Monday, September 26, 2011

Trademark Protection : Trademark Attorney India

Case references:
In the famous case of William Grant & Sons Ltd. v. McDowell & Co. Ltd., an action was filed by Grant, restraining McDowell from copying the trade dress of GLENFIDDICH Scotch whisky. Since 1946,various types of whiskies had been exported to India by Grant and since 1978, GLENFIDDICH Single Malt Whisky has been exported to India, . The GLENFIDDICH Single Malt Whisky has got very distinctive features of its own. It was sold in a green bottle and black cylindrical cartons, with a label of distinctive trade dress and unique features. The ‘stag device’ which Grant argued, had become exclusively associated with them together with the ‘thistle device’ which indicated the Scottish origin of the product .McDowell was accused by Grant for infringing their trademark pertaining to GLENFIDDICH whiskey, for having the similar trade dress, that is, the green bottle, black cylindrical carton and the stag and thistles devices. Based on this, on 27th May, 1994, the Delhi HC passed an order of injunction, restraining McDowell from dealing with alcoholic beverages marked McDowell’ single Malt Whiskey and was also refrained from using similar packaging which was the imitation of the plaintiff’s GLENFIDDICH label . The judge held that as GLENFIDDICH whisky had a reputation in India, so Grant was entitled to protect it and if such imitation is made then it would destroy the exclusive right of ownership of such trademark. The judge also made it a point that McDowell was fully aware of the reputation of Grant's product, and as such, it deliberately copied the trademark and it was not accidental at all and the balance of convenience was in favour of Grant, who genuinely worked hard to invent such unique trademark for the business.
In another case, Amul Dairy won a case of infringement in Gujarat HC. In a significant judgment, the Gujarat High Court expounded that a registered trademark user always has the right to restrict and refrain others using their trademark for different class or goods. The case was between the Kaira District Co-operative Milk Producers' Union popularly Amul Dairy and the Gujarat Co-operative Milk Marketing Federation (GCMMF) and two local shop owners, Amul Chasmaghar and Amul Cut Piece Stores, where they filed a case for infringement of their trademark in the district court. While Kaira Union owns brand Amul, GCMMF manages the brand. The district court passed an order suggesting that it was a case of infringement and also restrained the two local shop owners from using the Amul trademark further in course of their business. The decision of the district court was challenged by Amul Chasmaghar in the HC, but Justice D. N Patel upheld the ruling of the district Court.

In another scenario, where the Trademark has not been registered, relief can be served in the form of ‘Passing Off’. Passing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill. The law of passing off prevents one person from misrepresenting his or her goods or services as being the goods and services of the claimant, and also prevents one person from holding out his or her goods or services as having some association or connection with the plaintiff when this is not true.
The requisites for a Passing Off or the Classical Trinity as restated by the House of Lords in the case of RECKITT & COLMAN LTD V BORDEN INC. :
• Goodwill owned by the trader
• Misrepresentation
• Damage to goodwill

Under the case of ErvenWarnink B.V. v. J. Townend& Sons (Hull) Ltd., [1979] AC 731, [1980] R.P.C. 31, Warnink was one of the primary market producers of a Dutch liqueur made from a blend of hen egg yolks, aromatic spirits, sugar, and brandy, which it sold under the name "Advocaat". Townend produced a similar alcoholic drink but using egg and Cyprus wine which it sold as "Keeling's Old English Advocaat". The Court’s ruling was that Townend was passing off their goods as those of Warnink. In this respect when passing off was being applied, the Court developed the scenario of what is known as the "extended" tort of passing off. To be under such situation, it’s necessary that the goodwill is being injured by a misrepresentation. The expression of ‘ extended Passing Off’ was coined by Lord Diplock , where he expounded the essential requirements to claim such ‘extended Passing Off’ as a misrepresentation made by a trader in the course of trade to prospective customers of his or ultimate consumers of goods and services supplied by him, which is calculated to injure the business or goodwill of another trader, and which causes actual damage to the business or goodwill of the trader bringing the action.
In another case Honda Motors Co. Ltd. v. Mr.Charanjit Singh and Ors[5] India Ltd. Plaintiff, established that his business or goods has acquired the reputation and his defendant Company was using the trade name HONDA for ‘Pressure Cookers’ which they were manufacturing in India and even when their application for registration of this trademark had been rejected by the registrar, they continued using it and again applied for registration and hence plaintiff has brought this plaint. Plaintiff on the other hand is a well-known company having presence all over the world in the field of Motor Cars, Motorcycles, Generators and other electronic appliances. They are doing business in India in association with the SiddharthShriram Group with the name Honda Siel Cars. This trade name has become distinctive of his goods and the purchasing public at large associates the plaintiff's name with them. The use of trademark HONDA by respondents created deception or confusion in the minds of the public at large and such confusion caused damage or injury to the business, reputation, goodwill and fair name of the plaintiff. Hence court restricted the defendants from using the trademark HONDA in respect of pressure cookers or any goods or any other trade mark/marks, which are identical with and deceptively similar to the trade mark HONDA of the plaintiff and to do anything which amounts to passing off to the goods of the plaintiff.
Trade-related aspects of Intellectual Property Rights:
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulation as applied to nationals of other WTO Members. It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994. The TRIPS agreement introduced intellectual property law into the international trading system for the first time and remains the most comprehensive international agreement on intellectual property to date.
TRIPS contains requirements that nations' laws must meet for copyright rights, including the rights of performers, producers of sound recordings and broadcasting organizations; geographical indications, including appellations of origin; industrial designs; integrated circuit layout-designs; patents; monopolies for the developers of new plant varieties; trademarks; trade dress; and undisclosed or confidential information. TRIPS also specify the enforcement procedures, remedies, and dispute resolution procedures. Protection and enforcement of all intellectual property rights shall meet the objectives to contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.
Section 2, Article 15 of the TRIPS Agreement gives the overview on what are the types of Trademark and how it can be registered under this international Agreement. The definition is quite simple. The agreement states that, ‘Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible’.
Whereas, Article 16 of the Agreement sketches out the rights of the registered trademark owner, where he enjoys the exclusive right of ownership of the trademark registered and any violation of the trademark by infringement of its right, gives the registered user to proceed for legal remedies.

