Category Archives: Trademarks

A Primer On Spotting IP Issues Associated with Social Media Websites and Content

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By Charles Macedo, Partner at Amster, Rothstein & Ebenstein LLP

Most businesspeople and generalists understand that social media can be an important but risky part of doing business. This article seeks to identify how to spot potential intellectual property law issues associated with social media websites and content that can arise for a company.

I. Common Aspects of Social Media Websites

There are certain fundamental aspects that internet sites (whether they be social media websites or any other kind) have in common.

First, an internet site resides at a domain name or Uniform Resource Locator (URL). The domain name or URL is like the street address of a website. Social media websites such as Facebook and Twitter will also have specific URL pages for specific users.

Social media may be integrated into company websites directly by allowing for users of the websites to comment or share information in response to postings on the websites (like blogs) or products offered for sale (like product reviews or commentaries). Social media may also be integrated in less direct fashions, such as through sharing links which allow a user to tell his or her friends on a social media website like Facebook that the user “likes” the product, article or website, or by providing a link in a “tweet” on Twitter.

Websites are used for the sale of products, content or the display of other kinds of information.

In addition to merely displaying data or other information in response to an inquiry, websites can also obtain, process, reformat and/or display data obtained from other sources. For example, the US Patent and Trademark Office provides text and image versions of US patents at its website, http://www.uspto.gov. Other websites may use this same information and reformulate the data (sometimes along with other data) in different forms, such as at http://www.google.com/patents and http://www.pat2pdf.org.

All of these types of websites can create intellectual property rights and potentially infringe upon others’ intellectual property rights.

II. Relevant Intellectual Property Laws

Chart: Types of Intellectual Property Assets

Intellectual property is considered property of the mind. Expressions of ideas, identifying information, inventions and business relationships can all be protected (and potentially infringed) through different kinds of intellectual property laws and related legal theories.

  • Copyright law protects original expressions of ideas from being copied by others.
  • Trademark law protects identifying information (e.g., a company’s brand) from being used in a confusingly similar manner by more than one company in a related line of business.
  • Patent law protects new, useful and nonobvious ideas from being used by others.
  • Business Torts law protects against wrongful conduct such as misappropriating another’s property, unfairly competing, or tortiously interfering with someone else’s business expectation or contract.
  • Trade Secret law allows for the protection of secret formulae, patterns, or compilations of information.
  • Contract law protects business partners as the parties to the contact agree.

Social media websites and content can potentially impact a company with respect to each of these areas of intellectual property law.

A. Copyright Law

Copyright law provides legal protection for original expressions of ideas being reproduced without authorisation. Copyright protection covers a large variety of original works, including:

  • “literary works,” like books and magazines, computer software and related works;
  • “musical works,” like songs and the accompanying lyrics;
  • “dramatic works,” like plays;
  • “pantomimes and choreographic works,” like dance movements and ballets;
  • “pictorial, graphic, and sculptural works,” like paintings, pictures, jewelry, toys and statues;
  • “motion pictures and other audiovisual works,” including movies, television broadcasts and DVDs;
  • “sound recordings,” including MP3 files;
  • “architectural works,” like designs for buildings; and
  • original compilations of data.

On the internet, copyright law can be used to protect original content, articles, data compilations and other information on a website. Publication of content on a company’s website or other websites can be protected by copyright law, but failure to timely register a claim to a copyright can limit the company’s damages.

Similarly, copyright law can potentially be used to prevent others from data mining content from a company’s website and using its original content without permission.

In particular, manipulating, parsing, reorganising, and merging public data with other data can lead to potentially copyrightable data. Copyright law can be an effective way to protect a company’s data and other original content.

In addition, if careful analysis is not done upfront on how a website obtains, manipulates and presents data and other information, that website can be the subject of a copyright infringement action by others. Here again, this is an area where consulting counsel in the first instance can save a company a lot of expense and aggravation over the long haul.

In the context of social media websites, blog postings, answers to requests, “tweets”, pictures taken or created and posted on a user’s page, or other content driven expression are all potentially copyrightable. A company needs to be careful how it, its employees and others post the company’s content and content of others.

