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See all Premium member Presentation Transcript Slide 1: 4711 (Cologne) Trademark Law By Dr. Tabrez Ahmad Saturday, September 18, 2010 http://trademarklex.blogspot.com 1 Agenda : Agenda What is Trademark Types of Marks Changes brought from 1958 Act to 1999 Act Registered and Un-registered trademark Property in Registered and Un-registered trademark Passing off action or Palming off action, deceptive similarity Trademark Registration Public Domain vs. Private Domain The Abercrombie and other Tests Distinctiveness and Enforcement of Trademark Rights Trademark Disputes Case Studies Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 2 What is trademark? : What is trademark? Distinctive symbols, signs, logos that help consumer to distinguish between competing goods or services. A trade name is the name of an enterprise which individualizes the enterprise in consumer’s mind. Legally not linked to quality. In fact, linked in consumer’s mind to quality expectation. Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 3 Slide 4: Trademark n. A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product or products from those of others. Referent to the origin of the product. Trademark must be Distinctive Trademark must be Used in Commerce Saturday, September 18, 2010 4 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 5: Purposes of Trademark PROMOTE FAIR EFFICIENT COMMERCE… Saturday, September 18, 2010 5 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 6: Types of Marks Trademark Service Mark Collective Mark Certification Mark Saturday, September 18, 2010 6 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Forms of TM : Forms of TM Visual: Words, letters, numerals, devices including drawings and symbols or 2-D representations of object or a combination of two or more of these, colour combinations or colour per se, 3-D sign as shape of goods or packaging. Audio: Sounds, Musical Notes Olfactory: Smells Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 7 CRITERIA OF TM PROTECTABILITY : CRITERIA OF TM PROTECTABILITY Distinctive (basic function): - inherent (e.g.RIN), or - acquired by usage (e.g. TATA) Non-deceptive ( to avoid misleading) Not contrary to public order, morality Special Requirements A mark is registered for specified classes of goods or services and for particular geographical locations Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 8 Changes brought from 1958 Act to 1999 Act : Changes brought from 1958 Act to 1999 Act Registration of trademark of services, in addition of goods Registration of trademarks which are imitation of well known marks not to be permitted Amplification of factors to be considered for defining well known mark Maintaining a single register instead of two ( part A and part B) Enlarged the permitted use Enhanced punishment for trademark related offences to prevent the sale of spurious goods Establishment of appellate board for speedy disposal of appeals Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 9 Slide 10: Transferring the final authority relating to registration of certification trademarks to the registrar instead of the central govt. Prohibiting the use of some one else’s trade marks as part of corporate names, or name of business concern Extension of application of convention country to include country to include countries which are members of group or union of countries and inter governmental organisations Filing a single application for registration in more than one class Extension of period of registration and renewal from 7 to 10 years Making trademark offences cognisable Enlarging the jurisdiction of courts to bring the law in this respect at par with Copyright law, and to grant ex parte injunction Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 10 What is protected and what’s not? : What is protected and what’s not? Right to use TM in relation to goods/ services as registered are protected (If TM consists of several parts, protection is for TM as a whole) State Emblems, Official Hallmarks, Emblems of Intergovernmental Organizations cannot be used as TM. Sec.11 Trademark Act 1999 – Grounds of refusal Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 11 Global Protection and Enforcement of Trade Marks : Global Protection and Enforcement of Trade Marks Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 12 History of Trademark : History of Trademark Early potters marks (Rome and Greece) 10th c. merchants marks Middle Ages: production marks/police marks/responsibility marks 19th c. Industrial Revolution ushers in modern form of trademark Saturday, September 18, 2010 13 http://trademarklex.blogspot.com Poland: Trademark History : Poland: Trademark History Some argue that Wieliczka, the name of the Polish town with a famous salt mine, is the oldest known trademark (circa 1241 A.D.) – even though perhaps this trademark is really an appellation of origin Saturday, September 18, 2010 14 http://trademarklex.blogspot.com History: Various National Systems : History: Various National Systems France: Manufacture and Goods Mark Act (1857) first comprehensive TM act: some elements of use and registration based system; 1964 adopted registration based system Poland: 1919 Decree on the Protection of TMs; sophisticated 1924 TM Act and 1928 TM Ordinance; registration based system England: first comprehensive TM Act 1905, new Act passed in 1938 (use based), current statute enacted in 1994, which moved U.K. to a registration based system Saturday, September 18, 2010 15 http://trademarklex.blogspot.com United States : United States Followed English model 1870 TM Act declared unconstitutional under Intellectual Property Clause 1881 Act, amended 1905 Current law Lanham Act (1946, as amended) Use based system, though has a system for national registration of TMs and there is also state registration Saturday, September 18, 2010 16 http://trademarklex.blogspot.com Differences Between Civil Law/Common Law Systems : Differences Between Civil Law/Common Law Systems Biggest difference: registration (civil) or use based (common law) Another difference: theoretical basis underlying protection Saturday, September 18, 2010 17 http://trademarklex.blogspot.com Legal Protection for Trademarks Under U.S. Law : Legal Protection for Trademarks Under U.S. Law Patchwork of protection under federal and state law The ultimate Constitutional source of federal power to regulate trademarks is the Commerce Clause (Art. I § 8, cl. 3) Federal: Currently the Lanham Act of 1946 (15 U.S.C. §§ 1051-1127) Saturday, September 18, 2010 18 http://trademarklex.blogspot.com Federal Trademark Registration : Federal Trademark Registration U.S. National trademark office is the U.S. Patent and Trademark Office (Department of Commerce) http://www.uspto.gov Saturday, September 