SUNITA K SREEDHARAN SKS LAW ASSOCIATES, NEW DELHI

29 NOVEMBER 2011

PRODUCT OR SERVICE

CONSUMERS B2-B

Semiconductor
Design

Copyright

Biodiversity &TK Trade Dress

GI

Product & / Services

Plant Variety

Trademark Patent

Trade Secret

TRADEMARK ACT 1999

wef 15 September 2003 Replaced Trademark & Merchandise Act 1959 Can register a trademark or claim prior right through use

DESIGN ACT 2000

Replaced the Design Act of 1911 Must be registered. Novelty is an important criteria for registration

The trademark can be a

word, name, device, label, signature, letter or numeral or any combination thereof

used by a manufacturer or trader to identify his goods from those of other manufacturers.

WORDS & LABELS

SYMBOLS

TRADE DRESS

.. OR NON-TRADITIONAL SUBJECT MATTER SMELL

SOUNDS

SHAPE

COLOR SCHEMES
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Distinctive (coined words, stylized fonts, colors, combination of colors) House marks (Umbrella Mark) Differentiation of products under one House Mark
Price differentiation Market differentiation Eg. Seen in cosmetics, cars .! LOreal, Proctor & Gamble, Tata Group, Godrej

In use Goodwill & Reputation Cross-border reputation Well-known marks

INDUSTRIAL DESIGN NOVEL FEATURES

SHAPE, CONFIGURATION, PATTERN OR ORNAMENT

APPLIED TO ANY ARTICLE BY ANY PROCESS

INDUSTRIAL, MANUAL, MECHANICAL OR CHEMICAL PROCESSES

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IN PRACTICE, IT BECOMES APPARENT THAT THERE ARE OVERLAPS ESPECIALLY WHERE THERE ARE :
GOODS / ARTICLES DISTINCTIVE AND THEREFORE EVOCATIVE OF THE PRODUCT

TAKING THEM IN DETAIL..

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TM IDENTIFIES GOODS & SERVICES

DESIGN IDENTIFIES GOODS (ARTICLES)

DIFFERENTIATION FROM THE COMPETITORS GOODS & SERVICES

DITTO WITH DESIGN

WITH / WITHOUT OTHER IPRs, TRADEMARKS ARE KEY TO BRAND BUILDING

DITTO WITH DESIGN

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A SUCCESSFUL TM COMMUNICATES A COMPANYS VALUES TO THE CONSUMER

DITTO WITH DESIGN

KEY TO SUCCESSFUL LICENCES FAR BEYOND THE PATENT TERM

IN CASE OF DESIGN THE TIME IS 15 YEARS

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FILING COMP. LICENSE INFRINGEMENT EXAM ON CRITERIA COMPLIANCE

IP SPECIFIC
PROCESSES N

APPEAL

GRANT OF IPR REJECT

SKS LAW ASSOCIATES 2011

There are distinct differences between Trademark and Design protection Trademark is for a mark / logo that identifies goods or services of one trader from the other. The main requirement of a good effective trademark is that it must be distinct from the others. Design is granted for the novel and aesthetic look on an article which is visible to the naked eye.
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LICENSE

The trademark protection exists in continuity provided it is used. If a trademark is registered then it can be renewed every 10 years.
An unregistered trademark can be protected by by suing the unauthorized user for Passing Off of the goods / services In case of unauthorized use of a registered trademark, a suit for infringement can be filed.

Design protection for a registered design is 10 years extendable by another 5 years; then the design falls into public domain
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A good design on an article can become distinctive over a period of time The distinctive design over continuous use can transcend into a trademark
For eg. the Coca Cola bottle. The shape of the bottle, a design became distinctive with the beverage and was granted shape mark protection under trademark laws by a few countries including Japan.

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BUSINESS OPPORTUNITIES

GOVERNMENT POLICIES

MARKET PARTNERSHIPS
SOCIO-ECONOMIC CONSIDERATIONS PREVAILING LAWS

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IT IS NOT ENOUGH TO MAKE OR DO THINGS THAT YOU CAN SELL

YOU NEED TO MANAGE AND UTILIZE YOUR IP ASSETS IN CONJUNCTION WITH ALL OTHER ASSETS OF THE COMPANY
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BEST GLOBAL BRANDS 2006

COURTESY BUSINESS WEEK
Rank 1 2 3 4 5 6 7 8 9 10 Brand Country of Origin Brand Value ($bn) Coca-Cola US 67,000 Microsoft US 56,927 IBM US 56,201 GE US 48,907 Intel US 32,319 Nokia Finland 30,131 Toyota Japan 27,941 Disney US 27,848 McDonald's US 27,501 Mercedes Germany 21,795

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IDENTIFIABLE PRODUCT / SERVICE DEPENDABLE PRODUCT / SERVICE PROMISE OF CONSISTENCY PROMISE OF QUALITY MARKET LOYALTY IMAGE

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OPTIMIZATION GENERATE REVENUE CREATE BENCHMARKS

FORM MARKET PARTNERSHIPS

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THANK YOU
SUNITA K. SREEDHARAN SKS LAW ASSOCIATES NEW DELHI, INDIA sunita@skslaw.org www.skslaw.org

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