Some social media websites claim copyright ownership over all items posted on their websites. Other social media websites recognise that the copyright remains with the author (presumably the individual or company posting the content at issue). Before a company allows for its information to be posted on social media websites, it should make sure to carefully review the terms and conditions of such websites to make sure that the company is not unwittingly giving up its copyrights to the content.

Companies also need to be careful of posting the copyrighted content of others without permission. Clearing rights to post others’ copyrighted material is an important step for any company.

Ownership of copyrights is also a difficult area for many people to fully understand. In preparing copyright applications, companies are often lulled into thinking that because the form appears so simple, they do not need expert advice on how to fill it out. However, this is an instance where the apparent simplicity can lead to disastrous results. See, e.g., “Joint Authorship of Doo-Wop Song Found Based on Disputed 10 per cent Contribution to Lyrics” [pdf], JOURNAL OF INTELLECTUAL PROPERTY LAW & PRACTICE, November 1, 2009.

Identifying authors of a particular work and source materials from which a work was derived can be complicated. Also, making sure that a particular work made either with the assistance of or by another is a “work for hire” and/or properly assigned is another area where errors often occur. Many purported copyright owners do not appreciate that not every kind of “work” qualifies as a “work for hire”.

Making sure appropriate contracts are entered into when a copyrightable work is being prepared is important, and it is worth consulting a trained copyright lawyer in the first instance.

B. Trademark Law

In general, trademarks are used to identify a single source of products and services sold on a website.

A trademark is a symbol, a word, or another readily recognisable item, such as a brief musical snippet, that uniquely identifies the source or origin of goods. In other words, a trademark identifies where a particular product comes from.
Trademark law protects against likelihood of confusion; that is, whether consumers are likely to think that the sources of two goods or services are the same.

Web pages commonly use word or logo forms of trademarks. In the multimedia world that the internet has become, it is not surprising to also visit websites where sound marks (e.g., “Hedwig’s Theme” from the Harry Potter movie playing on a Harry Potter website) are used to identify the source of the website.

Similarly, domain names for websites can also be based on a company’s trademark, e.g., http:/www.amazon.com, http://www.panasonic.com, http://www.jvc.com, etc.

In social media, not only is a company’s trademark used in the main URL address, such as the use by Facebook of its trademark in its URL address http://www.facebook.com, but users’ trademarks may be used to identify specific user pages on such social media websites. For example, Starbucks has a Facebook page to advertise a specific coffee product.

On the internet, trademark law can potentially be used to protect competitors from selling goods or services with confusingly similar marks. It may also be used to prevent the use by others of domain names and user pages that incorporate a company’s trademarks and search engines and other software that use a company’s trademarks to divert potential customers to competitors’ websites, products or services.

These are important business tools that cannot be ignored when operating a business on the internet. The role of social media in this potential attraction or diversion is increasing every day as more companies create “fan” pages, social media websites create and implement more widgets to interconnect with other web outlets, and more and more opportunities to use trademarks in URL addresses are created, with not only additional high level domain names (.com, .org, .biz, .net, .tv, etc.), but also with individual user pages on social media and other websites.

To start with, as with other businesses, the selection and use of appropriate trademarks for an internet-based business is quite important. Selection of certain kinds of marks with popular descriptive terms in them can direct the flow of internet traffic to a company’s website.

However, adoption of that same kind of trademark can also result in consumers, who are looking for that company’s products or services, being diverted to a competitor’s website in a fair and reasonable manner.
Consider, for example, one of the leading “pop-up” cases from the Second Circuit involving the mark “1-800-Contacts”. On one hand, whenever a consumer searches for “contacts,” a website containing this mark will be returned. Thus, many potential internet consumers may potentially be driven to the website.

On the other hand, when consumers search for the mark “1-800-Contacts,” consumers may be diverted to a competitor’s website since search engines can sell the key word “contacts” to competitors with minimal risk of being accused of trademark infringement.

