiff is unable to assert any copyright in any cartons that have been mechanically copied through a printing process because it is impossible to claim authorship of the work. An artistic creation cannot have a copyright attached to it, nor can a machine be its author. The Delhi Court declared that the plaintiff in Tech Plus Media Private Ltd v. Jyoti Janda “is a juristic person and is incapable of being the author of any work in which copyright may subsist.” Nonetheless, the plaintiff might, according to the Court, enter into a contract with the work’s creator that would make them the work’s copyright owner.
Conclusion
AI will play an increasingly significant part in all facets of our daily life. Its usage must be regulated by legislation. AI will continue to play a critical role in intellectual property rights, especially in copyright. The international community has been compelled to consider these questions of authorship and ownership of AI-generated works in copyright law and come up with an agreeable answer for all nations. To solve this problem, no rule is perfect, and each one has drawbacks of its own. Giving non-human authors credit for AI-generated works will have a big impact. Making AI-generated works available to the general public is also not a smart idea because it will deter AI programmers and businesses that control such AI from making additional investments in the field. The WIPO is making a lot of effort to address these problems. The sui generis system might be a preferable choice, or alternatively, certain clauses in the copyright laws of the nations that have been specially written for AI and AI-generated works may handle this issue. In any event, less protection should be given to AI-generated works, and human ingenuity should be valued over artificial creativity. Thus, the time has come for a balanced approach.
Frequently Asked Questions
The work created by an AI is not protected by copyright as the copyright cannot be granted to a machine as of today.
As per The Copyright Act, of 1957, a human can only own a copyright. So the answer is no, an AI cannot own the copyright as of now.
No, an artificial intelligence machine cannot hold any copyright rights.
Whether AI art breaks copyright or not depends on the specific circumstances of its creation and use. If the AI system creates an original work of art, it would likely be subject to copyright protection. However, if copyrighted materials are used in the creation of the AI art, or if the AI art is very similar to an existing copyrighted work, there could be potential copyright infringement issues.
As per the current scenario, AI cannot be copyrighted in India. The Copyright Act, of 1957 clearly states that only a human can hold copyright rights and not a machine.
Since it is generally the author of the work who possesses the copyright, therefore, the creativity in the work can be drawn from human input in cases where AI creates something with human interference because there is a human input in such cases. In some situations, a human being can be credited as the author.
When AI creates a piece of art entirely on its own, without any human involvement, it is unclear who is the true author of the law. In such cases, the following strategy may be employed:
When AI creates a piece of work without any human involvement, that AI’s creator – the person who created the AI program – may claim authorship of the work.
When AI generates work without human aid, it can be assumed that the AI was programmed in such a way that it can come up with and recognize equations to produce results on its own. In this case, the creator of the AI may retain creative control if the AI was sufficiently programmed.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
March 14, 2023
Trademark v. Patent: Comparing the legal protection for your Intellectual Property
Overview
The term “Trademark” and “Patent” often get used interchangeably by those who are not aware of the difference that lies between them. At first look, they do seem to be quite similar because their essential use is protection but once one looks through the peels, the difference between the two becomes quite evident even to the naked and untrained eye.
Key Take away
In this blog, an attempt has been made to draw the stark difference between a Patent and a Trademark. Beginning with simple definitions, their importance and different types, it finally builds up to lay down the difference between the two in layman’s language and concludes with which one is best for your business. Additionally, a number of Frequently Asked Questions have also been listed.
Difference Between a Patent and Trademark?
What is a Patent?
You can obtain a patent as a form of intellectual property right if you create a brand-new, ground-breaking invention. It is granted by the nation in which you submit your patent application in the form of a legal certificate (Indian Patent Office in India). Patents are only issued following an extensive investigation by the patent examiner or officer, which confirms that no one else has already invented or produced a product that is similar to yours. Owners of patents have the full, exclusive right to make any use of their inventions and to profit financially from them. Additionally, patent owners have the right to demand monetary damages and impose restrictions on how corporations and other entities might use their inventions.
Why are Patents important?
It all boils down to protection when it comes to patents. With a patent registration, you get 20 years to develop and use the concept before your rivals get the access to the open rights to use it. The following are the main factors that make patents so important:
- Having a strong market position could make your new idea stand out among rivals.
- You’ll be viewed as a thought leader, increasing your credibility and reputation
- A higher rate of return on your investment is possible because you can make money by commercializing the invention by taking royalty or licensing it.
- Generating money for your company by appealing to investors if you have a patent that enables you to expand your market share.
- Getting a patent pending or patent granted could aid you when creating new contracts and gives you more negotiating power.
Types of Patents
In order to protect various types of inventions, various forms of patent applications are available. Smart innovators can use the various patent application types to obtain the legal protection they require for their discoveries. Though the most sought after patents are:
1. Utility Patent
More than two-thirds of all issued patents are utility patents, which are issued worldwide. It is given for a brand-new, practical, and original idea. Any device, procedure, produced good, material composition, or invention that improves upon an earlier one can be included.
There are three different sorts of utility: general utility, which is based on functionality, specific utility, which focuses on how the invention carries out the purpose, and moral utility, which ensures that the product is neither poisonous nor encourages improper use.
- Process Patent: where only a part/ process of a project or invention is patented.
- Product Patent: where the entire invention is patented.
2. Plant Patent
A plant patent does exactly what it says on the tin: it safeguards novel varieties of plants grown from cuttings or other nonsexual methods. Genetically modified species typically are not covered by plant patents and focus more on conventional horticulture.
What is a Trademark?
A Trademark is primarily any term, symbol, phrase, sound or appearance that acts as the of a brand’s identifier. Brands are often recognized by their distinctive names, emblems, sound, color combination and in unconventional scenarios the smell and texture also. Trademarks or service marks, aid in separating the goods and services offered by various brands. They are a type of intellectual property protection that is given to a brand for its distinctive presentation, similar to a patent. Brands do not, however, necessarily need to register a trademark, despite the fact that doing so may assist them to get exclusive protection rights, unlike patents. You can gain legally from registering a trademark for your brand in a number of ways as well.
Types of Trademarks
Although there are many different types of trademarks, they all serve the same objective, which is to let consumers recognize products and services coming from a particular manufacturer or service provider.
The trademark in general are distinguished on either the basis of protection or on the basis of types.
On basis of protection:
1. Fanciful: A mark which doesn’t have a dictionary meaning and is only created for the purpose of the brand. The well-known examples for such a mark can be Adidas, Kodak, Xerox, etc. They have the highest level of protection.
2. Arbitrary: These kinds of marks have a lower protection than fanciful marks as they have a dictionary meaning but it is not to the kind of goods or services they are being used for. For example, the mark “Apple” though refers to a fruit is used for phones.
3. Suggestive: These marks lie in the lower level of pedestal of protection as they describe the goods or services but the consumer has to use their imagination to understand the connection. The examples for such marks can be Airbus for Ariel vehicles manufacturing.
4. Descriptive: Descriptive marks have the least amount of protection and they have to justify as to whether they have acquired distinctiveness or not. Such marks directly describe the goods or services being provided under the mark.
On basis of its type:
1. Word Mark: A word mark is a simply a word or a lexical combination of words in the text form being applied for registration.
2. Device Mark: A device mark is an artistic representation of the mark in a stylized font and a particular color combination along with an artwork in some cases.
3. Label Mark: A label mark is usually the packaging of the product and the rights over such a mark is for the mark as a whole and no separate rights are given to any descriptive part of the mark.
4. Shape Mark: Shape Mark is only used to safeguard a product’s shape so that consumers can relate to it and choose to purchase it from a particular producer. Once a product is acknowledged to have a distinctive shape, its shape can be registered. The Coca-Cola or Fanta bottles, which have a particular shape associated with the brand, are examples of shapes.
5. Sound Mark: A sound mark is a noise that can be connected to a good or service coming from a specific vendor. People must be able to quickly and easily recognize the service, product, or show that the sound stands for in order for it to be registered as a sound mark. Examples for this can be the Nokia & NBC intro music.
6. Certification Mark: A certification mark is a symbol used by the organization to indicate a product’s origin, material, quality, or other specified information. The fundamental function of a certification mark is to highlight the product standard and provide buyers with assurances about the goods.
There are various unconventional marks that are up and coming as brand identifiers such as colour marks, texture marks, smell marks, etc which in international domain and as well as in few Indian scenarios been recognized for their rights.
Difference Between Trademarks and Patents
The six characteristics listed below illustrate the distinctions between patents and trademarks:
The governing laws that provide for the protection of patents and trademarks
The intellectual property laws of the countries where patents and trademarks are registered and filed, respectively, safeguard both of these property rights. In India, the Trademarks Act of 1999 protects trademarks, whereas the Patent Act of 1970 protects patents.
The Degree of protection given to patents and trademarks
A trademark safeguards a company’s distinctive name/mark that sets it apart from rival businesses in the public eye. Brands have the right to register a variety of identifying characteristics for their products, including but not limited to names, logos, slogans, colors, and shapes. On the other hand, an invention that is novel and unique and has an utility is protected by a patent.
The truth about patent and trademark validity
A 20-year validity period is included with patent which has to be renewed every year for the said period of 20 years without which the right over the patent ceases. On the other hand, while trademarks typically only have a 10-year lifespan, they can be renewed repeatedly before their expiration date to make them perpetual.
Obtaining a patent and a trademark takes time
A patent is normally awarded in India within the span of two to four years ideally which can increase if they are objections or oppositions. Several forms have to be filled out, the patent application is published patent journals and then the examination is conducted for which the examination report is issue and addressed by the Applicant.
Obtaining a trademark is also a lengthy process as the mark undergoes the checks as per the act and posts which if only the examiner is satisfied the mark is published. Subsequent to which the mark is open to opposition by third party for a period of 4 months. If a mark is opposed, the process can extend for 5-10 years.
In both the Patent and Trademark, there is provision for expedited examination which fastens the process.
Having to submit a provisional application
The sort of application is another area where patents and trademarks diverge. Within a year of submitting a provisional application, patent applicants are allowed to finish writing their patent specifications.
Application of patent and trademark rights
As per the Indian laws, the prior user is superior to the prior registrant and therefore though you have rights over your mark as soon as you start using it, the registration provides an extra layer of protection under the trademark act. When it comes to patents, the rights are granted from the date of application for a period of 20 years. The Office of Patent keeps the application a secret for 18 months post which anyone can apply for documents and inspection with a specified fee. Also a patent cannot be published pre application due to the idea of patent being novel and non-obvious, except certain situations.
What Suits Your Business- Patent or Trademark?
As established above, for novel and non-obvious inventions a patent is awarded, but in contrast, a trademark is awarded for a mark which is distinctive enough to distinguish one product from another in the market. Therefore, when deciding between the two the absolute question is- is whether there is an invention or is it a brand identifier?
Frequently Asked Questions
1. Is Google a Trademark or Patent?
“Google” is a brand name. Hence, it is trademark. At the same time, Google has numerous patents and patent applications related to its search inventions, and more.
2. Do Trademarks and Patents offer the same level of protection?
As discussed earlier, trademarks and patents are applied to different kinds of intellectual property. Therefore, while their essential duty remains the same, i.e. protecting intellectual property, their functions are quite different. Also, a registered trademark is valid for a 10-year period only, from the date of application, and can be renewed. Whereas, patent protection is valid for 20 years which is to be renewed every year after the first two years by paying the specific fees without which the patent ceases..
