International Trademark Registration Overview
37 Questions
0 Views

Choose a study mode

Play Quiz
Study Flashcards
Spaced Repetition
Chat to lesson

Podcast

Play an AI-generated podcast conversation about this lesson

Questions and Answers

What is the primary function of the trademark application examination process by the Registrar?

  • To outright reject any competing applications.
  • To determine the priority of pending applications. (correct)
  • To assist applicants in modifying their submissions.
  • To automatically accept all submitted applications.

    • What must a person do to formally oppose a trademark application?

  • Submit a review of the application to the Registrar.
  • Wait for the Registrar's decision before making an objection.
  • Provide a notice in a specific format and pay applicable fees. (correct)
  • Notify the applicant directly without involving the Registrar.

    • What is the timeframe within which one can oppose a trademark application after its advertisement?

  • 2 months
  • 6 months
  • 4 months (correct)
  • 1 month

    • What is expected from the applicant after receiving notice of an opposition?

    <p>File a counter-statement with evidence within two months.</p> Signup and view all the answers

    Under what conditions can the Registrar decide on the opposition?

    <p>Based on a hearing where involved parties present their defense.</p> Signup and view all the answers

    What was the primary allegation made by Cola Ltd. against Coca Cola in their case?

    <p>Disparagement of products</p> Signup and view all the answers

    In the HUL v Amul case, what was a significant element of Amul's advertisement that sparked controversy?

    <p>Comparison to frozen desserts containing vegetable oil</p> Signup and view all the answers

    What was the outcome of the initial judgment by the Single Judge in the HUL v Amul case?

    <p>Injunction against Amul's advertisement was granted</p> Signup and view all the answers

    What did the Division Bench consider while making their ruling on the HUL v Amul case?

    <p>Intent, manner, and storyline of the commercial</p> Signup and view all the answers

    What modification was ordered by the Division Bench regarding Amul's TVCs?

    <p>Modification to avoid disparagement of competitors</p> Signup and view all the answers

    What was depicted alongside the Amul-branded cup in their controversial advertisement?

    <p>A competitor's product filled with a white semi-solid mass</p> Signup and view all the answers

    What does the phrase 'Yeh dil Maange no more' relate to in the context of Cola Ltd.'s case?

    <p>Disparagement of Pepsi products</p> Signup and view all the answers

    What was the legal reasoning behind the courts' rulings in these cases?

    <p>Advertisements must not mislead consumers or criticize competitors unfairly</p> Signup and view all the answers

    What is required prior to submitting an international trademark application under the Madrid Protocol?

    <p>A national filing/registration</p> Signup and view all the answers

    What exclusive right is granted to the registered proprietor of a trademark under Section 28?

    <p>The right to the exclusive use of the trademark concerning registered goods and services</p> Signup and view all the answers

    What does assignment of a trademark under Section 37 entail?

    <p>Empowerment of the proprietor to transfer trademark rights</p> Signup and view all the answers

    Which conditions must be met for trademark licensing according to common law?

    <p>It must not destroy the distinctiveness of the trademark</p> Signup and view all the answers

    Which of the following is NOT a right conferred by the registration of a trademark?

    <p>Statutory exemption from infringement</p> Signup and view all the answers

    What is the effect of Section 45 regarding trademark assignment?

    <p>It requires that assignments be registered with the Registrar</p> Signup and view all the answers

    What is the primary goal of trademark licensing?

    <p>To ensure consistency and connection in the course of trade</p> Signup and view all the answers

    Under the nominative fair use or parody exception in Section 30(1), what can a trademark owner NOT do?

    <p>Prevent all uses of their trademark</p> Signup and view all the answers

    What did the court conclude about the brand name Prius in relation to the plaintiff's action of passing off?

    <p>The brand name had not acquired enough reputation in the Indian market.</p> Signup and view all the answers

    Which of the following factors is NOT considered under the Doctrine of Honest Concurrent User?

    <p>Profit earned from sales</p> Signup and view all the answers

    In the context of trademark dilution, what is meant by 'whittling away' of a mark?