Thus, while selecting a mark that includes the product being offered as part of that mark may direct traffic to the website, there may also be great difficulty in trying to stop others from redirecting traffic to their websites.

Another important consideration at the time of selecting a mark is whether others are already using the mark. Thus, it is prudent to do a “clearance search” prior to implementing a new mark.

Trademark law can also be useful in preventing others from adopting domain names which incorporate a company’s registered trademark. These third party domain names using a company’s marks can be harmful to its reputation (depending upon their content) or can divert potential business leads away from the company.

While procedures like lawsuits and ICANN proceedings exist to force third parties that misappropriate a company’s registered trademarks to return the domain names to the company, the easiest way to avoid such costly procedures is for the company to register the various, obvious derivatives of its marks to be directed to its website in the first instance.

Spending fifty dollars today can save a company thousands of dollars in the future. In order to ensure that a company’s trademarks remain enforceable, best practices dictate that a proper system of monitoring and enforcing those trademarks be set up and maintained. Such a system typically includes the use of watch services to review filings with the US Patent and Trademark Office, periodic internet searches, following up with cease and desist letters, and if necessary, enforcement proceedings. Using “alerts” from search engines can also help identify unauthorized use of a company’s trademark on the internet.

For social media websites and other internet venues, the role of whose duty it is to police and enforce against violations differs internationally, as evidenced by the seemingly contradictory results in the U.S. and France in actions brought against eBay for its alleged failings in protecting against the sale of counterfeit items. See, e.g., eBay: A Tale of Two Defenses [pdf], IP Law360, August 22, 2008.

Companies should set up appropriate policing mechanisms to see how their important trademarks are used on e-commerce and social media websites, and when appropriate follow such websites notice and take down procedures to protect against abuses.

While these procedures may at times seem like expensive diversions to a company, the cost of not instituting such procedures can be diverted sales, brand tarnishment, and potentially a loss of trademark rights.

C. Patent Law

Since at least the State Street decision in 1998, patent protection has been important with respect to the internet. Although over the past few years, critics have sought to limit so-called “business method” patents, the recent Supreme Court decision in Bilski v. Kappos has confirmed that such patents are here to stay, and thus cannot be ignored as a class.

Patents are issued for a limited time (20 years from earliest filing date) for new, useful and non-obvious ideas to the first and true inventor.

While patent offices around the world are struggling with this issue, at least in the United States, novel and non-obvious techniques for manipulating data can potentially be subject to patent protection. Similarly, in the United States, other novel and non-obvious business method techniques can also potentially be subject to patent protection. In the context of the internet in particular, at least in the United States, patents can be used to prevent others from copying novel and non-obvious aspects of a website such as:

  • How data is accessed and manipulated;
  • Novel and nonobvious functions of one’s software;
  • New business methods implemented by one’s website;
  • New functionality of one’s software programs;
  • New techniques used to block misappropriation of one’s data.

Because of the difficulties that the US Patent and Trademark Office has had in grappling with manpower issues, confidential subject matter and the flood of applications in this area, it should be recognized upfront that obtaining patents in this area can be more costly, time-consuming and difficult than for patents in other, more traditional subject matters.

With respect to social media websites, patents can potentially cover ways that social media websites operate, ways that a company’s website interacts with a social media website such as through advertisements or linkages, or other operability that may be developed in the future.

As new business models are developed and implemented, patent protection for new and non-obvious practical applications and particular implementations are being sought and obtained, and will be the subject of future litigations in years to come.

D. Business Torts Law

In addition to federal trademark law, there are a host of related state law causes of action (e.g., unfair competition, tortious interference, trespass to chattels, misappropriation, etc.) that can be used to address trademark-like injuries.

Unfair competition is a flexible cause of action directed to address unfair or fraudulent business practices. A cause for unfair competition can potentially address a wide range of conduct by competitors that affects a company’s business.

Examples of cases in which unfair competition claims have been invoked include false or deceptive advertisements, misstatements about a competitor’s products, and other false and misleading statements which injure a business or its reputation.