18, 2010 19 http://trademarklex.blogspot.com Trademark Registration : Trademark Registration Is it necessary to register a trademark under U.S. law to obtain legal protection for a trademark? Saturday, September 18, 2010 20 http://trademarklex.blogspot.com Trademark Registration : Trademark Registration Is it necessary to register a trademark under U.S. law to obtain legal protection for a trademark? No Saturday, September 18, 2010 21 http://trademarklex.blogspot.com Trademark Registration : Trademark Registration A Trademark Filing Program has four purposes: To retain control over the quality and types of use of the marks To provide a basis for challenging infringers To prevent third parties from registering a company’s marks To minimize the financial risk Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 22 Trademark Registration Cont… : Trademark Registration Cont… Choosing the Right Mark Two Common Errors: Selecting descriptive marks Failing to “clear” the mark Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 23 Trademark Registration Cont… : Trademark Registration Cont… Selecting the Right Trademark The Strongest Type An invented word such as XEROX or EXXON The Weakest Type Immediately descriptive, such as QUALITY POTATOES Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 24 Trademark Registration Cont… : Trademark Registration Cont… Clearance of the Mark – WHY? To reduce the likelihood of infringement To gauge the strength of the mark Weak? Dilute? Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 25 ® ® Trademark Registration Cont… : Trademark Registration Cont… Majority – first to file vs. first to use Some of the major commercial countries – first to file France Germany Japan Taiwan Spain United States – based on actual use Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 26 Trademark Registration Cont… : Trademark Registration Cont… Having a first-to-register system means registration is absolutely necessary for protection of trademarks unless it is well-known mark Know your country’s laws Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 27 Trademark Registration Cont… : Trademark Registration Cont… Select Territories for Registration Trademark rights are territorial. Some regional systems exist: Community Trade Mark (Europe) OAPI (Africa) Madrid Protocol – International filing system, available in around 57 member countries. Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 28 Trademark Registration Cont… : Trademark Registration Cont… Select Territories for Registration Select registration in countries in which the company will manufacture, distribute and/or license its mark United States – Trademark rights extend only to the areas in which a market presence has been established. United States – Presumption of exclusive rights through federal registration Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 29 Trademark Registration Cont… : Trademark Registration Cont… Register the Appropriate Form of the TrademarkComposite Marks Register the entire composite mark Register the word portion of a mark alone Register the design element Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 30 Trademark Registration Cont… : Trademark Registration Cont… Register the Appropriate Form of the Trademark Word Marks Register in foreign script as well as Roman script (e.g., Hangul, Cyrillic, Arabic) Register the proper translation or transliteration in Asian languages Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 31 Trademark Registration Cont… : Trademark Registration Cont… Use a Trademark Properly Trademark rights can be lost through misuse. Failure to “police” the mark can result in the loss of all rights. Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 32 Slide 33: 33 Filing of application Examination: - Classification - Formalities - Absolute grounds for refusal Publication of the application Registration TM REGISTRATION Proceedings Rejection No opposition of third parties Opposition of third parties Relative grounds for refusal Opposition proceedings Rejection Allocation of filing date Opposition is part of the registration procedure Saturday, September 18, 2010 http://trademarklex.blogspot.com Slide 34: + PUBLIC DOMAIN PRIVATE DOMAIN While the product, design, or process is protected, it remains in the Private Domain, thereby granting the holder of the Patent a functional monopoly. MONOPOLY Public & Private Domain Saturday, September 18, 2010 34 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 35: PUBLIC DOMAIN PRIVATE DOMAIN Then the patent expires. MONOPOLY Public & Private Domain Saturday, September 18, 2010 35 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 36: PUBLIC DOMAIN PRIVATE DOMAIN Then the patent expires. MONOPOLY Public & Private Domain Saturday, September 18, 2010 36 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 37: PUBLIC DOMAIN PRIVATE DOMAIN Then the patent expires. Public & Private Domain Saturday, September 18, 2010 37 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 38: PUBLIC DOMAIN PRIVATE DOMAIN Then the patent expires. Public & Private Domain Saturday, September 18, 2010 38 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 39: PUBLIC DOMAIN PRIVATE DOMAIN Then the patent expires. Public & Private Domain Saturday, September 18, 2010 39 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 40: PUBLIC DOMAIN PRIVATE DOMAIN Then the patent expires. Public & Private Domain Saturday, September 18, 2010 40 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 41: PUBLIC DOMAIN PRIVATE DOMAIN Unless the name, method of manufacture or design are severable, (e.g. Sunbeam) all elements of a product transition to the public domain upon expiration of the patent. Public & Private Domain Saturday, September 18, 2010 41 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 42: Elements of Trademark Claim Misappropriation of: Manufacturer Goodwill Product Color Product Shape Product Packaging Product Name Palming Off Saturday, September 18, 2010 42 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Distinctiveness and Enforcement of Trademark Rights : Distinctiveness and Enforcement of Trademark Rights Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 43 Types of Relief Available : Types of Relief Available Opposition proceedings Cancellation proceedings Injunctive relief, corrective advertising, an account of profits, actual damages, statutory damages and/or attorneys’ fees Criminal penalties for trademark counterfeiting Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 44 Relief for Unregistered Trademarks : Relief for Unregistered Trademarks Based on common law rights “Unfair Competition,” “Passing Off,” “Palming Off,” “False Designation of Origin” If consumers would be misled or confused Use of Copyright Law Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 