    <p>Weakening the distinctive quality of the mark.</p> Signup and view all the answers

    What is a key aspect of trademark dilution identified by Frank Schechter?

    <p>Dilution occurs through use on non-competing goods.</p> Signup and view all the answers

    Which case ruled that concurrent use of marks was considered honest due to their similarity of duration but difference in classes?

    <p>Hindustan Pencils Private Ltd vs M/S Universal Trading Company</p> Signup and view all the answers

    What is a primary implication of trademark dilution on the consumer perception of a brand?

    <p>It lowers the uniqueness of the brand.</p> Signup and view all the answers

    Under the Doctrine of Honest Concurrent User, what is a consequence of proving confusion due to resemblance of marks?

    <p>It may restrict the concurrent use of the lesser-known mark.</p> Signup and view all the answers

    What distinguishes the modern value of a trademark according to the provided content?

    <p>Its psychological hold on the public.</p> Signup and view all the answers

    What is a key factor in determining passing off in India?

    <p>The Plaintiff has used its trademark continuously for a long period.</p> Signup and view all the answers

    Which factor refers to the relationship between the goods of the Plaintiff and Defendant?

    <p>The goods of the parties are the same or similar.</p> Signup and view all the answers

    Why is the customer base of the Plaintiff an important factor in cases of passing off?

    <p>The customers are often uneducated and can be easily deceived.</p> Signup and view all the answers

    In the context of passing off, what does goodwill refer to?

    <p>The proprietary right over a mark that denotes the business.</p> Signup and view all the answers

    What distinguishes the UK criteria for goodwill from that of India?

    <p>In the UK, goodwill must be located within the country.</p> Signup and view all the answers

    What did the Harrods v Harrodian School case emphasize regarding goodwill?

    <p>Goodwill is essential for protecting a trademark.</p> Signup and view all the answers

    What is a significant criticism of the location criterion for goodwill in the UK?

    <p>It does not consider global market dynamics.</p> Signup and view all the answers

    How is the relationship between reputation and goodwill viewed in India?

    <p>Equating reputation to goodwill may be questioned legally.</p> Signup and view all the answers

    Study Notes

    International Trademark Registration

    • Trademark owners can have a portfolio of national marks, each enforced separately.
    • An international application cannot be filed without a national filing/registration.
    • An application filed online through the Indian portal can be filed to the Bureau, designating all or some of the members of the Madrid Union where you wish your mark to be protected.
    • The application is transmitted to WIPO for examination, registration and publication.
    • No separate Registration certificate is issued for an international registration.

    Trademark Owner's Rights

    • Trademark registration gives the owner the exclusive right to use the trademark in relation to the goods and services registered.
    • This includes exclusive use, assignment, licensing, seeking correction of the register, and altering the registered Trademark.
    • There may be exceptions, such as nominative fair use or parody in accordance with Section 30(1).

    Assignment and Licensing

    • Assignment under Section 37 allows the proprietor to assign the trademark.
    • Statutory Provisions – Section 40-44 – state that assignment should not result in more than one person having exclusive rights to use the mark for the same goods or services or associated categories.
    • Assignment needs to be registered with the Registrar – Section 45
    • Licensing should not destroy the trademark.
    • It may not create an exclusive right and can be both exclusive and non-exclusive.
    • Licensing is permissible under common law and statute.
    • Gujarat Bottling Co.v Coca Cola Co. case determined that licensing of a trademark is governed by common law, with conditions: 1) Licensing does not result in confusion or deception among the public, 2) It does not destroy the distinctiveness of the trademark, 3) A connection in the course of trade consistent with the definition of trademark continues to exist between the goods and the proprietor.