When actual or potential customers are diverted by improper means from a company’s website, a cause of action for tortious interference with contract and/or tortious interference with prospective business relations may be appropriate. However, since this is a state law claim, it important to make sure to consider the correct law and the scope of potential defences available under that law.

Tortious interference claims can address the circumstances where a company’s trademarks are misused by other websites and cause inappropriate diversion of customers or prospective customers from the company’s website.

Conversion and misappropriation claims apply when property is taken. An interesting legal theory exists whereby a misappropriation claim may be present when goodwill is taken by improper acts, such as adopting another’s business name in a jurisdiction where that entity does not do business, but nonetheless has fame and goodwill based on that entity’s operation in other venues.

Trespass to chattel claims apply when someone improperly intrudes upon another’s property. These types of causes of action have been used, for example, to stop third parties from robot mining data from a website.

E. Trade Secret Law

Trade secret law protects a secret formula, pattern or compilation of information. One of the most famous trade secrets is Coca Cola’s secret formula, or the Colonel’s secret recipe for Kentucky Fried Chicken. Other examples of trade secrets can include a secret manufacturing process, a list of customers or trade routes who purchase or would likely be interested in purchasing a particular product or service, or the source code for a computer program.

Most companies protect some aspect of their businesses using trade secret protections. Some are better than others at doing so.

Social media and the internet can put at risk a company’s trade secrets. Since the sine qua non of a trade secret is that it is kept secret, the speed and ease in which information can be rapidly (and permanently) distributed with a click of a button in social media and internet poses a clear risk for any company seeking to maintain a trade secret. A simple posting of a company’s secret information can destroy the secret and leave that information to be available to anyone.

Consider, for a second, a company that considers its customer list to be a trade secret and seeks to protect such information. A salesperson who identifies those customers as “friends” on Facebook, or “connections” on LinkedIn, or some other similar status on another social media website, could destroy the secret nature of such a list. It also can lead to that salesperson, in essence, appropriating that information should he or she leave to go to work for a competitor.

F. Contract Law

Contract law can be used to fill gaps in intellectual property law, and obtain protection that might not otherwise be clearly available.

The best time to work out the scope of rights with a business partner is at the beginning of the relationship. At that time, parties are more willing to give and take with each other since the prospect of a successful and profitable business relationship is around the corner. Thus, at that time, provisions can be included in agreements that help ensure that intellectual property will be recognized and respected.

However, care must be taken on how the contract clauses are drafted in order to avoid the risk of such clauses becoming unenforceable.

Arm’s length agreements can be useful ways of establishing royalty rates for intellectual property. Care must be taken in specifying what is being paid for pursuant to the agreement, such as the services, goods, rights to use intellectual property, etc.

Non-compete clauses, so long as properly drafted considering appropriate state law, can provide protection that other areas of intellectual property law might not otherwise provide. For example, non-compete clauses can protect a company from key employees leaving and stealing business or trade secrets. Again, care must be taken to come within the parameters of the particular state law that governs the contract.

Agreements which license rights to use a company’s trademarks can include remedies that are broader than the law might otherwise provide. Consequently, the uses that a company tolerates by agreement can affect the uses that the company can object to in future disputes. The failure to include certain necessary clauses in trademark licenses can have adverse results on the enforceability of such marks in future contracts.

Shrink wrap/click through agreements can be used to prevent misuse of a company’s data by users. However, enforceability of such agreements may be an issue, depending upon the terms, conditions, choice of law and method and document by which the user acknowledges acceptance.

Contracts can also be used to fill other gaps that other forms of intellectual property law might otherwise leave open.

III. Conclusion

For internet business, like other business, the use of intellectual property law needs to be carefully considered.

A strategic plan should be developed on how to identify a company’s intellectual property, turn it into a tangible asset and properly enforce and protect it.


(This post is by Charles R. Macedo and was has been reproduced from IP Watch where it was  published under a Creative Commons BY-NC-ND licence.)