45 Paris Convention Protection for Well-Known Marks : Paris Convention Protection for Well-Known Marks “Well-known in that country” Registration not necessary Article 6bis of Paris Convention used in addition to other legal remedies Saturday, September 18, 2010 46 http://trademarklex.blogspot.com Anti-Dilution Statutes for Famous Trademarks : Anti-Dilution Statutes for Famous Trademarks Anti-dilution laws protect famous trademarks Dilution Theory Identical or highly similar mark use lessens the capacity of the famous mark to identify and distinguish its goods Tarnishes the reputation of the mark Need not show likelihood of confusion Saturday, September 18, 2010 47 http://trademarklex.blogspot.com Anti-dilution statutes for Famous Trademarks : Anti-dilution statutes for Famous Trademarks In some countries, register for famous marks Fame based on the following factors: Degree of knowledge or recognition in relevant sector of public Degree of inherent or acquired distinctiveness Duration, extent of use and geographical area Duration and extent of advertising and publicity Duration and area of registrations and/or applications Record of successful enforcement Value associated with the mark * Based on WIPO resolution supported by INTA Saturday, September 18, 2010 48 http://trademarklex.blogspot.com Dilution : Dilution Dilution: unauthorized use amounts to blurring or tarnishing Don’t have to prove likelihood of confusion Prior to the Federal Trademark Dilution Act (enacted 1995), there were state dilution laws in 25 states but these varied widely Saturday, September 18, 2010 49 http://trademarklex.blogspot.com Federal Trademark Dilution Act : Federal Trademark Dilution Act Federal Trademark Dilution Act (1995) broadens federal protection for famous and distinctive marks. Gives remedies for dilution (blurring and tarnishment) of such marks Defenses include fair use, comparative advertising, news reporting, parody, noncommercial use Saturday, September 18, 2010 50 http://trademarklex.blogspot.com Moseley v. V. Secret Catalogue, Inc. (2003) : Moseley v. V. Secret Catalogue, Inc. (2003) Small KY lingerie business used mark “VICTORS LITTLE SECRET” Sued by well-known lingerie chain Victoria’s Secret (owner of VICTORIA’S SECRET mark) Saturday, September 18, 2010 51 http://trademarklex.blogspot.com TDRA of 2006 : TDRA of 2006 Trademark Dilution Revision Act of 2006 Reversed Moseley case actual dilution standard and put into place a likelihood of dilution standard Recognized dilution by tarnishment claim More precisely defines famous mark Sets forth factors for determining when a mark is famous and when it has been blurred or tarnished Saturday, September 18, 2010 52 http://trademarklex.blogspot.com Psychological foundations of dilution, acquired distinctiveness, secondary meaning, fame, genericide and confusion : Psychological foundations of dilution, acquired distinctiveness, secondary meaning, fame, genericide and confusion “The protection of trademarks is the law’s recognition of the psychological function of symbols.” Justice Felix Frankfurter in Mishawak Rubber and Woolen Mfg. co v. S.S. Kresge Co. USPQ 1942. Saturday, September 18, 2010 http://trademarklex.blogspot.com 53 The individuals “cognitive system” : The individuals “cognitive system” Immediate Consciousness v. Memory Cognitive networks: The filing systems of the mind Cognitive networks as they apply to the marketplace The role played by Brand Names and other source-identifying Indicia A “ Not insubstantial” Proportion of consumers Saturday, September 18, 2010 http://trademarklex.blogspot.com 54 Fame, Confusion and dilution : Fame, Confusion and dilution How the outside world comes to be understood ( or Misunderstood) We are literally being bombarded by sensory inputs from the external world Psychologists call these inputs “stimuli” Some of these outside stimuli come in the form of Products, brands, packages, logos, print, ads, slogans, TV commercials, jingles, etc We interpret incoming information in terms of what we already know. It is not objective reality, but psychologically perceived reality that determines how we interpret and react to the world about us II eleven, two, four, Saturday, September 18, 2010 http://trademarklex.blogspot.com 55 Additional Protective Measures : Additional Protective Measures Recording marks with the appropriate customs authority In the United States, owner of a registered trademark may apply to record its trademark with the U.S. Customs Service Customs Service will seize counterfeit merchandise Burden of proving that use of mark is legitimate may be shifted to the importer Saturday, September 18, 2010 56 http://trademarklex.blogspot.com Particularities of the opposition procedure : 57 Particularities of the opposition procedure 1. Likelihood of confusion, proof of use. 2. Well known trade marks/trade marks with a reputation – scope and conditions of protection 3. Protection of unregistered trade marks and other signs used in the course of trade Saturday, September 18, 2010 http://trademarklex.blogspot.com 1. a. Likelihood of confusion : 58 1. a. Likelihood of confusion The opponent’s earlier rights Opponent can claim protection of: earlier Community Trade Marks registrations and applications earlier national rights TM registrations and applications, including IR marks well-known marks (Art. 6bis of the Paris Convention) used non-registered signs insofar as protected by national law Saturday, September 18, 2010 http://trademarklex.blogspot.com Protection of earlier rights on the basis of 4 Basic Grounds : 59 Protection of earlier rights on the basis of 4 Basic Grounds Saturday, September 18, 2010 http://trademarklex.blogspot.com Slide 60: Unfair Competition: Trademark Infringement: Claims: Court will review mark against Trade Mark Act 1999 on the criteria Using one of several tests. claim generally requires plaintiff to demonstrate secondary meaning of the mark, likelihood of confusion, and intent to deceive. Tort claim : Saturday, September 18, 2010 60 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Passing off action Slide 61: Defenses : Saturday, September 18, 2010 61 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 62: Saturday, September 18, 2010 62 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Shaw v. Time-Life Records, 38 N.Y.2d 201 (1975), Slide 63: 1.Consumer Confusion Test Shaw v. Time-Life Records, 38 N.Y.2d 201 (1975) Court applies Consumer Confusion Test: Plaintiff Defendant Holding: Defendant wrongfully appropriated “style” of Plaintiff’s performances Basis of unfair competition is the likely confusion of the typical consumer “Will the typical consumer be confused as to the nature or source of the product?” Defendant has obligation to use “reasonable care” to prevent confusion Artie Shaw, Musician