3. What is the cost of obtaining a trademark or patent?
The government fee for obtaining a trademark is ₹4500 for individuals/startups/Small Enterprises and ₹9000 for a Large Entity per mark per class. For a patent, it is ₹1,600 for an individual, small entities, startups or educational institute and ₹8000 for a large entity.
4. Are trademarks and patents recognized internationally?
Patents and Trademarks are territorial rights. In general, they are exclusive rights that are only applicable in the country or region in which they have been filed and granted. To obtain protection internationally, it is required that you must file an application in every country. But there are treaties and conventions that give the applicant to apply for registration in multiple countries at the same time. For trademark there is WIPO’s Madrid System whereas for Patent Application can be moved under Patent Corporation Treaty also known as PCT.
5. What is the role of a trademark or patent attorney in the application process?
A trademark lawyer offers advice and legal support to help a trademark proprietor or a potential applicant’s in determining whether their mark does not conflict with the rights of any other third party person. Not only that the Trademark attorney can help in representing the application during the objection as well as the opposition stage.
Patent attorneys assists in the patent application which consists of search, drafting of provisional and complete specifications of the invention as these are the most crucial element for registration.
About Author
Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi. She is a Law Graduate from Vivekananda Institute of Professional Studies, GGSIPU.
Reviewed by Naseem Sheikh
Patent Related Fact checked by Prateek Shrivastava
February 11, 2023
Does AI Effect Intellectual Property?
In today’s digital age, artificial intelligence (AI) is revolutionizing the way we think about innovation and creativity. AI functions on algorithms which are a set of rules that command how the AI can process data for simulating automated reasoning, complex calculations and also to develop its own algorithms. Once an AI is fed with the sophisticated algorithms, it can autonomously develops its own creations and innovations. As AI becomes more sophisticated, it raises important questions about how to protect and control the creations it produces. In this blog, we’ll explore the legal and ethical implications of AI on intellectual property, and discuss how the field is evolving to adapt to the new challenges it presents. So, whether you’re a tech enthusiast, a business owner, or simply someone interested in the future of innovation, this blog is for you. Get ready to dive into the world of AI and intellectual property, and discover how these two seemingly unrelated fields are connected in ways you never imagined.
Understanding the Relationship between AI and Intellectual Property
AI and intellectual property rights are two important and interconnected concepts that are shaping the future of innovation. As AI technology becomes more advanced, it is increasingly being used to assist or autonomously generate new ideas and creations, from music and art to software and inventions. This raises important questions about who owns and controls these AI-generated creations and how they should be protected under the existing intellectual property laws.
One of the key challenges in understanding the relationship between AI and intellectual property is determining authorship. In traditional creative processes, authorship is clear-cut, but with AI, it can be difficult to determine who is responsible for a given creation. Can an AI be considered a legal person and deemed the author of the work it creates is a question that needs to be addressed. This has led to calls for new legal frameworks that can better address the unique challenges posed by AI-generated works.
The relationship between AI and intellectual property has therefore become complex and multifaceted, and there is still much to be understood in terms of how best to protect and govern AI-generated creations. Another key issue to discuss is whether using copyrighted works for machine learning without permission would be considered a copyright violation and what effect that would have on the advancement of AI and the free flow of data to enhance innovation in AI. It is also important to decide whether an exception should be made for certain limited uses of such data in machine learning, such as the use in non-commercial user-generated works or the use for research.
It is also to be seen whether there can be any originality attributed to the artistic works created by AI. Since AI depends on pre-existing data and complexity of its programming, the work thus produced may qualify as original work and hence be copyright-protectable. However, there is another contention that the work so produced is only a collection made without any judgement or talent and hence cannot be treated as original.
The role of artificial intelligence in intellectual property
One of the key ways that AI is impacting intellectual property is by making it easier to create and monetize new works. AI algorithms and machine learning models can be trained to generate music, art, and even writing, which can be used to create new products and services. This is particularly relevant for startups and small and medium-sized enterprises (SMEs) looking to leverage AI to create new revenue streams and business models. According to a report by Accenture, the use of AI in the 16 industries alone is expected to drive $14 trillion in economic growth by 2035.
Balancing Innovation and Protection: AI and Intellectual Property
AI is driving innovation and creating new revenue streams, but it also raises legal challenges for intellectual property rights. Balancing the need to protect AI-generated works with the need to encourage innovation is crucial. Organizations such as WIPO are working towards creating guidelines and best practices for protecting AI-generated works under intellectual property laws.
i). Protecting Intellectual Property in the Age of AI
As artificial intelligence (AI) continues to advance and play a larger role in our economy, it’s important to consider the implications it has on intellectual property ownership. Talking about AI and intellectual property ownership with the ability of AI to create new works, from music to writing, determining authorship and protecting ownership rights becomes increasingly complex. It addresses questions including whether the law should allow or demand that an AI program be identified as the inventor, or whether a human should always be the inventor. It also takes into account the practical difficulties of determining human ownership or authorship if AI systems cannot be given ownership, and whether this decision should be left to private arrangements, such as corporate policy, with the possibility of judicial review by appeal in accordance with current laws concerning disputes over inventorship.
ii). AI's Effect on the Enforcement of Intellectual Property (effect on copyright and trademark)
One of the most significant effects of AI on intellectual property is its impact on the enforcement of copyright and trademark laws. AI-based tools can be used to identify and prevent intellectual property infringement, by scanning the web for instances of unauthorized use of copyrighted or trademarked material. This can help rights holders more effectively protect and monetize their intellectual property.
AI-based tools are used to have a streamline process of monitoring online platforms and identify instances of unauthorized use of images or videos. This can help rights holders take action against infringers more quickly and efficiently, and can also help platforms like YouTube and Facebook remove infringing content more effectively. So this gives a concrete relationship between AI and intellectual property protection that is a lot advantageous in many cases. Similarly, AI-based tools can be used to identify instances of trademark infringement, such as the unauthorized use of a brand name or logo, which can help rights holders protect their brand and prevent consumer confusion.
Read our blog on Artificial Intelligence and Copyright
iii). AI and the Challenges to Protecting Intellectual Property
To address these challenges, some experts have suggested creating new legal categories, such as “electronic authorship” or “AI-generated works” to better protect and govern AI-generated creations. Additionally, organizations such as the World Intellectual Property Organization (WIPO) are actively working to develop new guidelines and best practices for protecting AI-generated works under intellectual property laws.
Artificial intelligence (AI) poses several challenges to protecting intellectual property. One of the main challenges is the difficulty in determining the authorship of AI-generated works. With the increasing use of AI in creative fields such as music and writing, it becomes increasingly complex to determine who should be credited as the author of a work. This can make it difficult to protect the rights of creators and also to monetize their work.
Another challenge is the ability of AI to create new works at an unprecedented speed and scale. This can make it difficult for rights holders to keep track of and protect their intellectual property. For example, AI-generated content such as videos, images and music could be created and distributed on the internet in a matter of minutes, making it challenging for rights holders to detect and prevent infringement. So this is another aspect that signifies the relationship between AI and intellectual property.
iv). AI and the Future of Intellectual Property
As AI technology continues to advance, it is likely to have a profound impact on the future of the intellectual property. One area where this impact is likely to be felt is in the realm of licensing.
With the increasing use of AI in various industries, there is a growing need for licensing agreements that can effectively govern the use of AI-generated works. This includes not only traditional forms of intellectual property such as music and writing but also newer forms such as AI-generated images and videos. As a result, there is a growing need for licensing agreements that can effectively govern the use of AI-generated works and protect the rights of creators.
Another area where AI is likely to have a significant impact on the future of the intellectual property is in the field of patent law. As AI-based systems become more prevalent, there is a growing need for patents that can effectively protect the rights of inventors and innovators. However, the complexity of AI-based systems can make it difficult to determine who should be credited as the inventor of a work, and this can create challenges for the patent system.
Conclusion
AI is rapidly transforming the way in which we create, consume, and protect intellectual property. From the generation of new works to the enforcement of existing rights, AI is having a profound impact on the intellectual property landscape. We must also work towards creating effective legal frameworks that can adapt to the new challenges posed by AI. This includes ensuring that creators are properly compensated for their works and that intellectual property rights are effectively enforced. Ultimately, the key to successfully navigating the relationship between AI and intellectual property will be striking a balance between innovation and protection.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
January 16, 2023
Trademark Rectification in India
Trademark Rectification in India
A trademark is an intellectual property right that provides protection for a brand’s unique mark, symbol, design, expression, and so on that differentiates it from any other products available on the market. The registered trademark must adhere to the Trademark Act’s requirements. Whenever there is a defect in registering the trademark or in contravention to the provisions of the act, a rectification procedure is followed to remove the trademark from the trademarks register.
Trademark Rectification is a legal process for rectifying or correcting any defect in the specifics of a trademark as recorded in trademark register. A trademark if incorrectly registered or if it is still available in the trademark register after the expiration of its registration period or has been malafidely applied and registered. Within each of these situations, the Indian Trademark Law enables its rectification of trademark applications.
When can a trademark be rectified?
If the proprietor of the trademark discovers small mistakes or determines that some modifications are required to correct errors once it has been registered, the applicant could thus file for rectification with the Registrar. The Act allows for rectification if a trademark is incorrectly registered or remains incorrectly in the register. Any person who is dissatisfied with the trademark may seek rectification or cancellation. An aggrieved person is someone whose interests are harmed by the existence of the entry within the register. The Registrar may also rectify/cancel a trademark on its own motion.
Grounds for trademark rectification in India
The following are the most common grounds for filing a rectification application:
- On grounds of non-use of trademark for at least 5 years.
- breach or failure to observe a condition entered in the Register in relation to the registration of the mark
- The mark registered is similar to an already registered mark.
- Error or defect in any entry made in the Register
- The particular removal of an entry, such as a disclaimer, a situation, or a restriction.
- The mark is incorrectly remaining on the register
- Whenever the renewal fee is not paid.
- A trademark may be removed from the register if it was obtained through fraud, concealment or by misrepresenting any material fact.
Who can file for trademark rectification?
Any person who is affected by a trademark entry on the register can file for rectification of trademark or the Registrar can also initiate the rectification proceedings on its own motion on any of the grounds specified above.
Important factors to consider when filing a trademark rectification
- Proper and detailed submissions: It is critical that a proper and detailed statement of case is made out in a trademark rectification application making out all the grounds for rectification and arguments in support along with detailed facts of the matter. By submitting a proper and detailed statement in support of the trademark rectification, one can significantly improve the probability of successful trademark rectification.
- There is no guarantee: Filing a trademark rectification doesn’t really guarantee trademark rectification. Trademark rectification is a procedure, and only the Trademark Registrar could allow rectification based on the facts and circumstances of each matter. As a result, one can only make their best efforts to make out their best case before the Trademark Registrar to get the outcome in their favor.
- Timeline: Following the filing of a trademark rectification, it sometimes necessitates a time-bound action from the rectification applicant or registered proprietor. As a result, it is essential to monitor the status of the rectification application on a regular basis and take the necessary actions until disposal of rectification.