Facebook URLs

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A short while ago, Facebook announced personalised URLs. For most individual users, this is probably little other than an additional feature. However, for companies, brands, products, services and public figures, it could have important intellectual property implications. If such entities / celebrities have active Facebook accounts, it would make sense for them to reserve unique usernames associated with their Profile Pages whether or not Facebook figures prominently in their business plans. If reserved, the selected username would appear as follows: facebook.com/username with the username replacing a randomly assigned numerical reference.
 
Eligibility:
Businesses or brands must have been live on Facebook before May 31, 2009 and have had at least 1,000 fans at that time to be eligible to select a username. Facebook has said that new users can reserve a username on June 28, 2009 but it is unclear if this also applies to Profile Pages for businessses.
 
Implications for trade mark owners:
If possible, it makes sense to secure a username as soon as possible so as to secure the trade mark and to prevent name/cyber squatting. The usernames cannot be changed once they are submitted at: http://www.facebook.com/username. Further, usernames cannot be assigned.
 
Prevention of unauthorised use:
The owners of registered trade marks can prevent their trade marks from being reserved as usernames by filling out (or authorising another person to fill out) an online form located at: http://www.facebook.com/help/contact.php?show_form=username_rights. However, this is unlikely to help those who do not have registered trade marks.
 
Infringement Allegations:
In case some reserves a trade mark owner’s mark as a username, the owner can report this to Facebook at: http://www.facebook.com/copyright.php?noncopyright_notice=1 although it is unclear how Facebook plans to resolve disputes. Although Facebook has reserved the right to remove usernames, it is also not clear whether removed usernames will become available for others (in this case, the trade mark owner) to use or if they will simply pass out of circulation. If the latter is the case, the trade mark will not be available to the owner which makes it important to secure it as soon as possible.

Graphical Representation – A necessary evil?

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By Sidhartha Jatar

Introduction

Conventionally, trademarks have been associated with words, symbols, logos, numerals and pictures. The trend towards registering shapes, colours, scents, tastes and textures is a fairly recent one. Internationally, while legislative changes in trademark law in several countries have been driven by treaties such as the TRIPS ( which sets down a standardised and inclusive legal definition ) , in the case of EU member states, the scope of trademark registration was widened by the First Council Directive of 1988 as introduced by the Council of European Communities. This Directive sought to harmonise the laws of the EU pertaining to trademarks. At that time, it caused considerable excitement because of the opportunities it posed for producers.

Article two of the Directive sets out three criteria for a mark to be considered a trademark:

a) the mark must be a sign

b) the mark must be capable of being graphically represented

c) the mark must be capable of distinguishing goods or services of one undertaking from those of another

The UK Trade Marks Act, 1994 sought to implement the trade mark regime set out by the Directive. One can say with certainty that non-conventional marks in the UK (and similarly for other EU member states) would not have been registrable prior to the Trade Marks Act of 1994. Thus, the Directive is a milestone in the development of the law of trademarks in Europe.

In this note, two important issues shall be discussed:

  • The impact of the graphical representation requirement on colour marks and scent marks in the European Community and the U.K
  • The justifiability of delimiting registration of non-conventional marks through the use of an arguably procedural requirement.

Scent and Colour marks

At the outset, it must be mentioned that although scent and colour marks are both non-conventional marks, they are different by virtue of their nature i.e. Scent is non-visual while colour is visual. Thus, the impact of the graphical representation requirement on them differs in degree.

A. The case with scent marks:

The first case by the ECJ considering an ‘unusual’ mark was Sieckmann v Deutsches Patent-und Markenamt. It was concerned with the registration of a ‘methyl cinnamate’ scent which the applicant had described as ‘balsamically fruity with a slight hint of cinnamon’ and the application to which was attached a formula for the purpose of fulfilling the criteria.

The ECJ ruled that the requirement of graphical representation was not satisfied by:

· Scientific formulas

· Description written in words

· Depositing a sample of odour or

· Combination of these methods.

Thus, even though the description of the smell in words or through a formula was graphic, it was held to be insufficiently clear, precise and objective. Similarly, a sample of odour was said to fail the durability test.\

In particular the ECJ said that the representation had to be:

  • clear;
  • precise;
  • self-contained;
  • easily accessible;
  • intelligible;
  • durable;
  • objective.