Saturday, September 18, 2010 63 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 64: 2.Primary Significance Test Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 1938 Court applies Primary Significance Test: Plaintiff Defendant Holding: The Public has a right to use generic terms (e.g. “shredded wheat”) The term “shredded wheat” is descriptive in the Public Domain Patent protection expiration draws other elements out of protected domain To establish a valid trademark, company must show that the primary significance of term to the public is not the product but the producer Saturday, September 18, 2010 64 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 65: 3.The Test Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4(2nd Cir. 1975). Delineates four categories of marks with varying level of protection under trademark law based on distinctiveness and usage. Saturday, September 18, 2010 65 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 66: The Test (cont’d) Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2nd Cir. 1975). Saturday, September 18, 2010 66 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 67: Secondary Meaning Secondary meaning extensively broadens the scope of trademark protection to marks that normally wouldn’t be protected. The mark is deemed to have become distinctive of the applicant's goods in commerce notwithstanding the descriptive nature of the mark. Marketing by original user of mark Consumer “brand” recognition Provides protection for Descriptive Terms under Abercrombie Effort by original user to be successful Saturday, September 18, 2010 67 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 68: Secondary Meaning Limited to regional marketplace (e.g. season/time/place) Subject to expansive “Fair Use” defense SO… Saturday, September 18, 2010 68 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 69: Descriptive Marks Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F2d 786 (5th Cir. 1983) Plaintiff Defendant Court applies Abercrombie Test: Holding: Term “Fish-Fry” is descriptive in nature, BUT have acquired secondary meaning The secondary meaning should be restricted to a certain marketplace (Louisiana) Generic terms are not protected. Descriptive, suggestive, or arbitrary or fanciful terms can be protected. Defendant has right to use terms under “Fair Use” Doctrine as descriptive terms Oak Grove Dist. Saturday, September 18, 2010 69 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 70: 4. Canfield Test Genessee Brewing Company, Inc. v. Stroh Brewing Co., 124 F.3d 137 (2nd Cir. 1997) Court applies the Canfield Test: Nature of product renders “Honey Brown” generic (for ales) rather than descriptive Holding: Issue is whether the protected word or image is used descriptively or as a mark Defendant can escape “unfair competition” claim if it exercised reasonable means to prevent confusion Whether term that identifies a product is generic depends on the competitor’s need to use that term– if not commonly used alternative conveys same functional information, the term is generic (afforded no protection). Saturday, September 18, 2010 70 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 71: 5.Distinctiveness Test In re: Seats, 757 F.2d 274 (Fed. Cir. 1985) Court applies the Distinctiveness Test: SEATS has become distinctive, as SEATS is not selling seats, but rather is a reservation service Holding: A descriptive term which is neither used in generic nor descriptive sense can receive protection Registration of trademark does not prevent competitors from using the the same term in connection with their services in its generic usage If a term or mark is initially unregisterable because of lack of distinctiveness, subsequent success in the market place may allow the term or mark to acquire distinctiveness allowing protection Saturday, September 18, 2010 71 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Paris Convention Protection for Well-Known Marks : Paris Convention Protection for Well-Known Marks “Well-known in that country” Registration not necessary Article 6bis of Paris Convention used in addition to other legal remedies Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 72 Anti-Dilution Statutes for Famous Trademarks : Anti-Dilution Statutes for Famous Trademarks Anti-dilution laws protect famous trademarks Dilution Theory Identical or highly similar mark use lessens the capacity of the famous mark to identify and distinguish its goods Tarnishes the reputation of the mark Need not show likelihood of confusion Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 73 Anti-dilution statutes for Famous Trademarks* : Anti-dilution statutes for Famous Trademarks* In some countries, register for famous marks Fame based on the following factors: Degree of knowledge or recognition in relevant sector of public Degree of inherent or acquired distinctiveness Duration, extent of use and geographical area Duration and extent of advertising and publicity Duration and area of registrations and/or applications Record of successful enforcement Value associated with the mark * Based on WIPO resolution supported by INTA Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 74 Slide 75: Additional Cases: Trademark & Other Protections Singer Manufacturing Co. v. June Manufacturing Co. To Review The Case, Click Here Astrud Oliveira v. Frito-lay, Inc., Pepsico, Inc. To Review The Case, Click Here Scott Paper Co. v. Marcalus Manufacturing Co., Inc. et al. To Review The Case, Click Here Saturday, September 18, 2010 75 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Policing Third-Party Use of a Trademark : Policing Third-Party Use of a Trademark Use by Trademark Licensees Use of Counterfeit or Confusingly Similar Marks by Unaffiliated Parties Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 76 Do you have any question? : Do you have any question? Saturday, September 18, 2010 77 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 78: Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 78 Thanks You do not have the permission to view this presentation. In order to view it, please contact the author of the presentation.