How to prevent trademark rectification or cancellation in India?
In order to avoid rectification or cancellation of a trademark in India, a registered proprietor must:
- Renew their mark on a regular basis.
- Keep the mark’s distinctive and follow any conditions/ restrictions imposed while entering the trademark on the register.
- Not leaving the mark unused for a period over five years from the date of entry of the mark in the register.
Documents required for trademark rectification
The following documents are required to file a trademark rectification or cancellation:
- A duly filled Form TM-O for rectification/cancellation of a trade mark must be moved through online or physical mode before the concerned jurisdiction where the mark is entered in register.
- A case statement that outlines the facts supporting the claim, the relief sought, and the nature of the applicant’s interest.
How rectification affects the trademark?
The impact of trademark rectification is that if the Registrar accepts the application for Rectification, they could remove the mark, add conditions, add/amend the specifications or in worse case delete the trademark in which the rectification is filed.
Consequences of valid trademark rectification on your trademark
Whenever an application for rectification, cancellation or removal is filed, the Registrar notifies the registered trademark holder to submit a counter response after the rectification application is received. After the response stage, evidence of both parties is recorded and a hearing is held. After hearing both the parties and reviewing the documents on record, the rectification application is accordingly allowed or dismissed.
To defend your registered trademark from rectification, cancellation, or removal, you must take the necessary precautions, for instance renewing the trademark on a regular basis, or continuing to use the trademark and not leaving it unused for more than five years, etc.
frequently asked questions
1. How to apply for rectification?
The trademark rectification application online can be filed by filling the “TM-O” form for rectification/cancellation and pay the applicable fees.
2. What is the defensive registration in trademark rectification applications?
By general rule, a trademark is granted protection with respect to the goods or services it is used and granted registration for. To extend the protection over all classes, trademark owners file applications in all 45 trademark classes despite the fact that the mark is only used or ever intended to be used in a few and not all of the classes. This is known as defensive registration. The courts have also held in various cases as well against the practice of defensive registrations. As a result, if a trademark rectification is filed against such marks and it is demonstrated that the proprietor has no intention of using the mark for the products and services it is registered, the mark could be removed from the register.
3. What is the rectification of a trademark?
Trademark rectification in India is the legal procedure of correcting a mistake in a trademark registered with the Indian trademark registrar.
4. What is the effect of rectification?
Following the filing of the rectification application, if it is found that any of the grounds for rectification are met, the registrar may remove, decline, or rectify the trademark entry within the registry.
5. Who can file for trademark rectification?
Any individual who is distressed with a trademark that has been registered may seek rectification by demonstrating the inconsistencies in registration.
6. What is the cancellation of the trademark?
Trademark cancellation refers to an application to have a recently registered trademark removed from the register of trademarks.
7. How much does it take to file trademark rectification?
The preparation and filing of the trademark rectification in India takes 5-7 days.
8. What is the government fee for filing rectification/cancellation?
The government fee for filing rectification/cancellation is INR 2700/-.
9. Can an application for rectification be made when there is suit for infringement is pending before the civil court?
The application could be made, but if a suit for infringement is pending before the civil court, the result of the suit is contingent to the decision of rectification application with regard to the validity of the trademark.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
January 7, 2023
Trade mark litigation in India
In India, trademark law has grown significantly during the past few years. Trademark litigation is being used to aggressively enforce trademark rights. Due to the filing of cases seeking damages, trademark litigation has increased. It is clear from the trademark that the regime’s platform has been rapidly evolving.
Here’s an article that will help you understand the nitty-gritty of Trademark Litigation in India.
What is Trademark Litigation?
Trademark litigation is approaching the court to adjudicate the dispute over a trademark. Though the trademark rights are territorial in nature but such litigation may be both domestic and international in nature.
What is trademark litigation in India?
In India, the focus of trademark litigation is whether one party has infringed upon the rights of the other party’s trademarks or has misused, misrepresented or represented someone else’s trademark as that of its. Whereas, litigation involving trade dress concerns questions of whether a product line’s distinctive packaging or configuration has been violated.
When a defendant product in India is likely to lead the general public to believe that certain services, products, or businesses are affiliated with one another, unfair competition allegations may occasionally be filed in addition to trademark claims. False advertising is also a part of it.
The India Trademark Litigation takes into account Indian statutes, rules, regulations, and decisional law that are related to or resulting from litigation involving trademarks, trade names, or unfair competition that affects trade identity.
More than only the name of a service or product might be protected by a trademark.
The main laws governing trademarks in India are:
- Trade Marks Act, 1999 (Trade Marks Act): This is the main source of trademark law that is uniformly enforceable across the nation.
There is no state-specific legislation governing trademarks in India. - Trade Marks Rules, 2017 (Trade Marks Rules):
Trademark prosecutions, oppositions, rectifications, and the application/registration process with the Trademarks Registry are governed by these regulations, which the Central Government enacted under the Trade Marks Act.
In the event of a dispute between any rule and a provision or provisions of the Trade Marks Act, the Trade Marks Act prevails. - Delhi High Court Intellectual property Division Rules: The Delhi High Court, in 2022 enacted The IPD Rules to regulate the practice and procedure of the Intellectual Property Division, which was pursuant to the abolition of the IPAB.
Trademark Infringement and Passing-off under Trademark Litigation
=> Trademark Infringement: If the rights of a registered trademark are violated by an unauthorized, unregistered user then it comes under infringement.
The violation can happen due to various reasons such as use by an unauthorized person, using a mark identical or deceptively similar to the registered mark, using a mark that can cause deception or confusion due to the similarity of goods or services used for, using the registered mark as a trading name or a part of it, etc. Section 29 of the Trademark Act of 1999 makes reference to trademark infringement.
=> Passing-Off: The precise definition of passing off isn’t given in the Act, but the courts have derived it from the principles of common law.
Passing off basically means selling your goods or services as if they are of someone else’s.
To establish passing off, the classical trinity test has to be passed which states that there has to be a misrepresentation of the trademark, that the misrepresented trademark has goodwill and reputation attached to it and the aggrieved party has undergone losses and damages because of such misuse and misrepresentation. The right against passing off is available to both the registered as well as unregistered trademark owners.
What are the different types of Trademark Infringement
1. Direct Infringement: Infringement occurs when a registered trademark’s statutory rights are violated by using the registered mark or a mark identical or deceptively similar to it without permission. Section 29 of the Trademark Act, 2019 established the elements of infringement:
○ Registered Trademark – Only a registered trademark could be infringed. The common law principle of passing off will implement to an unregistered trademark.
○ Unauthorized person – The use of the Trademark should be by someone who isn’t the owner or the authorized representative but is still using the mark or a mark that is identical or deceptively similar to it.
○ Identical or deceptively similar mark- the test for assessing whether marks seem to be identical or similar is determined by seeing if there is any possibility of confusion or deception among the people of trade and customers.
○ Goods/Services – In order to demonstrate infringement, the infringer’s goods/services have to be similar or identical to the products which the trademark Registration represents.
2. Indirect infringement: Indirect infringement is derived from the principles of common law, which states that the person or organization might not be infringing the trademark but are:
○ Vicarious liability- In this scenario, not just the principal infringer but the whole body/entity/company would be held liable except the one who is completely without knowledge of the commission of the offense.
Basically, in order to hold other persons liable except the principal infringer, they must have knowledge of the infringement, they must contribute to the same, and they must be deriving financial gains from such infringement.
○ Contributory infringement– In this scenario, all the persons contributing to the infringement and its abetment are liable. As the term suggests, it is a group effort and all are responsible therein.
Who can sue for infringement of trademarks?
Anyone who is aggrieved by the misuse or misrepresentation of their registered trademark can file a suit for trademark infringement.
Whereas any unregistered trademark owner can sue for passing off. It is important to know that for a suit of passing off, an actual act should have occurred. In cases when a registered trademark owner has to sue another registered trademark owner, a suit of infringement cannot be made as per law and only passing off is maintainable.
Remedies against Trademark Infringement or Passing Off
Civil remedies: Section 135 of the Act provides civil remedies such as injunctions, delivery up, and profit of accounts.
■ Temporary/Ad-interim Injunction: If the aggrieved is able to establish that there is a prima facie case of infringement or passing off, the balance of convenience lies in their favor, and if the injunction is not granted he will bear the irreparable loss, then the court can grant an interim injunction till the disposal of the suit.
■ John Doe Orders: These orders issued by the court against the defendants that are not known or cannot be tracked.
■ Permanent Injunction: It is the final order of the court to refrain the infringing party from conducting activities permanently.
■ Appointing Local Commissioner: On the request of the aggrieved, the court can direct the appointment of a local commissioner for conducting a raid at the known/ unknown premise of the infringing parties to seize the infringing goods, accounts, any promotional material, stationary, etc. and make a report of everything that is found.
■ Damages or Accounts of Profits: The aggrieved can ask for the Damages for the loss incurred due to the misuse or misrepresentation of the mark, whereas the accounts of profits require the infringer to provide the actual profit that they have made because of the infringing act.
■ Delivery-up and Destruction: The infringing goods are provided to the Plaintiff who has the right to destruct them.
Criminal remedies: Section 102 and 103 of the Act specifies the criminal liability and its penalty.
The penalty for falsifying or applying a false trademark is 6 months to 3 years of imprisonment with a fine of 50,000 to 2,00,000 rupees. Though if the court is of a reason it can also impose imprisonment for less than 6 months and a fine lesser than 50,000/-.
Enforcement of Registered Trademark Rights by Courts/Government Bodies
Trademark Registry
This is the main body in India responsible for regulating initial protection and registration of a trademark. It is in charge of regulating the application, prosecution, registration, opposition, and other processes.
Courts
Only District Courts and other higher courts in India are the places where lawsuits for infringement and passing off, among other allegations, can be filed.
There are no courts that specifically deal with matters pertaining to trademark law. However, the Commercial Courts, Commercial Divisions, and Commercial Appellate Division of High Courts Act 2015 has established specialized commercial courts.
According to the new statute, these issues are not only heard quickly but also by exclusively specialized benches. Furthermore, there is a high level of expertise, particularly in High Courts and the Supreme Court, thanks to a long history of trademark jurisprudence and a robust common law heritage.
Intellectual Property Appellate Board (IPAB)
This quasi-judicial body was specifically established to deal with IP law matters. Under Section 91 of the Trade Marks Act, appeals against decisions made by the Registrar of Trade Marks and other officials are handled in this appellate body.
Appeals in Trademark Litigation
Any litigant has the option of filing an appeal against a final decision, as well as against interim orders. Here is how it goes…
Appeals From Final Judgments
Any party has the option to appeal the final decision to the Appellate Court.
Section 96 of the Code of Civil Procedure,1908 (CPC) refers to this as the First Appeal. Let’s say the first appellate court upholds the original final judgment.
In that situation, the party has the right to submit a regular second appeal before a higher appellate court, but only if a significant legal issue is at stake (section 100 of the Civil Procedure Code).
The time it takes to get a ruling in a final appeal is not predetermined and can range from two to five years.
Appeals From Interim Orders
Parties may also appeal interim orders if the Civil Procedure Code (order XLIII, rule 1) permits it (given that it is permissible). When the final judgment in the case is being appealed, further orders may also be appealed. Typically between one and six months, appeals from interim orders are completed far more quickly than those from final judgments.