    Doctrine of Honest Concurrent Use

    • In cases of Honest Concurrent Use, the Registrar may permit the registration of a mark under S. 12.
    •                                              Factors considered in determining honest concurrent use include honesty of the concurrent use, quantum of concurrent use shown by the petitioner, degree of confusion likely to follow from the resemblance of both marks, whether there is a proved instance of confusion, the relative inconvenience to the parties and inconvenience to the public if the latter mark is registered.
    • Kores (India) Limited vs Khoday Eshwarsa And Son, And Anr. 1985 (1) BomCR 423 case provides case law examples of factors to consider when analyzing honest concurrent use.
    • Hindustan Pencils Private Ltd.vs M/S.Universal Trading Company 2000 PTC 561 (Del) case concluded that similar marks used for different classes of goods and services were considered honest concurrent use.

    Dilution

    • Trademark dilution refers to the unauthorized use of and/or application for a trademark that is likely to weaken the distinctive quality of or harm a famous mark.
    • Coca Cola v. Pepsi Cola Ltd., 2003 (27) PTC 305 case provided a strong example of dilution.
    • HUL v.AMUL, where Gujrat Cooperative Milk Marketing Federation (GCMMF) makers of Amul ice cream used controversial TVC and print media ads that denigrated Kwality Walls frozen dessert and ice creams.
    • The Bombay High Court ruled that while healthy competition is encouraged, intentionally disparaging products can result in dilution harming the brand.

    Opposition of Application

    • After examination and acceptance, the application is advertised on the Registry.
    • This is to invite any reservations or opposition that other proprietors may have regarding the application (Advertisement under Section 20).
    • Any person within 4 months of such advertisement can file an opposition against such application.
    • The Registrar then informs the applicant of such opposition and within two months, the applicant is supposed to file a counter-statement to the opposition with evidence.
    • At the discretion of the Registrar, a hearing may be held where the parties can defend their positions.
    • The Registrar then decides and furnishes reasons for the decision based on the hearings.

    Passing Off

    • Passing off generally refers to the misrepresentation of goods or services as being those of another person.
    • 8 factors for determining Passing off in India, are:
      • The Plaintiff has been using its trading style and trademark for a long period and continuously whereas the Defendant has entered into the said field only recently;
      • There has not been much delay in the filing of the suit for injunction by the Plaintiff;
      • The goods of the Plaintiff have acquired distinctiveness and are associated in the mind of the general public as goods of the Plaintiff;
      • The nature of activity of the Plaintiff and the Defendant is same or similar;
      • The goods of the parties to which the trademark of the Plaintiff is associated are same or similar;
      • The user of the said trademark or trade name by the Defendant is likely to deceive and cause confusion in the public mind and injury to the business reputation of the Plaintiff;
      • The sphere of activity and the market of consumption of goods of the parties are the same; and
      • The customers of the Plaintiff, inter alia, include uneducated, illiterate and wary customers who are capable of being deceived or confused or misled.

    Goodwill

    • Goodwill must be attached to a business for trademark protection.
    • The Plaintiff must have a proprietary right over the mark.
    • The mark must have been used to denote the business.
    • Such use of the mark should have generated goodwill.
    • Protecting the goodwill of a trader is not the same as protecting the trader's reputation (Harrods v Harrodian School case).

    Collective and Shared Goodwill

    • Collective goodwill is a term used when a mark is associated with multiple companies (Bollinger v Costa Brava Wine case).

    Location of Goodwill

    • In the UK, goodwill must be located within the UK to be protected.
    • In India, there needs to be clarity- overseas marks have already been protected in certain cases.
    • Daimler Benz v Hybo Hindustan
    • N R Dongre v Whirlpool
    • Toyota Case
    • Legally speaking, equating reputation to goodwill may be questionable (India) but the location criterion is also regressive in the UK, given the global size of markets.

    Studying That Suits You

    Use AI to generate personalized quizzes and flashcards to suit your learning preferences.

    Quiz Team

    Related Documents

    Trademarks 2024 PDF

    Description

    Explore the key aspects of international trademark registration, including the necessary steps for filing applications and the rights of trademark owners. This quiz covers essential topics like the Madrid Union process, assignment, and licensing of trademarks. Test your understanding of international trademark law and its implications for businesses.

    More Like This

    Use Quizgecko on...
    Browser
    Open
    Browser
    Browser