trademark law tabrezahmad Download Post to : URL : Related Presentations : Share Add to Flag Embed Email Send to Blogs and Networks Add to Channel Uploaded from authorPOINT lite Insert YouTube videos in PowerPont slides with aS Desktop Copy embed code: (To copy code, click on the text box) Embed: URL: Thumbnail: WordPress Embed Customize Embed The presentation is successfully added In Your Favorites. Views: 1845 Category: Business & Fin.. License: All Rights Reserved Like it (5) Dislike it (0) Added: September 18, 2010 This Presentation is Public Favorites: 1 Presentation Description Dr. Tabrez Ahmad, Lectures delivered in Trademark Law Comments Posting comment... By: Bayazid (1 month(s) ago) Sir, I need this........................My Email Id is ..bayazidh7@gmail.com Saving..... Post Reply Close Saving..... Edit Comment Close By: rajmit_120 (2 month(s) ago) I nee your presentation on Trademark law. Sir my Email ID is rajmit_120@yahoo.co.in Saving..... Post Reply Close Saving..... Edit Comment Close By: zalilawati (2 month(s) ago) Dear Sir, This presentation is very educative. Please allow me to download or email zalilawatizakaria@yahoo.com Thanks Saving..... Post Reply Close Saving..... Edit Comment Close By: harshalpatil011 (4 month(s) ago) nice ppt sir. plz send it on harshalpatil011@gmail.com Saving..... Post Reply Close Saving..... Edit Comment Close By: thahirerd (4 month(s) ago) sir,,pls i want 2 dowlod Saving..... Post Reply Close Saving..... Edit Comment Close loading.... See all Premium member Presentation Transcript Slide 1: 4711 (Cologne) Trademark Law By Dr. Tabrez Ahmad Saturday, September 18, 2010 http://trademarklex.blogspot.com 1 Agenda : Agenda What is Trademark Types of Marks Changes brought from 1958 Act to 1999 Act Registered and Un-registered trademark Property in Registered and Un-registered trademark Passing off action or Palming off action, deceptive similarity Trademark Registration Public Domain vs. Private Domain The Abercrombie and other Tests Distinctiveness and Enforcement of Trademark Rights Trademark Disputes Case Studies Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 2 What is trademark? : What is trademark? Distinctive symbols, signs, logos that help consumer to distinguish between competing goods or services. A trade name is the name of an enterprise which individualizes the enterprise in consumer’s mind. Legally not linked to quality. In fact, linked in consumer’s mind to quality expectation. Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 3 Slide 4: Trademark n. A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product or products from those of others. Referent to the origin of the product. Trademark must be Distinctive Trademark must be Used in Commerce Saturday, September 18, 2010 4 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 5: Purposes of Trademark PROMOTE FAIR EFFICIENT COMMERCE… Saturday, September 18, 2010 5 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 6: Types of Marks Trademark Service Mark Collective Mark Certification Mark Saturday, September 18, 2010 6 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Forms of TM : Forms of TM Visual: Words, letters, numerals, devices including drawings and symbols or 2-D representations of object or a combination of two or more of these, colour combinations or colour per se, 3-D sign as shape of goods or packaging. Audio: Sounds, Musical Notes Olfactory: Smells Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 7 CRITERIA OF TM PROTECTABILITY : CRITERIA OF TM PROTECTABILITY Distinctive (basic function): - inherent (e.g.RIN), or - acquired by usage (e.g. TATA) Non-deceptive ( to avoid misleading) Not contrary to public order, morality Special Requirements A mark is registered for specified classes of goods or services and for particular geographical locations Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 8 Changes brought from 1958 Act to 1999 Act : Changes brought from 1958 Act to 1999 Act Registration of trademark of services, in addition of goods Registration of trademarks which are imitation of well known marks not to be permitted Amplification of factors to be considered for defining well known mark Maintaining a single register instead of two ( part A and part B) Enlarged the permitted use Enhanced punishment for trademark related offences to prevent the sale of spurious goods Establishment of appellate board for speedy disposal of appeals Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 9 Slide 10: Transferring the final authority relating to registration of certification trademarks to the registrar instead of the central govt. Prohibiting the use of some one else’s trade marks as part of corporate names, or name of business concern Extension of application of convention country to include country to include countries which are members of group or union of countries and inter governmental organisations Filing a single application for registration in more than one class Extension of period of registration and renewal from 7 to 10 years Making trademark offences cognisable Enlarging the jurisdiction of courts to bring the law in this respect at par with Copyright law, and to grant ex parte injunction Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 10 What is protected and what’s not? : What is protected and what’s not? Right to use TM in relation to goods/ services as registered are protected (If TM consists of several parts, protection is for TM as a whole) State Emblems, Official Hallmarks, Emblems of Intergovernmental Organizations cannot be used as TM. Sec.11 Trademark Act 1999 – Grounds of refusal Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 11 Global Protection and Enforcement of Trade Marks : Global Protection and Enforcement of Trade Marks Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 12 History of Trademark : History of Trademark Early potters marks (Rome and Greece) 10th c. merchants marks Middle Ages: production marks/police marks/responsibility marks 19th c. Industrial Revolution ushers in modern form of trademark Saturday, September 18, 2010 13 http://trademarklex.blogspot.com Poland: Trademark History : Poland: Trademark History Some argue that Wieliczka, the name of the Polish town with a famous salt mine, is the oldest known trademark (circa 1241 A.D.) – even though perhaps this trademark is really an appellation of origin Saturday, September 18, 2010 14 http://trademarklex.blogspot.com History: Various National Systems : History: Various National Systems France: Manufacture and Goods Mark Act (1857) first comprehensive TM act: some elements of use and registration based system; 1964 adopted registration based system Poland: 1919 Decree on the Protection of TMs; sophisticated 1924 TM Act and 1928 TM Ordinance; registration based system England: first comprehensive TM Act 1905, new Act passed in 1938 (use based), current statute enacted in 1994, which moved U.K. to a registration based system Saturday, September 18, 2010 15 http://trademarklex.blogspot.com United States : United States Followed English model 1870 TM Act declared unconstitutional under Intellectual Property Clause 1881 Act, amended 1905 Current law Lanham Act (1946, as amended) Use based system, though has a system for national registration of TMs and there is also state registration Saturday, September 18, 2010 16 http://trademarklex.blogspot.com Differences Between Civil Law/Common Law Systems : Differences Between Civil Law/Common Law Systems Biggest difference: registration (civil) or use based (common law) Another difference: theoretical basis underlying protection Saturday, September 18, 2010 17 http://trademarklex.blogspot.com Legal Protection for Trademarks Under U.S. Law : Legal Protection for Trademarks Under U.S. Law Patchwork of protection under federal and state law The ultimate Constitutional source of federal power to regulate trademarks is the Commerce Clause (Art. I § 8, cl. 3) Federal: Currently the Lanham Act of 1946 (15 U.S.C. §§ 1051-1127) Saturday, September 18, 2010 18 http://trademarklex.blogspot.com Federal Trademark Registration : Federal Trademark Registration U.S. National trademark office is the U.S. Patent and Trademark Office (Department of Commerce) http://www.uspto.gov Saturday, September 18, 2010 19 http://trademarklex.blogspot.com Trademark Registration : Trademark Registration Is it necessary to register a trademark under U.S. law to obtain legal protection for a trademark? Saturday, September 18, 2010 20 http://trademarklex.blogspot.com Trademark Registration : Trademark Registration Is it necessary to register a trademark under U.S. law to obtain legal protection for a trademark? No Saturday, September 18, 2010 21 http://trademarklex.blogspot.com Trademark Registration : Trademark Registration A Trademark Filing Program has four purposes: To retain control over the quality and types of use of the marks To provide a basis for challenging infringers To prevent third parties from registering a company’s marks To minimize the financial risk Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 22 Trademark Registration Cont… : Trademark Registration Cont… Choosing the Right Mark Two Common Errors: Selecting descriptive marks Failing to “clear” the mark Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 23 Trademark Registration Cont… : Trademark Registration Cont… Selecting the Right Trademark The Strongest Type An invented word such as XEROX or EXXON The Weakest Type Immediately descriptive, such as QUALITY POTATOES Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 24 Trademark Registration Cont… : Trademark Registration Cont… Clearance of the Mark – WHY? To reduce the likelihood of infringement To gauge the strength of the mark Weak? Dilute? Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 25 ® ® Trademark Registration Cont… : Trademark Registration Cont… Majority – first to file vs. first to use Some of the major commercial countries – first to file France Germany Japan Taiwan Spain United States – based on actual use Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 26 Trademark Registration Cont… : Trademark Registration Cont… Having a first-to-register system means registration is absolutely necessary for protection of trademarks unless it is well-known mark Know your country’s laws Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 27 Trademark Registration Cont… : Trademark Registration Cont… Select Territories for Registration Trademark rights are territorial. Some regional systems exist: Community Trade Mark (Europe) OAPI (Africa) Madrid Protocol – International filing system, available in around 57 member countries. Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 28 Trademark Registration Cont… : Trademark Registration Cont… Select Territories for Registration Select registration in countries in which the company will manufacture, distribute and/or license its mark United States – Trademark rights extend only to the areas in which a market presence has been established. United States – Presumption of exclusive rights through federal registration Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 29 Trademark Registration Cont… : Trademark Registration Cont… Register the Appropriate Form of the TrademarkComposite Marks Register the entire composite mark Register the word portion of a mark alone Register the design element Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 30 Trademark Registration Cont… : Trademark Registration Cont… Register the Appropriate Form of the Trademark Word Marks Register in foreign script as well as Roman script (e.g., Hangul, Cyrillic, Arabic) Register the proper translation or transliteration in Asian languages Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 31 Trademark Registration Cont… : Trademark Registration Cont… Use a Trademark Properly Trademark rights can be lost through misuse. Failure to “police” the mark can result in the loss of all rights. Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 32 Slide 33: 33 Filing of application Examination: - Classification - Formalities - Absolute grounds for refusal Publication of the application Registration TM REGISTRATION Proceedings Rejection No opposition of third parties Opposition of third parties Relative grounds for refusal Opposition proceedings Rejection Allocation of filing date Opposition is part of the registration procedure Saturday, September 18, 2010 http://trademarklex.blogspot.com Slide 34: + PUBLIC DOMAIN PRIVATE DOMAIN While the product, design, or process is protected, it remains in the Private Domain, thereby granting the holder of the Patent a functional monopoly. MONOPOLY Public & Private Domain Saturday, September 18, 2010 34 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 35: PUBLIC DOMAIN PRIVATE DOMAIN Then the patent expires. MONOPOLY Public & Private Domain Saturday, September 18, 2010 35 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 36: PUBLIC DOMAIN PRIVATE DOMAIN Then the patent expires. MONOPOLY Public & Private Domain Saturday, September 18, 2010 36 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 37: PUBLIC DOMAIN PRIVATE DOMAIN Then the patent expires. Public & Private Domain Saturday, September 18, 2010 37 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 38: PUBLIC DOMAIN PRIVATE DOMAIN Then the patent expires. Public & Private Domain Saturday, September 18, 2010 38 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 39: PUBLIC DOMAIN PRIVATE DOMAIN Then the patent expires. Public & Private Domain Saturday, September 18, 2010 39 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 40: PUBLIC DOMAIN PRIVATE DOMAIN Then the patent expires. Public & Private Domain Saturday, September 18, 2010 40 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 41: PUBLIC DOMAIN PRIVATE DOMAIN Unless the name, method of manufacture or design are severable, (e.g. Sunbeam) all elements of a product transition to the public domain upon expiration of the patent. Public & Private Domain Saturday, September 18, 2010 41 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 42: Elements of Trademark Claim Misappropriation of: Manufacturer Goodwill Product Color Product Shape Product Packaging Product Name Palming Off Saturday, September 18, 2010 42 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Distinctiveness