Stay Of Proceedings
Only in cases where an appeal has been lodged against an interim order are litigants eligible for this relief.
The mere fact that an appeal has been filed does not automatically stay the underlying lawsuit (or order that is being appealed). The party who feels wronged must persuade the court that the underlying processes ought to be stopped.
Over the years Trademark Litigation has become the backbone of Trademark related disputes, and the savior of aggrieved parties. It has positively escalated the process of providing protection to Trademark rights and has also broadened the horizon for keeping up with a constantly ever-evolving world.
Naseem Sheikh is a trademark enthusiastic and has been practicing in intellectual property law for close to six years.
Last modify 27-05-2023
December 20, 2022
Documents Required For Trademark Registration In India
INTRODUCTION
There has been a rapid expansion of industries and business because of the technological developments in every field. The people and entities are therefore looking for trademark registration as the trademark becomes synonymous to the brand. Securing protection and holding exclusive right over the distinctive marks, devices, sound, shape, slogan, etc. becomes the important part of the business strategy. Both physical and digital filing of trademark application is accepted by the Registry. To support the Trademark Application, documents are required without which the Trademark Registration would be incomplete and difficult to get a registration for.
WHO CAN SEEK TRADEMARK REGISTRATION IN INDIA?
Anybody (a person or an entity) can file a trademark, such as:
- Individual
- Start-up
- Small, medium, and micro enterprises (MSME)
- Proprietorship
- Limited Liability partnership or a partnership firm
- Company
- Undivided Hindu Family
- Non-profit Institution
DOCUMENTS REQUIRED FOR TRADEMARK REGISTRATION:
Common documents/details required for application by any individual or entity are:
1. A duly executed Power of Attorney for the trademark application that is being handled by an attorney or a registered trademark agent.
2. Graphical/Artistic representation of the mark if it is a device mark.
3. 30 Second Sound recording in MP3 format and its graphical representation if it is a sound mark.
4. A User Affidavit has to be attached along in the Trademark Application if the applicant asserts that the trademark has been in use since a date prior to application date. The affidavit is notarized and is annexed with the supporting documents to establish the use of the trademark since the date as mentioned.
What can be included as a supporting document?
- Advertisements
- Social Media Extracts
- Invoices
- Extracts of E-commerce Platform if the goods are sold there.
- Pictures of events/activities if the mark is being used for a service.
- News Articles if any
- Pictures of Goods bearing the trademark.
5.The Udyam Aadhar Certificate/ Registration if the entity is an MSME or the certificate of registration of DPIIT. These certificates are beneficial for entities as the government fee for trademark application is reduced by 50% by producing the respective certificate.
Specific documents required For Trade mark:
1. INDIVIDUAL/ SOLE PROPRIETOR– At the time of Application, no specific document is required from the Applicant other than the common documents as mentioned above. It is though suggested that the Application should be filled carefully without any spelling errors as well as appropriate columns/categories are to be selected to prevent objections.
2. START-UP – When registering a trademark in India as a startup, one must submit the certificate of registration of DPIIT (Department for promotion of industry and internal trade). To submit the Application as a startup this certificate is necessary.
3. MICRO, SMALL, AND MEDIUM ENTERPRISES – A Micro, Small, or Medium-Sized Enterprises has to furnish its Udyam Aadhar Registration Certificate with the relevant goods/services as per the trademark class applying for in order prove that they are an MSME.
4. PARTNERSHIP FIRM/ LIMITED LIABILITY PARTNERSHIP – At the time of Application, no specific document is required from the Applicant other than the common documents as mentioned above. It is though suggested that the Application should be filled carefully and the name of the firm as well as names of all the partners should be mentioned in the form.
5. COMPANY – The Company isn’t required to furnish any specific documents at the time of the Application.
6. HINDU UNDIVIDED FAMILY (HUF) – When a HUF submits a trademark application, the name of the Karta is important to be mentioned.
7. SOCIETY – For Society, no specific documents are required to be submitted in the application.
8. TRUST – While submitting the application as a trust, it is important that the names of the Trustees are important.
It is not mandatory or suggested to upload personal documents such as ID Proofs (Aadhar Card, PAN Card, GST, etc) at the time of filing the Trademark application as the portal is of public domain and anyone can have the access to the documents. The Applicant therefore should be aware of this fact that these documents aren’t required for filing the application and should not be shared.
But if a TM-M is filed for any address change/ name change or there is any transfer or assignment, then in that situation documents to support that change are required to be attached along with the form.
CONCLUSION
Before attempting the filing of trademark registration, it is crucial to cross-check all the documents and information as the correction of error/s may be difficult to implement as another form has to be filed to amend such clerical/ typographical errors which then might in some cases require a hearing before the Examiner. If the Trademark Application is incomplete, it usually fails the formality check which prolongs the Trademark Application procedure. It is therefore preferred to reach out to the trademark attorney to assist you during and after the filing of trademark application.
Nagma Kacchi is a graduate of Mumbai University and she has an in-depth knowledge of branding and value proposition and has participated in various Intellectual Property webinars and is interested in exploring the legal world.
November 19, 2022
Know Difference between Trademark and Design Registration
What is Trademark Registration?
A trademark in India is a symbol, brand, or logo that separates one business or organization from everyone else. In other words, it’s a powerful tool that offers brand image and safeguards to the goods and services it really is connected to. Having mark that is a combination of letters/ numbers/ words’/ phrase/or has a graphical representation,or in different circumstances has a sound registered as a trademark allows a business or individual to use it to identify its goods or services. A registered trademark offers a legal defense against infringement.
What is Design Registration?
Design refers to the aesthetic qualities of a good, such as its pattern, arrangement, shape, ornament, the structure of lines or colors, or their combination, implemented to it by an industrial process. A design maker, originator, or craftsperson could apply for design registration in India as the owner of the design to prevent others from using the same design on their goods without their approval.A design’s ability to stand out from the competition is protected by a design registration, which also serves as a distinctive selling point for an item. Customers occasionally buy products for both their appearance and their intended use. The product’s outward appearance is legally protected thanks to the design registration.
To get the design registered, it must, however, be new and not priorly published.
Difference Between Trademark And Design Registration
| Trademark Registration | Design Registration |
|---|
The logo that represents the company is protected by trademark registration. | Design registration safeguards the unique appearance of the goods that acompany sells. |
Based on the class as well as the name the applicant chooses, their trademark registration application is assessed. | During the procedure of registering a design, the examiner assesses the item's novelty, creativity and appeal in the applied class.
|
The Trademark needs to be Distintive (inherent or acquired) for being able to be registered. | The Design Application has to be filed with the statement of Novelty as well as a disclaimer if needed for succesful registration.
|
Trademarks are safeguarded by the Trademark Act,1999. | Design is protected under the Design Act,2000. |
The Trademark Registry, oversees trademark registration in India. | The Patent office oversees design registration in India. |
In India, trademark registrations are valid for ten years and can be renewed indefinitely after that.
| The registration of a design is good for 10 years. It may be prolonged for an additional five years only.
|
For Eg: the red and white logo of coca cola | For Eg: the shape of the bottle of coca-cola |
Benefits of Trademark And Design Registration
- Whenever a Trademark or design is protected, its owner—the individual/entity who owns the registered design—has the sole authority to stop unauthorized third parties from duplicating it.
- By enabling consumers to instantly recognize the appearance and associate it with the creator, design registration helps the owner of the design increase the trademark’s financial benefit.
Overlap between Trademark & Design Laws
- The unconventional trademarks such as shape and texture have enabled the situation in which the lines between these two laws are blurred. The issue in such cases arises during the establishment of protection against infringement and passing off. As it is evident that there is no law regarding the passing off of a design.
It was held in Mohan Lal and Ors.V. Sona Paint &Hard wares and Ors. [AIR 2013 Delhi 143] that in a case of a registered proprietor of design, who is also using the said design as a trademark, he would be entitled to institute an action of passing off in respect of the same if the requirements of triple identity test are met. But in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. [AIR 2019 Delhi 23] it was stated that the Mohan lal case ignored Section 19(1)(e) which provides that a design may be cancelled if it is not a design as defined under the Act but stated that the larger legal formulation of Mohan Lal, regarding a passing off action, one that is not limited to trademark use alone, but the overall get up of trade dress is correct.
Finally in Crocs Inc. USA vs. Aqualite India Ltd and Anr., it was held that a registered design cannot be a trademark.
If you’re interested in learning more about intellectual property rights, check out our latest post on trademark vs patent
Conclusion
Although both the design and trademark registrations are important in their own sphere, it is important for the applicant to understand in which application will the brand gain more value. Trademarks are essential to build the brand value but it cannot be denied that sometimes a unique design becomes the USP of the business.
Naseem
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India
October 29, 2022
Benefits of Copyright Registration
What is Copyright?
Controlling access to the use and distribution of certain creative works and digital content is copyright in law. In layman’s words, copyrighting is safeguarding one’s original work. Copyright laws restrict the selling and utilization of intellectual property, such as literary and artistic works, to ensure that the owner of such intellectual property has full rights to monetize his/her IP (Intellectual property).
Copyright is crucial for people as it protects them from the unfair usage of their IP and gives them the liberty to decide who can use their IP.
Through the grant of protection under the Copyright of Intellectual property, the copyright’s primary goal is to encourage and compensate writers for producing new work and making such work accessible to the general public for enjoyment and accordingly giving artists certain exclusive rights that enable them to safeguard their creative work from theft.
Although Copyright law does not require authors to make their protected works accessible, and it is also imperative that they are granted the same protection over their work irrespective of whether the work is published or not, however, copyright law does serve the goal of enhancing the wider public interest through the availability of artistic content and safeguarding such content upon publication.
The Copyright Act
In India, copyright law is governed by the Copyright Act of 1957. The Act has been in force since January 21, 1958. India’s history with copyright laws traces back to the British Empire’s colonial rule.
The Indian Copyright Act of 1847, passed by the British during the reign of the East India Company, was India’s first copyright legislation and was intended to implement English copyright regulations there. It was replaced by the Copyright Act of 1911, which extended to other British territories, including India.
It was further changed in 1914 by the Indian Copyright Act 1914, which continued in effect in India until the Copyright Act of 1957 was adopted by the parliament of independent India. According to the Copyright Act of 1957, the owner has the negative rights to forbid others from using his works in specific ways and to seek compensation for the usurpation of that right. This Act grants the owner two rights: economic and moral.
The Copyright Act of 1957 was India’s first copyright law post-independence, and it has undergone six amendments to ensure the copyright law is refined over time in conformity to the changing times. The Copyright (Amendment) Act of 2012 was the most recent amendment made in copyright law. The majority of significant international treaties controlling the field of copyright law, including the Rome Convention of 1961, the Universal Copyright Convention of 1951, and the Contract on Trade-Related Aspects of cognitive Property Rights, are signed and ratified by India (TRIPS). India originally declined to sign up for the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), but the treaty was ultimately signed in 2013.
Additionally, the 1999 International Copyright Order was approved by the Indian government. This Order accords the same status to works initially published in any nation that is a signatory to any of the aforementioned agreements as if they were published in India.
