Distinctiveness in Trade Marks

It is a wide known fact and generally accepted concept of law, that for a mark/label/logo to be worthy of Trade Mark Protection, there should be a level of distinctiveness that the proposed mark/logo/label projects or promotes in the first place.

Distinctiveness has always been classified under the broader spectra of Inherent Distinctiveness, and Acquired Distinctiveness. It is a futile exercise to explain what can be categorized as Inherently Distinctive, like what Wrangler is to Jeans! The concept refers to a scenario where any name is arbitrary, fanciful and sets apart itself from the rest in the relevant product or service market.

On the contrary, suggestive or descriptive marks are not inherently distinctive; only when they achieve a degree of secondary meaning, when they acquire distinctiveness, can Trade Mark Protection be extended to such marks. India, like most other nations, allows for certain marks to be registered when satisfying the grounds for acquired distinctiveness; overlooking certain grounds for refusal of registration.

The significance of Acquired Distinctiveness has always been the subject of debate. When a mark gains popularity so much so as to help and let the consumers associate its products and services with the industrial house itself, such use of the mark is said to have acquired distinctiveness, a secondary meaning is attributed to such use, and product recognition by the consumers. The extent of this secondary meaning and acquired distinctiveness is what makes it possible for a mark to enjoy the desired Trade Mark Protection, when under the general circumstances it would have failed to do so.


- By Bagmisikha Puhan 

Fair Use Defense

Fair use as a concept stands on very tricky grounds. One cannot just be sure if the ground will stick through as fair use or not. In the scenario where such a matter reaches the courtroom, the time and finances that are invested into settling the dispute, many a times outweighs the benefit reaped out of the use in the first place.

For all those people who have been taking shelter of acknowledgments and disclaimers are not really safe. The very fact that one has acknowledged the original author in his or her use of the protected work does not preclude the person from their liability in a suit of infringement.  The fact that the original author has been cited can support the author in his claim of infringement; if he chooses to retort to the claim of a person infringing upon his right of publicity.

The fact that a disclaimer has been added to the use of the protected work does not preclude the user from his liability towards infringement. A disclaimer stands to prove stronger grounds for fair use, but does not stand as a ground for defense in its own merit.

One of the best ways to avoid any claims of copyright infringement is to abstain from using the protected material without the explicit permission of the original author. Apart from the usual factors which are taken into consideration while judging an instance of fair use, consideration of acknowledgements and disclaimers proves to be a viable option for the courts. 

- Bagmisikha Puhan

Google Tattoo

For years tattoos have been a fashion statement, but in future tattoos can me much more than that. Google owned Motorola Mobility has recently filed a patent in USPTO for an electronic neck tattoo that can serve as a lie detector. The tattoo can be pasted on the neck or worn on collar or on a band around the user’s neck. The patent application highlights that “the electronic skin tattoo can include a galvanic skin response detector to detect skin resistance of a user; it is contemplated that a user may be nervous or engaging in speaking falsehoods may exhibit different galvanic skin response than a more confident, truth telling individual.”

The tattoo can mainly serve as supplementary microphone and can be paired with various electronic devices such as smartphones, tablets etc.  This means that the user can easilycommunicate through mobile phone by a voice command without having to press any button. The tattoo can run on rechargeable batteries or can usesolar panel technology, capacitive technology, nanotechnology or electro-mechanical technology as explained in the patent application.

 

Picture: A drawing from patent application of Google’s neck tattoo by Motorola

The patent which is titled "Coupling an Electronic Skin Tattoo to a Mobile Communication Device” is primarily meant for nullifying the background noise when a caller speaks from a crowded surrounding. The tattoo worn on the neck can improve the voice quality by making the caller more audible to the person on the other end of the call through a noise-cancelling system.

Interestingly, the tattoo could also be worn by animals, although we are clueless as to how it could help an animal. But for now we are sure that this new wearable technology will make one think before lying.

Authored by Sai Ratna Manjari

Posted By Aurobinda Panda

For Biswajit Sarkar – Advocates – IP Attorney

Gucci Lost Opposition

In a recent turn of events, Gucci an Italian fashion and leather goods brand has opposed a UK trademark application for a device mark claiming it to be similar to their famous GG logo. But the registrar ruled that the said device mark lacks resemblance to the GG logo and the mark does not conflict Section 5(3) (of UK Trademark Act) for protectionof well-known marks. The applicant’s device mark was also applicable to similar goods such as clothing line etc.

 Courtesy: Gucci accessories, lyst.com

Gucci has registered its GG logo via Community Trade Mark registration in EU and UK. In UK it is a registered mark for over 50 years which was described as two G’s facing each other creating a symmetric mirror image. The basis of opposition by Gucci was based on this description. But the registrar disagreed on Gucci’s claim stating that the applicant’s device was more analogous to ‘human torso’. He also argued that the consumers will pay more attention to the device per se and the perception to the similarity of the marks will be little.

Although Gucci provided many evidences to prove its point, registrar stated that the Gucci has failed to prove that Gucci’s device mark has brought a significant distinction to their brand and products upon use. This led to Gucci’s unfortunate loss in the case.

So the question here is how much is too much? What amount of similarity between the device marks makes them similar and deceptive? Although, it is also important to note that Gucci has been changing its GG logo for the purpose of rebranding and advertising, so will a differently arranged  double ‘G’ applied for the similar kind goods create confusion among consumers as a rebranded Gucci’s logo? Perhaps this question can be best answered by the consumers themselves.

Authored by Sai Ratna Manjari

Posted By Aurobinda Panda

For Biswajit Sarkar – Advocates – IP Attorney