and Enforcement of Trademark Rights : Distinctiveness and Enforcement of Trademark Rights Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 43 Types of Relief Available : Types of Relief Available Opposition proceedings Cancellation proceedings Injunctive relief, corrective advertising, an account of profits, actual damages, statutory damages and/or attorneys’ fees Criminal penalties for trademark counterfeiting Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 44 Relief for Unregistered Trademarks : Relief for Unregistered Trademarks Based on common law rights “Unfair Competition,” “Passing Off,” “Palming Off,” “False Designation of Origin” If consumers would be misled or confused Use of Copyright Law Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 45 Paris Convention Protection for Well-Known Marks : Paris Convention Protection for Well-Known Marks “Well-known in that country” Registration not necessary Article 6bis of Paris Convention used in addition to other legal remedies Saturday, September 18, 2010 46 http://trademarklex.blogspot.com Anti-Dilution Statutes for Famous Trademarks : Anti-Dilution Statutes for Famous Trademarks Anti-dilution laws protect famous trademarks Dilution Theory Identical or highly similar mark use lessens the capacity of the famous mark to identify and distinguish its goods Tarnishes the reputation of the mark Need not show likelihood of confusion Saturday, September 18, 2010 47 http://trademarklex.blogspot.com Anti-dilution statutes for Famous Trademarks : Anti-dilution statutes for Famous Trademarks In some countries, register for famous marks Fame based on the following factors: Degree of knowledge or recognition in relevant sector of public Degree of inherent or acquired distinctiveness Duration, extent of use and geographical area Duration and extent of advertising and publicity Duration and area of registrations and/or applications Record of successful enforcement Value associated with the mark * Based on WIPO resolution supported by INTA Saturday, September 18, 2010 48 http://trademarklex.blogspot.com Dilution : Dilution Dilution: unauthorized use amounts to blurring or tarnishing Don’t have to prove likelihood of confusion Prior to the Federal Trademark Dilution Act (enacted 1995), there were state dilution laws in 25 states but these varied widely Saturday, September 18, 2010 49 http://trademarklex.blogspot.com Federal Trademark Dilution Act : Federal Trademark Dilution Act Federal Trademark Dilution Act (1995) broadens federal protection for famous and distinctive marks. Gives remedies for dilution (blurring and tarnishment) of such marks Defenses include fair use, comparative advertising, news reporting, parody, noncommercial use Saturday, September 18, 2010 50 http://trademarklex.blogspot.com Moseley v. V. Secret Catalogue, Inc. (2003) : Moseley v. V. Secret Catalogue, Inc. (2003) Small KY lingerie business used mark “VICTORS LITTLE SECRET” Sued by well-known lingerie chain Victoria’s Secret (owner of VICTORIA’S SECRET mark) Saturday, September 18, 2010 51 http://trademarklex.blogspot.com TDRA of 2006 : TDRA of 2006 Trademark Dilution Revision Act of 2006 Reversed Moseley case actual dilution standard and put into place a likelihood of dilution standard Recognized dilution by tarnishment claim More precisely defines famous mark Sets forth factors for determining when a mark is famous and when it has been blurred or tarnished Saturday, September 18, 2010 52 http://trademarklex.blogspot.com Psychological foundations of dilution, acquired distinctiveness, secondary meaning, fame, genericide and confusion : Psychological foundations of dilution, acquired distinctiveness, secondary meaning, fame, genericide and confusion “The protection of trademarks is the law’s recognition of the psychological function of symbols.” Justice Felix Frankfurter in Mishawak Rubber and Woolen Mfg. co v. S.S. Kresge Co. USPQ 1942. Saturday, September 18, 2010 http://trademarklex.blogspot.com 53 The individuals “cognitive system” : The individuals “cognitive system” Immediate Consciousness v. Memory Cognitive networks: The filing systems of the mind Cognitive networks as they apply to the marketplace The role played by Brand Names and other source-identifying Indicia A “ Not insubstantial” Proportion of consumers Saturday, September 18, 2010 http://trademarklex.blogspot.com 54 Fame, Confusion and dilution : Fame, Confusion and dilution How the outside world comes to be understood ( or Misunderstood) We are literally being bombarded by sensory inputs from the external world Psychologists call these inputs “stimuli” Some of these outside stimuli come in the form of Products, brands, packages, logos, print, ads, slogans, TV commercials, jingles, etc We interpret incoming information in terms of what we already know. It is not objective reality, but psychologically perceived reality that determines how we interpret and react to the world about us II eleven, two, four, Saturday, September 18, 2010 http://trademarklex.blogspot.com 55 Additional Protective Measures : Additional Protective Measures Recording marks with the appropriate customs authority In the United States, owner of a registered trademark may apply to record its trademark with the U.S. Customs Service Customs Service will seize counterfeit merchandise Burden of proving that use of mark is legitimate may be shifted to the importer Saturday, September 18, 2010 56 http://trademarklex.blogspot.com Particularities of the opposition procedure : 57 Particularities of the opposition procedure 1. Likelihood of confusion, proof of use. 2. Well known trade marks/trade marks with a reputation – scope and conditions of protection 3. Protection of unregistered trade marks and other signs used in the course of trade Saturday, September 18, 2010 http://trademarklex.blogspot.com 1. a. Likelihood of confusion : 58 1. a. Likelihood of confusion The opponent’s earlier rights Opponent can claim protection of: earlier Community Trade Marks registrations and applications earlier national rights TM registrations and applications, including IR marks well-known marks (Art. 6bis of the Paris Convention) used non-registered signs insofar as protected by national law Saturday, September 18, 2010 http://trademarklex.blogspot.com Protection of earlier rights on the basis of 4 Basic Grounds : 59 Protection of earlier rights on the basis of 4 Basic Grounds Saturday, September 18, 2010 http://trademarklex.blogspot.com Slide 60: Unfair Competition: Trademark Infringement: Claims: Court will review mark against Trade Mark Act 1999 on the criteria Using one of several tests. claim generally requires plaintiff to demonstrate secondary meaning of the mark, likelihood of confusion, and intent to deceive. Tort claim : Saturday, September 18, 2010 60 