Advantages of Copyright Registration
For the reasons listed, the copyright holder must promptly register a work:
1. The ability to impose copyrights through filing a copyright infringement case: The registration certificate is prima facie proof that the creative expression is original and belongs to the person who registered it as a copyrighted work. If the copyright owner seeks an injunction against a copyright infringement, this document is crucial and necessary.
2. Control over economic rights: Copyright registration also grants the creators and artists certain economic benefits related to their IP if they have the copyright registration of their creation, such as monetization of their IP, which the owner of the IP completely controls.
3. Letting others know who owns what: In copyright disagreements, ownership is usually questioned. Even if the alleged infringer denies authorship, the owner of the copyrights must demonstrate his rightful ownership of the rights to succeed in a copyright infringement lawsuit. A public record of the ownership of a copyright is created via copyright registration. The registration record may also be helpful if a potential violator considers utilizing the work without authorization while unlawfully attempting to register a copyright claim for himself/herself.
4. Legal evidence of possession and ownership: The ability to inform the public that a certain person owns a piece of work is the copyright registration’s most significant advantage. The second most significant advantage is the subsequent legal validity it offers from a legal standpoint. Copyright registration will defend the original owner if an unauthorized third party remixes or disseminates a copyright-protected work. Additionally, the Copyright Act still supports the copyright holder’s position if they only show that the infringer had access to the raw source and that their creations are comparable as evidence of originality.
Benefits of Copyright
1. No need to renew the copyright again and again- This means that the lasting period of the copyright is about 60 years. However, if the owner has a copyright for any original literary, dramatic, musical or artistic works, the 60 years period is counted from the date of demise of the copyright holder. In other cases, the 60 year period is counted from the date of publication. When making modifications to the details of the assets, the person must yet go to the Registrar of Copyright.
2. Elimination of financial losses: One of the main benefits for the authors or the owners of the original works is that they have control over the distribution of their intellectual property. Limiting losses brought on by duplicating the original work is one of the benefits of copyright registration. The definition of piracy is simple; it is used to describe the violation of the copyright of a person. In India, most people are familiar with this phrase because it is regularly used in conjunction with physical goods.
3. Assists in copyright infringement : When addressing infringement issues, copyright also specifies the period of publication of the work. One of the most important things when a lawsuit for infringement is filed is to determine when the invention was first registered and when the alleged infringement first occurred.
4. Benefits via additional royalties : A copyright permits the owner to demand compensation and royalties when a trademark’s work is translated, modified, or changed. The utilization of remixed songs in music videos is common. Nowadays, YouTube is where copyright is most frequently used because there is a high chance that the artists might steal from one another, and it is important to prove who originally owned the work.
5. Helpful in transfer of copyright : Transfer of copyrights from one country to another can be executed much easier using copyright as this allows the owner to complete the process hassle-free.
6. Safeguards your original creation : Copyright serves as a top layer of protection to safeguard the ownership of a person’s creativity. Since creativity is the foundation of development, no civilized society can disregard the necessity of fostering it. Creativity is a necessary component of a society’s economic and social development.
The Takeaway
It is very important to have your intellectual property safeguarded by owning the copyright of it and having proof of your possession just in case anything goes off or there is any conflict associated with the ownership of the IP. Copyright also helps clarify if there is any unjustified utilization of your IP without your permission. In this modern era, it is very important to safeguard your creation from theft and misuse.
Nagma Kacchi is a graduate of Mumbai University and she has an in-depth knowledge of branding and value proposition and has participated in various Intellectual Property webinars and is interested in exploring the legal world.
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October 27, 2022
Understanding Trademark Classes in India
What are Trademark Classes?
When you apply for trademark registration online, you must specify the class of goods or services for which your trademark is used. Trademark classification is a method by which trademark officeidentifies and organizes the trademark based on the description and scope of the goods or services to which the trademark is applied. Trademark classification mainly serves two purposes, firstly it provides an organized maintenance of the Register and secondly, it helps identify potential trademark infringers. A trademark generally affords protection for the goods, services and class that is specified in the application.
Trademark Classes - Trademark Classification of Goods
Class 1. Chemical used in industry, science, photography, agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesive used in industry
Class 2. Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordents; raw natural resins; metals in foil and powder form for painters; decorators; printers and artists
Class 3 . Bleaching preparations and other substances for laundry use; cleaning; polishing; scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices
Class 4 . Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels(including motor spirit) and illuminants; candles, wicks
Class 5 . Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparation for destroying vermin; fungicides, herbicides
Class 6. Common metals and their alloys; metal building materials;transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores
Class 7 . Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs
Class 8 . Hand tools and implements (hand-operated); cutlery; side arms; razors
Class 9 . Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus
Class 10 . Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials
Class 11 . Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating, water supply and sanitary purposes
Class 12 . Vehicles; apparatus for locomotion by land, air or water
Class 13 . Firearms; ammunition and projectiles; explosives; fire works
Class 14 . Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and other chronometric instruments
Class 15. Musical instruments
Class 16 . Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks
Class 17 . Rubber, guttapercha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal
Class 18 . Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery
Class 19 . Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Class 20 . Furniture, mirrors, picture frames; goods(not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum and substitutes for all these materials, or of plastics
Class 21 . Household or kitchen utensils and containers(not of precious metal or coated therewith); combs and sponges; brushes(except paints brushes); brush making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes
Class 22 . Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes) padding and stuffing materials(except of rubber or plastics); raw fibrous textile materials
Class 23 . Yarns and threads, for textile use
Class 24 . Textiles and textile goods, not included in other classes; bed and table covers.
Class 25 . Clothing, footwear, headgear
Class 26 . Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers
Class 27 . Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings(non-textile)
Class 28 . Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees
Class 29 . Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats
Class 30 . Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces, (condiments); spices; ice
Class 31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt
Class 32 . Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
Class 33 .Alcoholic beverages(except beers)
Class 34 . Tobacco, smokers’ articles, matches
Trademark Classification of Services:
Class 35. Advertising, business management, business administration, office functions.
Class 36. Insurance, financial affairs; monetary affairs; real estate affairs.
Class 37 . Building construction; repair; installation services.
Class 38. Telecommunications.
Class 39. Transport; packaging and storage of goods; travel arrangement.
Class 40. Treatment of materials.
Class 41. Education; providing of training; entertainment; sporting and cultural activities.
Class 42. Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
Class 43. Services for providing food and drink; temporary accommodation.
Class 44. Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Class 45. Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India & Delhi High Court .
October 27, 2022
COMMON TRADEMARK ISSUES
India is developing in the area of intellectual property rights (IPR), and several business owners are now registering for trademarks to protect their brands from infringement by others. The Trademark Act, of 1999 serves as the foundation for trademark law in India. In just a few years, India has seen a dramatic increase in trademark registration applications. Apart from that, there are increasing difficulties encountered during trademark registration. Some of the common trademark issues are mentioned below.
1. Choosing a Trademark without Research
Most businesses sometimes rush to finalize their trademark, avoiding all the research and dismissing it all as mere formalities. But if, after all of your hard work creating and registering a trademark, you discover that another company is already using one similar to yours? You will be unable to use it again, effectively rendering all of your effort and time invested in the process useless.
2. Not Evaluating Your Trademark's Strength
This is in your long-term interest as a business to understand the trademark’s strength. Frequently, businessmen overlook this issue, just to discover later the existence of numerous other brands with similar names, save for the replacement of one or two alphanumeric characters. Because however almost the same trade mark has been used by many organizations, this may mislead your customers and cause confusion.
3. Incorrect Use of the TM Symbol
The applied trademark Trademark issue cannot be identical or similar to an existing registered trademark or a symbol for which a registration application is pending with the Registrar. The term similar refers to any graphic or phonetic resemblance. When determining the similarity of trademarks implemented under classes denoted for goods, the Registrar also consider the nature of the goods, the purpose of the goods, and the channel of trade for the goods. However, when determining the similarity of trademarks applied under classes marked for services, the Registrar think about the nature of services, the goal of services, the uses of services, as well as the regular business partnership.
4. Smaller Brands Exploiting Your Trademark
Trademarks have handed control to company owners who don’t qualms regarding exploiting trademarks of well-known brands to boost their revenues as media and the web osphere have advanced. These companies attempt to try and emulate your brand’s practices, giving the appearance that both trademarks relate to the same company. Also, they sell their goods at cheaper prices, reducing your market share. Keep your eyes peeled for such brands!
5. Laying out an Unclear Trademark and IP Protocol
This problem occurs while businesses or organizations are careless in establishing rules concerning the use of their trademark via other organizations and partners. Way to set lax or just no rules in this regard puts you at risk of being eaten by sharks. If you agree to allow a third party to use your intellectual property and trademark, make absolutely sure that all these partnership documents are documented legally. Experts must review these files for inconsistencies or the possibility of scams by either party.
Not only must your company’s trade mark be legally protected, but so must its copyright and patent policies. Before signing any contract, make sure to read it thoroughly to protect your company’s secret information and private information.
6. Failing to file a trademark registration
Trademarks that have not been registered under the Act are considered unregistered. Unregistered trademarks can be utilized to be used in connection with products and services, but they are not very effectively protected by the Act. This can be a lot harmful to a business that is relying on its trademark for the most part of its functioning and sales.
7. Failure To Re-Register/Renew Trademark Before It Expires
TM renewal is required every ten years, so the company will experience an even larger increase in overall trademark registrations in the coming years. The renewal application shall be submitted to the Trademark Office and the duration for it should be no less than one year before the mark’s expiration date. Also, the businesses must complete and submit the application form by the deadline that is given. However, the businesses can extend their protection for another decade but conditioned it should be the timely renewal. In case an individual or company fails to renew its trademark, the mark will become liable for the process of removal, and the holders will be required to restore their trademark in order to retain its extended protection.
8. Role of Attorney in trademark registration
You should look for a TM attorney with a thorough understanding of trademark laws who can offer you legal support at every stage of registration, from choosing the right mark to receiving a registered certificate. Only they can, after learning about your company, select the precise categories under your class for your enterprise. To reduce the risk of the objection, an experienced TM attorney should be able to comprehend your business and submit the application only for the specific categories that pertain to it.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India & Delhi High Court .
October 26, 2022
Know your Intellectual Property Rights as Social Media Influencers
Differentiating itself from conventional print and electronic media, social media is equipped with various tools. Tools for sharing as well as disseminating material and data around the world, as well as tools for communication and information exchange, are two distinctive elements of social media. Social media is a tool that has greater influence than conventional media because of these two factors. Social media influencers or content producers are well-known, influential, and qualified enough to persuade those within their online social circle. They use social media platforms like Instagram, Facebook, YouTube, Twitter, Snapchat, TikTok and Pinterest, among others, to earn money from advertising, product promotional opportunities, as well as other revenue streams. Since there are always two sides to the coin, the increasing popularity has also resulted in a number of Intellectual Property infringements, and hence, the need for awareness has grown too. Read further to know more!
Who is a social media influencer?
The people who are well-known, potent, and relevant enough to influence others within their online social network are known as social media influencers or creators. They use social media platforms like Instagram, Facebook, YouTube, Twitter, TikTok, Snapchat, Pinterest, and many others to make money through advertising, product endorsements, and other revenue streams. One of the most powerful and successful forms of promotion and advertising is social media influence. Influencers, YouTubers, and other artists, however, are more vulnerable to specific legal dangers affecting Intellectual Property Rights (IPRs) as social media platforms grow more dynamic and open to everyone.