These criteria have subsequently come to be known as the ‘Sieckmann seven’.

The court also confirmed that Article 2 of the Trade Mark Directive covered signs that cannot be perceived visually, as long as they were capable of being represented graphically by means of images, lines or characters.

Impact of Sieckmann

The Sieckmann case set a very high standard for fulfilling the criteria for graphical representation. Its impact was universal and affected scent, colour, taste, shape and sound marks.

Prior to Sieckmann the Office of Harmonization for the Internal Market (OHIM) gave much leeway to smell marks. E.g. A registration for the ‘smell of fresh cut grass’ in tennis balls was accepted in the year 2000. However, in Sieckmann the European Court of Justice referred to this case as ‘a pearl in the desert’. Thereafter, there has been no further registration of scents in the UK.

The above condition begs the question as to whether it is practical to expect a scent to be represented graphically when it is inherently non-visual in character. The Sieckmann decision blows a death-knell to the possibility of registering scent marks. Although theoretically a scent remains registrable, in practice the case closes the door to smell marks in Europe. It also leaves vulnerable prior registrations as well as future registrations that may creep through.

B. The case with colour marks

There have been numerous applications to register colours and colour combinations as trademarks both in the United Kingdom and as Community trade marks.

In the famous case of Libertel v Groep BV v Benelux- Merkenbureau, the ECJ taking into consideration the Sieckmann criteria ruled that a colour sample did not fulfil the requirement of durability and that this requirement would have been fulfilled if an internationally recognised colour code were used instead.

Thus, the court held that provided the representation indicates a systematic arrangement of associating the colours in a predetermined and uniform manner (like an international codification system such as Pantone would), a colour mark was likely to get past the stringent criteria of Sieckmann and cross the hurdle posed by the graphical representation requirement.

In Orange Ltd’s application in Libertel, since the application to register the colour orange as a Community trade mark was not well represented (not even a Pantone number defining the shade of orange claimed was used), the company lost out on its application.

It should be noted that the emphasis on the international colour code system suffers from the objection that the precise nature of the trade mark is not perceptible without the need to consult some external information, such as a colour chart[1]. This leaves slight room for doubt as to whether or not the accessibility criteria of Sieckmann is fulfilled although as of now this potential show-stopper has not risen its head above the water. Thus, colour too is adversely affected by the requirement of graphical representation.

Justifying the Law

In Heidelberger Bauchemie Gmb, the ECJ stressed on three purposes of graphical representation:

a) to define the mark so that it is possible to determine the precise subject of the protection in order that the general public as well as the authorities know exactly what is being claimed as a mark

b) to assist the authorities in carrying out an examination of applications and maintain a precise register of trademarks

c) to ensure that other traders know the competitors’ claims and rights

With respect to the third point mentioned above, it is crucial that other producers are aware of the exact nature of the trademark and have easy accessibility to it. This is more so because there are heavy penalties involved and potentially high losses in case a producer violates a registered trademark.

Thus, the argument for the need of stringent requirements of representation prior to registration of a trademark is a tenable one. There is little doubt that a trademark must be represented in the manner laid out by the courts in Sieckmann. The issue, however, revolves around the continuing requirement for the mark to be represented ‘graphically’. Although the legislation does not define the word graphic, the dictionary meaning of the term indicates the requirement for a representation either by writing or by drawing. Thus, invariably, the requirement acts as a hindrance in registering non-visual marks such as scent marks and sound marks.

Non-conventional marks: A policy perspective

There is a need to examine in brief non-conventional marks from a policy perspective:

· What are the pro’s and cons of allowing the registration of non conventional marks? Ought they to be protected in spite of the fact that their essential characteristics lie intrinsically in the nature of the product?

· Is there a possibility that a liberal regime with regard to registration might open up a Pandora’s box whereby a plethora of marks would gain entry to the trademark registry and result in a monopoly for trademark owners?