Friday, September 16, 2011

Types of Intellectual Property


A patent is a monopoly right granted to an inventor by the Government for a limited period of time in consideration of disclosure of the invention. Not all inventions are patentable. The invention must be novel and not obvious and should qualify for industrial application. The invention must consist of an inventive step and should not be a mere rearrangement of known devices functioning independently of each other.
Before applying for a patent it is advisable to determine whether the invention is patentable. In case it is found that the invention is patentable, then a worldwide search should be conducted in order to determine whether there are any identical patents on record.
If the search is positive, then an application in the prescribed form with the prescribed fee is to be submitted at the Patent Office. The application should be accompanied by a specification. Subsequently, the application is examined and objections are raised. A suitable reply is also required to be filed. Thereafter the invention is advertised and any third party who is aggrieved may initiate opposition proceedings. Finally, if all the issues are settled letters patent is issued.

Trade Mark

A trade mark is a visual symbol applied to articles of commerce in order to indicate to the purchasing public and to the trade at large that the goods or services originate from a particular business source. It is advisable to conduct a trade mark search before making an application for registration of the trade mark.
If the search reveals no identical or similar trademarks, then an application in the prescribed form with the prescribed fee should be submitted at the trade mark office. The application is then examined and an appropriate reply is to be filed to meet the objections if any.
The mark is then advertised and oppositions may be initiated by third parties.
Finally, if there is no opposition the application proceeds towards trade mark registration. In case the opposition is decided in favour of the applicant, then the application proceeds toward registration as well.


Design registration protects the visual aspect or design of articles that are not merely utilitarian or functional. A search is advisable before a design application is made to the Patent Office. The application should be submitted in the prescribed form along with four sets of representations containing different views of the design. The Designs Office initially provides a filing number and date. Thereafter the Designs Office duly examines the application and communicates to the applicant any hindrances for registration of the design.
After the objections are met by the applicant, the Designs Office grants registration to the applicant.
The term of a design is 10 years and is renewable for a further period of five years.


Copyright is an exclusive right granted for a fixed period of time. Copyright subsists in literary works, dramatic works, musical works and cinematograph films. In order to register a copyright an application is required to be made in the requisite form, including a Statement of Particulars and a Statement of Further Particulars along with the prescribed fees. The application must be accompanied by three copies of the published work and submitted to the Copyright Office. In case the work is unpublished a copy of the manuscript should accompany the application.

Geographical Indications

Geographical indications refer to the indications used on products to indicate that the product is of a specific quality that originates from a particular territory. Geographical indications indicate the qualities attached to the product due to the reputation of the place of origin of the product. Examples of Geographical Indications are Tirupati Laddoo,, Kolhapuri Chappals etc.


In the modern business scenario the importance of Intellectual property has grown rapidly. Intellectual Property is in the form of intangible property. Such properties are created by the human mind. The notable types of Intellectual Properties are Patents, Trade Marks, Copyright, Design and Geographical Indications
Author is a practicing lawyer in India, specializing in Intellectual Property Laws, He is currently working in Biswajit Sarkar ( ) which is empanelled with U. S. Consulate, British High Commission and French Trade Commission.