Why should Social Media Influencers Know Intellectual Property Rights?
Due to these social media platforms’ widespread use and ease of access, plagiarism of content and unauthorized use of trademarks and brand names have become commonplace. IPRs of all kinds, including trademarks, copyrights, domain names, brand names, etc., are relevant to social media influencers. There are two crucial factors to take into account while discussing IP implications for social media influencers, which are as follows:
1. First and foremost, it is crucial to make sure that the influencer’s social media activities comply with IPR laws and do not violate the IPRs of firms, celebrities, musicians, or films.
2. Second, the influencers are required by the pertinent Intellectual Property (IP) regulations to safeguard their content, distinctive identity, domain names, and even hashtags.
Other reasons include:
3. Prevents others from using your original material as their own.
4. Obtain ownership documentation from the authorities.
5. Safeguard your own content not just at home but also abroad.
6. Construct intangible resources
7. Make a name for yourself in the industry.
8. Maintain your unique brand identity.
What types of intellectual property should influencers register?
1. Copyright – Among the most vital strategies for safeguarding content posted on social media seems to be copyright. This is due to the fact that original literary, artistic, composer, dramatic, and cinematic works of all sorts fall under the purview of copyright. Everything is therefore covered by Copyright Act, 1957, whether it’s your original reel, a piece of music, a Video posted on youtube, an artwork you published, or a piece of writing you produced as an influencer of social media. As a piece of literature, even a tweet is safeguarded by copyright. There is a copyright on all original content. When users create fresh, unique content, copyright law is used to safeguard it. However, it is constantly advised to submit an application for copyright registration to obtain official documentation of ownership, the certificate of registration is prima facie evidence of ownership. However, the registration of copyright is not mandatory under the law.
2. Trademark – Distinct brand identification is crucial in today’s marketplace for all types of businesses. Social media influencers who profit significantly from digital marketing must also safeguard their own brand identities. The most efficient way to accomplish this is by filing for a trademark Registration. Trademarks cover usernames on social media sites, YouTube channels, and Instagram manages.
3. Domain Names – Domain names are simple to memorize and utilize. Simply said, a domain name is a company’s “online identity.” Each website has a domain name that serves as an access point and an address. In most cases, domain names begin with a business name and end with.com,.org,.gov,.net,.in, etc.
In general, if a domain name satisfies all requirements for trademark registration, it may also be registered as a trademark. Once a domain name is registered, the owner will be granted all the legal rights and power that are typically only granted to those who own registered trademarks. As a result, social media influencers and content producers should select a domain name after verifying that it is available and that it is the name they want to use.
How can Influencers Protect their IP?
To ensure that their original content, which is available free to millions of individuals online, is protected, social media influencers, makers, and YouTubers must also take this step. Influencers are able to perform their Intellectual Property as well as register. Online aliases, symbols, slogans, logos, series names, and even hashtags might all qualify for trademark protection. Copyrights may be applicable to original audiovisual works such as films, images, textual content, artistic work, audio recordings, and videos. In addition, a right of publicity can be established to prevent the unauthorized utilization of an influencer’s name, image, or likeness.
The ideal course of action for influencers is to file a copyright application for their work as soon as it is created, as well as a trademark application for their channel or their name as soon as they start using it on Social media in association with their content.
Some famous examples are:
- Lele Pons, a well-known YouTuber, for instance, has filed a trademark application with the USPTO (the United States Patent and Trademark Office) under Class 41 (entertainment services).
- Kylie Jenner is also registered as a trademark holder under Class 35 for “Advertising services, namely promoting the brands, goods, and services of others; endorsement services, namely promoting the goods and services of others.”
Influencers on social media should also read and comprehend the terms of service for each social media site where they plan to post information. A social media platform may be granted ownership and control over materials submitted or shared to it by certain terms of use or services. Before starting to publish one’s original content, it is essential to have a well-thought-out strategy because some websites allow users to own their uploaded content.
Damages can only be recovered from the date of registration (which can take a while) in the case of copyright, where certain nations’ laws require copyright registration before any monetary damages can be recovered for the violation of copyright.
Who holds the rights for IP’s created for the purpose of Influencer Marketing?
Social media influencers enter into contracts with various brands under which they agree to produce original content for the brands in order to promote their goods. Who holds the right to a particular piece of content is typically decided by the deal signed between both the influencer and the brand they are promoting. Except otherwise specified in the agreement, the brand/business must therefore own the rights to all forms of content created for marketing. The original artist, i.e., the Influencer, holds the rights to their content if there is no specific clause in the agreement. That is among the justifications for having a professional draught a service-level agreement.
The Future of Digital Content Protection on social media
Recently, there has been increased discussion regarding how NFTs may affect the safeguards of content creators’ and influencers’ intellectual property. NFTs, or “non-fungible tokens,” appear to be blockchain-based rewards for proving the authenticity of online physical goods like pictures, music, and videos, as well as visual elements (and other digital content). Content creators are still safeguarded by copyright law regardless of whether NFT is their original work or if they recommend combining copyrighted works with the work of another artist.
CONCLUSION
Since the social media world gave us all the opportunity to share content and post our own works, the laws governing intellectual property cases have changed significantly. Although the problem of intellectual property on social sites is complicated, it can be successfully handled by taking the necessary precautions for compliance and safeguards. Likewise, the infringer’s unauthorized utilization of one’s trademark registration in a way that endangers their unique feature or legacy is incompatible with ethical business or industrial practices.
Naseem
Naseem Sheikh is a trademark enthusiastic and has been practicing intellectual property law for close to six years.
August 23, 2022
Everything You Should Know About Trademark and Logo
WHAT IS A TRADEMARK?
A subset of intellectual property rights is Trademark. Individuals are able to keep ownership rights to their original works of art and creative endeavors because of intellectual property laws. The intellectual property is restricted by a number of fees for registration and fees for violation since it was made possible by human labor. Trademarks, Copyright Acts, Patent Acts, Designs Acts, etc are examples of intellectual property.
A trademark can also be considered a great marketing mechanism to increase the revenue generation of a company. Although a brand is always a trademark, a trademark isn’t really necessarily a brand. A name, term, or symbol that distinguishes goods from those of other businesses is known as a trademark. With a trademark, product recognition is guaranteed and made simpler, making the process of marketing products or services much easier. A trademark might be a phrase, a logo, or a pictorial mark.
There was no trademark law in force in India before 1940. Which led to the emersion of a large number of registered and unregistered trademark infringement problems that were resolved in line with Section 54 of the Specific Relief Act of 1877. The Trademark Act was replaced by the Trademark and Merchandise Act in 1958. The Act allows for trademark registration, giving the holder of the mark a legal right to its sole use. The Indian government updated this earlier Act with the Trademark Act, 1999. In instances of trademark infringement, the police are authorized to make arrests under the 1999 Trademark Act.
WHAT ARE THE TYPES OF TRADEMARKS WHICH CAN BE REGISTERED IN INDIA?
Several types of trademarks could be registered in India, including the ones listed below.
- Symbols and logos: Printed characters, painted designs, or painted figures that represent a company’s name, service, or product are known as logos and symbols.
2. Sound Mark: It’s a sound that can be associated with a good or service provided by a certain company. The notion of visual representation, a prerequisite for trademark registration, includes sound markings. Trademark registration for a sound must be presented in a way that makes it distinctive and recognizable to the customer.
3. Service and Word Mark: Service and word marks are mostly used to help differentiate their owners’ businesses from those of other firms that provide the same services. A service mark is used to distinguish services from products, much like a product mark is.
4. Series Marks: A series mark refers to a group of marks that all have the same common name but differ according to specific attributes like value, quality, and cost.
5. Collective Marks: Not only one specific commodity or service but a number of persons are associated with these marks. The primary owner of these trademarks is a company, institution, or organization. Members of the group might utilize them to show themselves as an integral element
6. Mark of certification: The certification mark is another kind of trademark that is frequently used in India to indicate the company’s ownership of particular standards of quality. The public is made more aware of the trader’s certified products and services thanks to certification markings.
CAN A LOGO BE A TRADEMARK?
Although a logo can get trademark rights, it is not always a trademark. After creating a unique logo, you might want to consider trademarking it. It is very advised to trademark the logo because it serves as a physical representation of your business. A logo is easier for your consumers to remember than a name. For example, The Nike “swoosh” is a fantastic illustration of a trademark logo. The first step in your proactive strategy for remaining one step ahead of its competitors is to use a trademarked name and logo for your corporation or business. Industry experts claim that company trademark names and logos have an impact on customers as well. Each business that is legally registered under the 1956 Act has a unique company name and corporate logo that are acquired from rivals according to the 1999 Trademark Act.
Logo registration online is a common choice for business visionaries due to its simplicity and clear tactics. You can get assistance through the logo registration procedure from a trademark attorney or other legal expert.
WHAT IS THE DIFFERENCE BETWEEN A LOGO AND A WORDMARK?
Word Mark: It is referred to be a wordmark if a corporation, like Reliance, Hero Motors, or Parle, has only trademarked its official name. This implies that the trademark would still be allowed even if there is an existing company using the same name as the toy maker but in a different industry unless the rival business can demonstrate that its customers are unsure who owns the trademark of the toy producer.
Logo Mark: If you want your customers to know you by your distinctive, catchy logo, you should submit a logo trademark registration. Consumers may easily recognize the logos of many popular firms, making them well-known.
The second-broadest protection against unwanted infringers when used as a word mark. However, whether a company applies a word mark or a logo registration will entirely depend on the business plan, as long as the logo mark is sufficiently unique, the company can proceed with registering just the logo. Your brand should stand out, whether it takes the form of a word, a logo, or a hybrid.
CAN WE REGISTER A WORDMARK AND A LOGOMARK TOGETHER?
Every company owner must take into account the importance of trademark acquisition as a necessary step in securing the integrity of their brand. The procedure is, however, not much expensive in India comparative to other countries, as everybody who has glanced into it is aware. It also takes a lot of time.
Thus, it is unsurprising that one of the most common questions on logo and trademark arises when business owners seeking to register a trademark for their company is whether they should register both their business name and logo on the same application.
You may register together and save money and possibly time. However, there are situations when going with the easier and less expensive alternative can end up costing you considerably more in the long run.
WHY TRADEMARK AND LOGO REGISTRATION IS IMPORTANT?
Once your company starts to take off, logo registration has several benefits. Although registering a logo requires some work, it will allow you to use the registered trademark logo as legal evidence of your ownership in court. Additionally, registering a logo prohibits other companies operating in the same industry as yours from registering logos that are identical to yours. Additionally, during their intellectual property audit, any investor would be interested to know if you have a registered logo.
It offers defense in court against bogus and dishonest goods. Because of the product’s name or emblem, the consumer may quickly recognize it. It develops for the owner an intangible asset with transferable, marketable, and franchisable potential. Because of the confidence and goodwill that trademarks foster in the memory of customers, many of them remain devoted to the product.
COMMON MISTAKES PEOPLE MAKE AT FILING LOGO TRADEMARK APPLICATIONS.