· Would the registration of non-conventional marks such as scents catalyse the distancing of trademarks from their essential function of acting as badges of origin to becoming tools for businesses to boost product sales and rake in money?

· Is the race to acquire trademarks in non-conventional signs a by-product of the economic incentive behind an extention of term (which trademarks provide because of their renewability)?

The above questions need to be thoroughly debated and discussed. In case any threat is perceived to public interest, the legislature may either disallow registration of the marks in question or else regulate stringently their registrability. The point of concern, however, is that no decisive step in this direction has being taken. Visibly, the graphical representation requirement has become an ‘alibi’ for legislators to wash their hands off a policy debate on the desirability or non-desirability of non-conventional marks (in particular non-visual marks). One might be compelled, in the current scenario, to argue that the European legislative community has by a sleight of hand avoided a policy decision. It has, instead, maintained a status-quo thereby precluding the use of ‘merit’ (read distinctiveness) in deciding the registrability of non-conventional marks and effectively discriminating against marks on account of their ‘nature’.

The path ahead

If a fair chance is to be given to all non-conventional marks, a scheme would have to be developed by which a trademark is represented according to its nature.

Whatever might be the solution to this deadlock, a re-look at the law by policy makers is quite certain in the near future. Until then, the legal and business community will have to wait with anticipated breath.

 

[1] SMELL, SOUND, COLOUR AND SHAPE TRADE MARKS: AN UNHAPPY FLIRTATION by David I. Bainbridge. Citation: J.B.L. 2004, MAR, 219-246

GoogleMail not Gmail

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One of the consequences of a trademark dispute in Germany between Google and businessman Daniel Giersch is that Google can no longer call its eMail service Gmail.

A plain text message, which reportedly started popping up when users tried to access Gmail from Germany, read, “We can’t provide service under the Gmail name in Germany; we’re called Google Mail here instead. If you’re traveling in Germany, you can access your mail at http://mail.google.com. Oh, and we’d like to link the URL above, but we’re not allowed to do that either. Bummer.”

Yo! China v. Nestle on the Use of ‘Yo’ Trademark

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The Delhi High Court granted a temporary injunction to Moods Hospitality which owns the ‘Yo! China’ chain of restaurants.

The injunction restrains Nestle India from using the word ‘Yo’ in relation to its ‘Maggi Cuppa Mania’ instant noodles ‘Masala Yo!’ and ‘Chilly Chow Yo!’.

Barely a week later, this order was stayed by a division Bench of the Delhi High Court comprising Justices Siddharth Mridul and Manmohan.

‘Yo! China’ inter alia sells cooked noodles under the name ‘Yo! Box’ and it says that Nestle’s product is in direct competition to its brand.

An Accessible Overview of Trademark Law in India

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Copyright 2008 Amritesh Mishra

Introduction

The Trade Marks Act was passed in the year 1999. Prior to this Act, there was The Trade and Merchandise Marks Act, 1958. Till 1958, trade marks were governed by the Indian Penal Code. In the simplest terms, a trade mark is a name under which the goods are traded e.g. Reebok, Sony, Versace, French Connection UK etc. are trademarks.

In addition to this, the titles of movies like Swades and Rang De Basanti, coined names of characters by scriptwriters and authors like James Bond, Gabbar Singh, etc., logos such as Apple’s Apple, ‘tag lines‘ like Humara Bajaj, the shape of goods, their packaging, and combination of colours e.g. white and red in a blue border logo of Tommy Hilfiger. Under the new Act, certification marks like ISO 9002, SFA, ISI, and collective marks like Khadi are also trade marks.

Thus, anything which distinguishes goods and services of one from others and is used in trading is a trademark.

It would be pertinent to note that celebrity names e.g. Brad Pitt, David Beckham, Jennifer Lopez, perfume scents of Brut, Nivea or even of antiseptic lotions, advertising jingles that make it easy for people to distinguish one brand of goods or one person’s services from those offered by others are also treated as trade marks. For example, the signature tune of Nokia mobile phones, the engine sound of Harley Davidson motorcycles, and domain names such as ferrariworld.com (if they are not used merely as contact information) are also trademarks in those countries which are members of Madrid Agreement or Singapore Treaty. These marks are not recognized as trade marks in India.

