Assignment I: Fundamentals of IPRs and Trademarks

QUESTION 1:
What are the important theories of protection of intellectual property rights?

ANSWER:
Protection of intellectual property rights hold immense significance in todays world since intellectual property plays a vital role in the modern economy. These innovations hold the key to any nations progress and prosperity. The important theories of protection of intellectual property rights are as follows: 1) MORAL DESERT THEORY: According to John Locke, every man has a property in his own person, i.e., the fruits of a mans labour belongs to him. In this scheme intellectual property rights would seem to follow naturally since the individual must surely be permitted the fruits of his mental and physical and mental labour. 2) PERSONALITY THEORY: According to Kant and Hegel, if ones artistic expressions are synonymous with ones personality, then they are deserving of protection just as much as the physical person is deserving of protection since in a sense they are a part of that physical person. Here personality of a person has been shown to be a very valuable property. 3) UTILITARIAN THEORY: Advocated by economists such as Jeremy Bentham and John Stuart Mill, the utilitarian theories assume that the objective of any policy should be the attainment of the, greatest good for the greatest number. The utility gains from increased incentives for inventions must be weighed against the losses incurred from monopolization and their diminished diffusion. Hence greatest good can only be achieved by protecting the greatest good, i.e., intellectual property.

QUESTION 2:
Distinguish between a collective mark and a well known trademark?

ANSWER:
The differences between a collective mark and a well known trademark are as follows: i) Section 2(g) of the Trade Marks Act, 1999 defines the term collective mark means a trade mark distinguishing the goods or services of members of an association of person not being a partnership within the meaning of the Indian Partnership Act, 1932 which is the proprietor of the mark from those of others. Whereas, as per section 2(1) (zg), Well-known trademark in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of Page 1

NAME: DEBDEEP SINHA; USER ID: debdeep25056

Assignment I: Fundamentals of IPRs and Trademarks

trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services. A Collective mark cannot be owned by individuals or a body corporate. It can be registered only by a group or association of persons and the use thereof is reserved for members of the group or association of persons. Section 61 to 68 of the Trade Marks Act, 1999 contains provisions relating to the registration of collective trademarks. Whereas, a well-known trademark can be owned or used only by an individual or a corporate body who is the original user. Section 11 (6) to (11) deals with matters relating to well-known trademark. A collective mark can be obtained by an organization which can permit the members to use the mark. The association has to prepare and file a regulation with the Trade Mark Registry setting out the rules specifying standards and criteria for membership. Whereas a well known trade is that trade mark which has been acquired by the user of the said mark by using the said mark for a long period of time and which associates the owner to the goodwill and name-fame related to his service or products. The primary function of a collective mark is to indicate a trade connection with the Association or Organisation. Whereas the underlying principle for protection to well-known trademarks cases is to prevent traders taking free ride. They may tend to take advantage of the goodwill of the well-known trademark without doing efforts. A case of infringement can be filed for protecting a collective trade mark as defined under section 67 of the Trade Marks Act, 1999. However a well known trade mark can be protected but an infringement case cant be filed in the said case, but still we can oppose any similar trademark to be registered.

ii)

iii)

iv)

v)

Question 3:
Distinguish between Passing Off and Infringement under trademark law?

Answer:
The differences between passing off and infringement under trademark law are as follows; i) The Trade Mark Act, 1999 recognizes the Common Law remedy of passing off. The tort of passing off is based upon the principle that no man is entitled to represent his goods as being the goods of another man; and no man is required to use any mark, sign or symbol, device or means, whereby without making a direct representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate purchaser.

NAME: DEBDEEP SINHA; USER ID: debdeep25056

Page 2

Assignment I: Fundamentals of IPRs and Trademarks

Infringement on the other hand refers to the unauthorised use of a registered trademark, i.e., use without permission of the trademark holder. ii) For a passing off action registration of trademark is not relevant. It is based on property in goodwill acquired by use of the mark, wherein the plaintiff has to prove that he is user of the mark, which has become distinctive of the product. On the other hand infringement is based on statutory right acquired by registration of trademark. iii) In case of a passing off action, the defendant's goods need not be same as that of the plaintiff; they may be allied or even different. In case of an action for infringement, the defendant's use of the offending mark may be in respect of the goods for which the mark is registered or similar goods. In the claims of infringement based on well known trademarks, the barrier of goods stands further diluted in view of the provisions of the Trade Marks Act, 1999. iv) In passing off action identity or similarity of marks is not sufficient; there must also be likelihood of confusion. But in case of infringement if the marks are identical or similar no further proof is required. In the case Durga Dutt Sharma V. N.P. Laboratories, a Supreme Court judgment, the difference between the two has been laid. It was held that An action for passing off is a Common law remedy, being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another. But that is not the gist of an action of infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to use the trade mark."

Question 4:
What kind of protection is afforded to the registered trademarks under the Trademark Act?

Answer:
The registration gives the proprietor exclusive right to use the trademark in relation to goods or services in respect of which the registration is being made under section 28 of the Trade Marks Act 1999. The right of exclusive use shall be subject to conditions and limitations with which the registration is made. A registered trademark is infringed when a person, not being a registered proprietor or permitted user, uses in the course of trade, a mark, which is identical or similar to the registered trademark, in relation to goods or services in respect of which the trademark is registered. Section 29 of the Act gives instances of what shall constitute infringement which can be summarized as in cases where the mark is deceptively similar and is likely to cause confusion on the part of the public. On such infringement the owner of the trademark can directly sue for infringement to get relief. Mere registration on the part of the plaintiff is enough to give him the right to sue.

NAME: DEBDEEP SINHA; USER ID: debdeep25056

Page 3

Assignment I: Fundamentals of IPRs and Trademarks

Question 5:
Write a note on framing and linking.

Answer:
Framing: One can have a stronger case of trademark infringement on ground of framing rather than
linking. Framing refers to the situation where a website instead of showing its original contents puts the links of a few popular websites related to his, creating a framed website and when the user clicks on these links instead of talking him to the website of the original source the framed website drags its contents to its own site. The problem which arises here is that such contents are framed within the webpage of the framed website cutting off the original websites advertisements and showing the advertisements of the framed website only. This kind of activity is known as framing which is again more of an unfair competition issue. The companies might get upset due to loss of revenue through advertisements, plus copyright issues are also involved. It confuses the users as to the origin or source of the contents as the framing sites web address is displayed. The chances of trademark infringement depend upon framing of contents.

Linking: Linking is a bit different from framing. Linking refers to a case where a website puts links of
different sites on its webpage such that when the internet user clicks on the links it takes him to the website of the particular link. It facilitates the users in navigating through the Internet with considerable ease. In most cases, linking is welcome, but in some cases it affects advertising. Advertising is a major source of revenue for any website. An advertiser/company chooses where to advertise on the internet by checking the number of hits on a webpage, i.e., how many people have accessed/visited the websites homepage. The more the hits the more the advertisers are attracted. A problem would arise if another website would permit to skip the home page of a website (which contains the advertisements) by deep linking into the site, i.e., by linking information found more deeper in the webpage and not on its homepage, and this would reduce the number of hits thus reducing advertisements and causing trademark infringement.

NAME: DEBDEEP SINHA; USER ID: debdeep25056

Page 4