The most frequent error individuals make when filling out a trademark application for a logo is that they do not finish the explanation section properly, which renders the application less helpful for the officials to review and evaluate. The explanation part of the application must be concrete and straightforward with all the relevant information.
Also read our latest blog on Difference Between Trademark and Patent
CONCLUSION
A registered trademark gives the owner an exclusive right and distinguishes the product from similar products created by other businesses. A trademark serves as an owner’s intangible asset and long-term brand protection. The only person who is permitted to use those certain words, symbols, and slogans is the owner of a trademark. It is essential for a brand to be safeguarded and preserved in an economy like India. Therefore, it is crucial to acquire a trademark registration in India, not out of requirement but rather out of necessity.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
August 22, 2022
Difference between trademark and logo
Difference between trademark and logo
What is a Trademark?
A trademark is a type of intellectual property that consists of a recognizable sign, devices, or expression that identifies and distinguishes products or services from other sources. The owner of a trademark can be an individual, a business organization, or any legal entity.
What is a logo?
A logo is a graphic/artistic mark, emblem, or symbol that is used to aid in public identification and recognition. It can be abstract or figurative in design, or it can contain the text of the name it represents, as in a wordmark.
Can a Logo Be a Trademark?
In general, logos and devices used as brand identities for businesses are protected as trademarks.
What is the difference between logo & trademark?
A trademark can be a slogan, phrase, word, company name, logo, or design that identifies a business and/or its products. A logo is a symbol or device used by a business that may be protected by trademark laws. Many companies choose to seek trademark protection for their logos. So, logo consists a part of the trademark.
Why logo registration/Trademark Registration Online is Important?
A trademark registration establishes ownership of a brand, name, or logo. It safeguards your brand against unauthorized third-party use. The registered trademark establishes that the product is entirely yours, and you have the sole right to use, sell, and modify the brand or goods in any way you see fit.
Common Mistakes
Few common mistakes regarding trademark registration are-
- Incorrect use of the TM and R Symbol.
- The Trademark is not being used in commerce.
- Looking for Trademarks That Are Similar.
- Lack of a Distinctive Trademark.
- Choosing the Incorrect Trademark Class.
- Uploading a picture of a different mark with different wording
- Choosing wrong category
- Filling wrong Applicant details etc
Frequently Asked Questions:
What protection comes with a registered trademark?
Registering a trademark grants you the following rights and protections:
- The right to take legal action in court against alleged trademark infringement.
- Your trademark registration is made public.
- You are legally presumed to be the owner of the trademark and to have exclusive rights to use it in connection with the goods and/or services listed in your registration.
Can we register our logo as a Trademark?
Yes.
Can I put ™ on my logo?
Yes. The TM symbol can be used anytime you adopt to use it. It is just an impression to public that it’s a trademark and is used to indicate that a trademark exists and serves as a warning to infringers and counter-fitters.There is no need to file or register a trademark to use the TM symbol. However, using the symbol ‘R’is not permissible until the mark is registered. It is always recommended to file for a trademark once you adopt it as a brand.
Should I trademark my business name or logo?
Yes, file for word as well as logo as it confers a protection against infringement of the same.
Naseem Sheikh is a trademark enthusiastic and has been practicing in intellectual property law for close to six years.
August 15, 2022
Azadi ka Amrit Mahotsav and TradeMark
Azadi ka Amrit Mahotsav and TradeMark
What is ‘Azadi Ka Amrit Mahotsav’?
Owing to the celebration of the country’s people, vast culture and associated achievements on the occasion of the country’s 75th anniversary of independence, the government of India has launched a new program known as “Azadi Ka Amrit Mahotsav”. It is dedicated to the Indian people, who have been essential in bringing India thus far in its evolutionary path and possess the power and capacity to realize the vision of activating India 2.0, fueled by the energy of Aatmanirbhar Bharat (Self-dependent India).
Azadi Ka Amrit Mahotsav had begun on March 12, 2021, and will conclude a year later on 15 August 2023. This is a 75-week countdown owing to the 75 years of independence.
Aim of Azadi ka Amrit Mahotsav
The ‘Azadi Ka Amrit Mahotsav’ has been initiated by the government of India with the sole purpose of creating a vision for India and its citizens in 2047. The Mahotsav is being commemorated on the basis of its five pillars: the 75-year struggle for independence, 75-year thoughts, 75-year successes, 75-year deeds, and 75-year goals. These pillars are intended to educate the next generation about the history and battle for freedom.
It would also motivate people to take action and accomplish their goal of an independent India. Amrit Mahotsav has been categorized as a celebration of our independence soldiers and for the occasion of the Indian liberation movement.
Azadi ka Amrit Mahotsav and IPR
We are well aware about the current situation with the Indian IPR matters and a huge backlog pending for processing.
Due to large number of pendency of Trademark Applications before Trademark Registry, the Trademark Office is taking initiative to run a special drive for disposal of IP disputes wherein the office has directed the parties to dispose the pending opposition and rectification cases and also the parties who have already settled their cases amicably should notify the Trademark Registry vide a formal settlement of the dispute.
Pursuant to this, the registry has launched a link in order to report such settled cases as https://ipindiaonline.gov.in/trademarkefiling/OppositionSettlementRequest.aspx and this link is available from August 02, 2022 to October 02, 2022.
This is very beneficial for the trademark applicants because now they can submit the documents online without any further hassle of going to the trademark registry. Moreover, the disputes that have not been solved yet are required to be resolved using alternate mechanisms.
What is trademark opposition? How to settle Trademark Opposition?
A trademark opposition arises at the level when the registrar has approved or accepted the application for the following trademark and then the mark is advertised seeking public opposition and when a third party makes an objection to the application of the trademark which is similar to the existing trademark for the purpose of preserving the rights of the already registered trademark.
Final words
The ‘Azadi Ka Amrit Mahotsav’ event commemorates India’s tremendous progress during the last 75 years. This festival inspires us to rediscover our hidden capabilities and to take honest, collaborative action to reclaim our rightful place in the community of nations. We at MarkShield encourage parties under dispute to settle the matter amicably as this will not only help in reduction cost to the applicant’s spent on such disputes but also will corroborate in declination of pendency of trademark processing.
Nagma Kacchi
IPR/Trademark Consultant
July 23, 2022
What is Sound Mark?
What is Sound Mark?
Exploration, exploitation and protection of sound markings in India undoubtedly expand the field of branding. Without the exception of sound markings, all trademarks in India are controlled under the Trademark Act, 1999. Businesses can now enjoy greater exclusivity for their musical or cacophonic branding and marketing strategies to entice, attract, and appeal to consumers in today’s highly disruptive market, especially with the explicit recognition of sound as a trademark under the fresh Trade Marks Rules 2017 as issued on 6 March 2017. The 2017 trademark regulations made certain adjustments to the registration process, but most crucially they make it simpler for businesses to apply for the registration of a strong brand.
Sound marks are registrable and deserving of complete protection under the Trade Marks Law if they are distinctive and can serve the function of trademarks, which is to exclusively identify and associate the goods and/or services as coming from a specific undertaking also known as a source identifier. Many sound marks have previously been registered in India, including the Yahoo yodel and the ICICI Bank corporate chink. Both the former and the latter were the first sound marks to be registered in the name of an Indian organization. The first sound mark that was awarded registration in India was the former.
Advantages of a Sound Trademark
- Brand Protection: In this case, the brand is considered what the consumer associated with the business as a whole. The song or music connected to a company is protected by the sound trademark. The entity has the right to file a lawsuit against anybody who infringes such rights when the sound trademark is registered. In the event that a third party makes use of the sound mark without your consent, to counter this you can easily file a lawsuit in the court.
- The Exclusive Usage: The primary advantage of sound trademark registration is that it grants you exclusive rights to the mark, making you the only one in the nation that is able to introduce or market goods or services under the same name brand.
- Exclusiveness is the main benefit of brand registration: According to this, you are the only one in the nation who will advertise or sell goods or services under the same brand name. It is crucial for the prospective growth and success of the business that the brand of the firm is developed early on. A firm legal foundation that is protected by trademark registration is a terrific way to elevate the reputation of your company in the marketplace. These advantages can help you and your company stands out in the competitive, modern corporate environment.
- Builds the company’s reputation:Consumers respond favorably to the sound, jingle, or music connected with a company, which also represents the image of the brand. A company’s jingle or sound is remembered by consumers, which increases the company’s appeal.
- Creating the sound mark: It’s crucial to create the sound mark’s final version before beginning the sound mark registration process. It appeals to consumers and embodies the perception you want your business to have. Following the successful testing of the early prototypes, it will be preferable to conduct focus group testing of the audio recording.
Checklist of a Soundmark
- The sound must be described, for example, by listening to its notes or by the audible counterpart of the sound, including an animal noise.
- The trademark application must clearly declare that it is for the registration of a sound mark in India
- An electronic sound recording in the form of a MP3 file which should not be more than 30 seconds in duration; registration will not be accepted in any other format.
- The sound must be represented graphically in a design or picture, such as a waveform or a note sheet with exact information about where the notes are lying.
Process of Sound Trademark Registration in India
A sound trademark is not defined in the Indian Trademarks Act, 1999 (‘Act’). To prevent infringement, it is preferable to register the sound mark if a company’s product has distinctive music and is well-liked by the general public. If you wish to register a sound trademark in India then follow the steps that are given below:
- To begin with, the applicant must establish the “Factual Distinctiveness of the Sound” for each and every sound mark before it can be registered.
2. The business must submit an applicationto the office of the trademark registrar if it desires to register its sound markby the way of filing form TM A available on IP India portal.
3. The applicant must identify the mark in this application as a sound mark; if they do not, it will be assumed that they are referring to another mark or device mark.
4. The graphical representation of the sign by a musical notation expressing the relative value, sharps, flats, etc. should support the sound mark.
5. The aforementioned information must now be added in mp3 format with a sound mark that is no more than 30 seconds in duration on any medium. It aids the registrar in repeatedly reproducing the sound for a thorough examination procedure.
6. If the registrar is dissatisfied with the sound mark, they may require more information from the applicant and additional supporting documents.
7. The sound mark will also be registered and protected if it has a distinct tone and does not overlap with any other sound marks already in use.
Documents Required to register a Sound Trademark
The registration process of sound mark in India requires the following documents:
- Name and Address of the Applicant.
- In case of a Partnership firm, LLP – Name of the firm with Partner’s Names.
- Applicant’s signed power of attorney, if the application is filed through an Attorney.
- Udhyam Aadhar/ MSME certificate in case of a small enterprise and DIPP Certificate in case of a start up in order to claim waiver in the government fees.
- Oral and graphical representation of the sound mark.
Examples of Sound Trademarks
There are some examples of the registered sound trademark in India mentioned below:
- The soundtrack for Twentieth Century Fox features the sounds of trumpets, violins, and percussion.
2. The voice uttering Yahoo is known as the “Yodel of Yahoo.”
3. the ICICI bank’s corporate jingle music.