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Passing off action Slide 61: Defenses : Saturday, September 18, 2010 61 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 62: Saturday, September 18, 2010 62 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Shaw v. Time-Life Records, 38 N.Y.2d 201 (1975), Slide 63: 1.Consumer Confusion Test Shaw v. Time-Life Records, 38 N.Y.2d 201 (1975) Court applies Consumer Confusion Test: Plaintiff Defendant Holding: Defendant wrongfully appropriated “style” of Plaintiff’s performances Basis of unfair competition is the likely confusion of the typical consumer “Will the typical consumer be confused as to the nature or source of the product?” Defendant has obligation to use “reasonable care” to prevent confusion Artie Shaw, Musician Saturday, September 18, 2010 63 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 64: 2.Primary Significance Test Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 1938 Court applies Primary Significance Test: Plaintiff Defendant Holding: The Public has a right to use generic terms (e.g. “shredded wheat”) The term “shredded wheat” is descriptive in the Public Domain Patent protection expiration draws other elements out of protected domain To establish a valid trademark, company must show that the primary significance of term to the public is not the product but the producer Saturday, September 18, 2010 64 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 65: 3.The Test Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4(2nd Cir. 1975). Delineates four categories of marks with varying level of protection under trademark law based on distinctiveness and usage. Saturday, September 18, 2010 65 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 66: The Test (cont’d) Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2nd Cir. 1975). Saturday, September 18, 2010 66 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 67: Secondary Meaning Secondary meaning extensively broadens the scope of trademark protection to marks that normally wouldn’t be protected. The mark is deemed to have become distinctive of the applicant's goods in commerce notwithstanding the descriptive nature of the mark. Marketing by original user of mark Consumer “brand” recognition Provides protection for Descriptive Terms under Abercrombie Effort by original user to be successful Saturday, September 18, 2010 67 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 68: Secondary Meaning Limited to regional marketplace (e.g. season/time/place) Subject to expansive “Fair Use” defense SO… Saturday, September 18, 2010 68 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 69: Descriptive Marks Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F2d 786 (5th Cir. 1983) Plaintiff Defendant Court applies Abercrombie Test: Holding: Term “Fish-Fry” is descriptive in nature, BUT have acquired secondary meaning The secondary meaning should be restricted to a certain marketplace (Louisiana) Generic terms are not protected. Descriptive, suggestive, or arbitrary or fanciful terms can be protected. Defendant has right to use terms under “Fair Use” Doctrine as descriptive terms Oak Grove Dist. Saturday, September 18, 2010 69 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 70: 4. Canfield Test Genessee Brewing Company, Inc. v. Stroh Brewing Co., 124 F.3d 137 (2nd Cir. 1997) Court applies the Canfield Test: Nature of product renders “Honey Brown” generic (for ales) rather than descriptive Holding: Issue is whether the protected word or image is used descriptively or as a mark Defendant can escape “unfair competition” claim if it exercised reasonable means to prevent confusion Whether term that identifies a product is generic depends on the competitor’s need to use that term– if not commonly used alternative conveys same functional information, the term is generic (afforded no protection). Saturday, September 18, 2010 70 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 71: 5.Distinctiveness Test In re: Seats, 757 F.2d 274 (Fed. Cir. 1985) Court applies the Distinctiveness Test: SEATS has become distinctive, as SEATS is not selling seats, but rather is a reservation service Holding: A descriptive term which is neither used in generic nor descriptive sense can receive protection Registration of trademark does not prevent competitors from using the the same term in connection with their services in its generic usage If a term or mark is initially unregisterable because of lack of distinctiveness, subsequent success in the market place may allow the term or mark to acquire distinctiveness allowing protection Saturday, September 18, 2010 71 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Paris Convention Protection for Well-Known Marks : Paris Convention Protection for Well-Known Marks “Well-known in that country” Registration not necessary Article 6bis of Paris Convention used in addition to other legal remedies Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 72 Anti-Dilution Statutes for Famous Trademarks : Anti-Dilution Statutes for Famous Trademarks Anti-dilution laws protect famous trademarks Dilution Theory Identical or highly similar mark use lessens the capacity of the famous mark to identify and distinguish its goods Tarnishes the reputation of the mark Need not show likelihood of confusion Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 73 Anti-dilution statutes for Famous Trademarks* : Anti-dilution statutes for Famous Trademarks* In some countries, register for famous marks Fame based on the following factors: Degree of knowledge or recognition in relevant sector of public Degree of inherent or acquired distinctiveness Duration, extent of use and geographical area Duration and extent of advertising and publicity Duration and area of registrations and/or applications Record of successful enforcement Value associated with the mark * Based on WIPO resolution supported by INTA Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 74 Slide 75: Additional Cases: Trademark & Other Protections Singer Manufacturing Co. v. June Manufacturing Co. To Review The Case, Click Here Astrud Oliveira v. Frito-lay, Inc., Pepsico, Inc. To Review The Case, Click Here Scott Paper Co. v. Marcalus Manufacturing Co., Inc. et al. To Review The Case, Click Here Saturday, September 18, 2010 75 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Policing Third-Party Use of a Trademark : Policing Third-Party Use of a Trademark Use by Trademark Licensees Use of Counterfeit or Confusingly Similar Marks by Unaffiliated Parties Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 76 Do you have any question? : Do you have any question? Saturday, September 18, 2010 77 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com Slide 78: Saturday, September 18, 2010 Dr. Tabrez Ahmad Blog: http://iplexindia.blogspot.com 78 Thanks