4. When turning on the Nokia cell phone, there is a guitar sound.
5. A.R. Rahman created the Airtel ringtone.
6. The ringing of Britannia Industries’ four bells.
Conclusion
At this moment, several issues might arise that will be dealt with and resolved in the near future due to the dynamic introduction of new legislation providing demonstrable acknowledgment and clarification on sound trademarks. Due to the significant impetus for brand formation in this industry, the legal structure governing such non-traditional trademarks will undoubtedly expand and advance as a result. There is a long and varied background of successes and failures for sound mark trademarks.
It is crucial to keep in mind that actioning these marks demands a keen eye and perhaps more work than standard trademarking. The payoff, however, is unquestionably worthwhile and multiplies the company’s brand’s reach. Every prosperous and cutting-edge business has registered a sound at least once or twice throughout the course of its existence.
Currently, sounds can be registered as trademarks under The Trade Marks Act, 1999in the same way as logos, brand names, and other non-traditional mark like shape of goods can. Whether a sound is or has become a unique sign connected to one undertaking will determine whether registration of the sound under the Trademark Act is granted.
Yes, the sound mark can be categorized under the trademark. You can file a trademark application in India for a sound that is represented by a series of musical notes. An example of a sound trademark is one that uses sound to serve as the trademark for the sole purpose of clearly identifying the commercial source of goods and services that belong to the rightful owner.
A trademark is a form of Intellectual Property that consists of a recognizable symbol, design or expression that is used to identify goods or services that signifies a single source and set them apart from those offered by other parties. However, copyright can be defined as a sort of Intellectual Property that grants its owner the only authority to reproduce, transmit, modify, exhibit, and perform creative work. Often for a certain period of time. In recent years, the usage of sounds as trademarks has grown significantly. So one can articulate sounds in the trademark category.
In India, you can apply for a trademark with or without words for a sound that is represented by a series of musical notes. In the US, sound trademarks are fairly well-known, and in India, knowledge of sound trademarks is growing quickly. In India, the sound that is visually represented by a succession of musical notes, with or without words, is protectedunder The Trade Marks Act, 1999,.
Since 2017, the usage of sound markings as a branding strategy has been expanding quickly all over the world. An example of a sound trademark is one that uses sound to serve the trademark’s purpose of clearly identifying the commercial source of goods and services. In recent years, the usage of a sound mark as a trademark has grown significantly. It is a distinctive trademark. A product or service’s origin or trade origin can be classified using sounds.
Trainee Trademark Attorney at Markshield
July 21, 2022
Amazon brand registry and Trademark
Although Amazon is an incredible platform for selling products and is a fantastic way to grow a business and make money, it also brings competition and the need for business protection.
What is the most effective strategy for sellers to combat these worries? Join Amazon’s Brand Registry and register their brand trademark. This article explores the features and advantages of the Amazon Brand Registry, how to get started, and how trademarking and other strategies can help you safeguard your Amazon business.
What is Amazon brand registry?
Amazon Brand Registry is a program that assists brand owners in protecting their intellectual property and product content on Amazon. The most significant advantage of the program for manufacturers is the direct influence on their detail pages/listings. It also provides registered Amazon sellers with a plethora of optimization tools and offers various solutions too that include:
- Brand Experience Optimization
- Brand Protection
- Advanced Store Analytics
Who Can Sign up For Amazon Brand Registry
The eligibility requirement for Amazon Brand Registration in India is as mentioned below:
- The brand should manufacture their own products.
- Brand must either have an active registered trademark in each country where you want to enroll or a pending trademark application filed through a registered Trademark Attorney or by self.
- The brand’s trademark must be a text-based mark (word mark) or an image-based mark with words, letters, or numbers (device mark).
Documents required for Amazon brand registry in India
Throughout the procedure concerning Amazon Brand Registry in India, the following documents are required at various stages:
- A current registered or pending trademark, which can be text-based or image-based.
- A prominent image of the brand’s logo.
- A Principal Trademark Registration or Serial Number issued by the government.
- Images of your products and packaging showing trademark.
- The product category (or list of product categories) in which your brand should be listed.
- A country-specific trademark registration number, depending on where you intend to sell on the marketplace.
Benefits of registering a amazon brand registry
Getting your store approved for the Brand Registry programme has many benefits. These primary advantages consist of the following:
1. Obtain total protection for the product listings for your brand
You have complete security over your product listings with Amazon Brand Registry. You now have control over how the details of your product listing appear on the site and how you wish to market your goods. Several measures will be taken to protect your listings, like:
- Protecting your advertising data.
- Protecting your brand name from being for low-quality products.
- Protecting your product listing’s information from changing.
2. Increase the sales of your products and increase conversions
What happens then when Amazon tightens its security measures around your brand data and deletes all erroneous listings that are connected to it from its marketplace? Naturally, you’ll observe a rise in sales. Customers will always locate your products on Amazon when they enter your search keywords, not those of competitors.
3. With data-driven analytics, you can comprehend your customers better
How well do you know your customers, you could ask? Delivering the greatest outcomes on Amazon will depend on your ability to comprehend the needs of your audience and what motivates them to make purchases.
You get access to information on consumer search and the purchasing habits of your target customers thanks to the comprehensive analytics feature of Amazon Brand Registry. You’ll be able to quickly determine which goods are most successful with your audience, as well as the important demographics and search terms they commonly use. You can then apply the information to enhance both your products and the customer experience in your business.
4. Improve your clients' buying experiences
You may immediately enhance the user experience of your online store and discover more effective ways to engage your customers if you register your brand on Amazon. You will have all the resources necessary to set your Amazon store apart from those of your rivals, including the following:
- Build an Amazon storefront that is easily customisable.
- Use sponsored brand advertisements.
Improved assistance from Amazon
You receive first-rate help from Amazon if you discover any fraudulent activity involving your brand or products. The platform will promptly and effectively address any of your problems. Any questionable activities and fake goods are reported by an internal team at Amazon.
Eligibility requirements for Amazon brand registry
Step - 1: Create a Registry Account and Sign in
First visit the Brand Registry website and proceed to Sign-Up. Here, you’d be required to produce the following documents:
- Proof of your identity via an SMS OTP.
- Provide the legal and corporate information, as asked.
- Accept the terms and conditions after reading.
Applications for the Brand Registry must be submitted by the trademark owner. Please enroll the brand first, and then add your account as an additional user if you are an authorized agent.
Once done, go to the Brand Registry website and click ‘Enroll now’. Next, you’ll be asked to choose a country to sign into and will have to choose between Seller or Vendor account.
NOTE: Make sure you sign into the relevant seller account, as all the extra features and tools will be applied to this dashboard.
Step - 2: Fill out the application form
During this step, to ensure that you are eligible to apply for the Amazon Brand Registry the following information may be asked from you:
- Your brand name;
- Whether your brand name features on your products;
- Your trademark, including its name, registration number and the trademark office that issued it.
- You may have to upload a copy of your trademark too if it is image based.
- Your distributors, manufacturers, product codes and the categories your items fall under.
This information will help Amazon identify any false listings.
NOTE: These eligibility requirements are subject to country to country requirements. Hence, you may be asked slightly different questions as well.
Since the form features mostly boxes that need to be checked as per your answer, the application itself shouldn’t take long to fill. It is recommended that you practice extreme caution while checking these boxes.
Step - 3: Verifying your eligibility
As a last step, an email will be sent to you, the rights owner listed by the trademark office, from Amazon. This is to verify your eligibility.
This mail will contain a unique code that is required to be submitted under the ‘Case log’ section of your account. Here, the status of your application is also visible. Usually, these approvals take only 24 hours.
Process of registering a brand
Sign in to Amazon Brand Registry
Applications for the Brand Registry must be submitted by the trademark owner. Please have the trademark owner enroll the brand first, and then add your account as an additional user if you are an authorized agent. Sign in with your existing Seller or Vendor Central credentials if you meet the eligibility requirements. Using the same username and password grants access to Brand Registry features and benefits associated with Vendor and Seller services.
Enroll your brand
Your brand name with an active registered trademark; your brand’s active registered trademark must appear on your products or packaging. The Intellectual Property Office’s Online trademark registration number. No application numbers will be accepted. A list of product categories (for example, clothing, sporting goods, and electronics) in which your brand is present.
After you submit this information, they will verify that you are the trademark’s rights owner and look for a contact who meets our criteria. This individual will be given a verification code. To complete the enrollment process, you must return this code to Amazon.
Once they have verified the provided information, you will have full access to the Amazon Brand Registry’s benefits and features that will assist you in protecting your brand.
What is the cost of Amazon Brand Registry?
You must have a registered trademark in order to register with Amazon Brand Registry, which is free to do. Here, you are required to pay to register if you don’t already have one. This price will vary depending on the nation in which you register and the kinds of goods you sell.
Amazon only accepts trademarks registered through official government agencies, such as the USPTO in the US. So, you must file an active trademark application in each nation if you want to join the Brand Registry in different marketplaces. It’s also important to keep in mind that in order to register with the Amazon Brand Registry, your trademark must be visible on your goods or packaging.
How trademark registration can help you in Amazon brand registry
The more information you provide to Amazon’s Brand Registry organization about your brand and its intellectual property, the better Amazon can help you protect your brand.
Register your Trademark
Amazon brand registry trademark infringement/unauthorized use
Many different versions of the same product are frequently sold on Amazon by numerous companies, with varying degrees of quality and reliability. Other parties can try to persuade customers to buy their products instead of yours in a variety of ways. Some sellers may try to sell competing goods by using your company name or trademark. This can include recreating and selling something that has a similar appearance or name. Customers may believe they are purchasing your product when, in fact, they are purchasing an inferior knockoff or mappers. This results in customer dissatisfaction and negative reviews.
The Report Infringement form on Amazon is designed for intellectual property owners and their agents to use to notify Amazon of alleged intellectual property infringements such as copyright and trademark concerns. Amazon will not be able to process complaints submitted through this form if you are not the owner of intellectual property rights or their agent. Please report your concerns to Amazon Brand Registy via the following channel:
- Sellers can use this Report Infringement formto report inappropriate listings, other sellers, policy violations, and other issues.
- Buyers can use this Report Infringement form to report order problems, seller policy violations, and so on.
Role of an attorney in this problem
Parties may believe your actions are illegal. You may legitimately own a trademark and be accused of infringing on the rights of others—and they may ask you to stop using your name or brand.
Infringement claims should never be ignored because they can quickly escalate. If an infringement is alleged, you may receive notification that Amazon has removed your items, and you may even be banned from the website as a seller. We understand that every day can mean lost revenue in these situations.
An attorney can examine the claims against you and determine:
- Whether you had prior use rights to the trademark.
- Whether the trademarks or goods and services are sufficiently distinct or unrelated to constitute infringement.
- The validity of any trademark registration at issue.
Even if you are certain that you did not infringe on the trademark of another party, you must still resolve the complaint with Amazon. A counter-notice to Amazon is sometimes the appropriate response.
Related Article :- Remove Hijackers on your Amazon and Flipkart Listings
Frequently asked questions:
Yes. The active registered trademark for your brand has to appear on your products or packaging.
It usually takes around 2 to 10 days for Amazon to validate all the information received and activate the brand registry account.
No, it is not compulsory to have your trademark registered in order to sell on Amazon/Flipkart, but it is advised to get trademark to avoid brand hijack.
Naseem Sheikh is a trademark enthusiastic and has been practicing intellectual property law for close to six years.
Last Update – 24/04/2023