The Trade Marks Act, 1999 gives legal protection to goods and services: ‘goods’ includes food, cosmetics, apparels, accessories, and electronics etc. while ‘services’ includes entertainment, telecommunications, transport, and education etc. In relation to goods, the marks are referred to as trademarks (TM) and whereas, in relation to services, they are called service marks (SM).

Registered Trademark and Unregistered Trademark

A trademark is registered when the name of its proprietor is entered in the register and a certificate of registration is issued by the registrar; till then it is an unregistered trademark. It is always advisable to get a trademark registered as it generally gets a better protection. However, Indian law recognizes the first-to-adopt and not the first-to-file system. So, even if a trademark is not registered but was adopted before anyone else, it would get a protection under the Indian Law; the person who adopts it later will be asked to desist from further using the trademark even if he has filed for registration and the person who adopted it earlier has not done so.

Once the trademark is registered, the proprietor can use the ® symbol to indicate that the mark is registered and the registration is subsisting. Many local traders use the sign on their trademark even when it is not registered. However, doing this may attract serious penalties: imprisonment upto 3 years or fine or both. The symbol ® can only be used for a registered trade mark. However, an unregistered trademark or service mark is not precluded from using the ™ / SM symbol, as the case may be.

How to Register

  • Application: A written and signed application is to be made to the registrar in the appropriate trademark registry for registration + payment of fees.
  • Advertisement: Once the application is fully accepted, it is advertised in the journal.
  • Opposition: After the advertisement is made, any person may within three months oppose the registration. Generally, opposition is seen when any prior user exists who is using the trademark or when the trademark is identical with or similar to an existing trademark.
  • Hearing: The registrar will give a hearing to the parties.
  • Registration: If the hearing is decided in favour of the applicant, certificate of registration is issued.

Duration

A trademark registration is valid for ten years from the date of filing and after that it can be renewed again and again for a period of ten years by paying the renewal fee.

Infringement and its Remedy

When any person knowingly and without the permission of the registered proprietor uses a trademark, he infringes a trademark. This is a violation the law. Thus, a person using any trademark e.g. Panasonic, Dunhill, McDonald’s etc. without permission from its respective proprietor(s) infringes the trademark in question. In addition to this, if a person uses a trademark deceptively similar to another established trademark, he infringes the trademark e.g. a person adopting a trademark like Phillipz or Marootee would infringe the trade mark of Philips or Maruti respectively.

Relief

The infringer will be restrained (by an order of injunction) from using the trademark. He may be also asked to pay damages or share the profits earned and to deliver the infringing labels for their destruction. The infringer may also be punished under the criminal law (by imprisonment of six months to three years and fine). The civil and criminal actions may be initiated simultaneously.

The suit ordinarily is to be filed in a district court. Where the trademark is a registered one, a suit for infringement under the trademark law is filed. An unregistered trade mark can also be protected: where the trademark is an unregistered one, a suit for passing off is filed under the Common Law.

Passing off is not same as infringement. In the case of passing off, legal action is not merely for using the mark but for passing off goods by using an identical or a deceptively similar mark.

See Important Concepts in Indian Trade Mark Law

(Amritesh Mishra is an ex-student of ILS Law College, Pune.)

Important Concepts in Indian Trade Mark Law

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Copyright 2008 Amritesh Mishra

1. The concept of Trans-Border Reputation

Consider the case of a renowned brand not trading in India and whose trademark is not registered in India. A domestic trader may think of taking undue advantage of that trade mark and adopting it to prosper. Moreover, he may do this because the original brand may not come to know of such such use which it has not permitted.

Indian Trademark law gives protection to any original trademark which is being used without the permission of its proprietors provided that the trademark is well known in India. That a trade mark is ‘Well known’ can be shown through advertisements made in India in electronic media and print media while the brand was not carrying on business in India, or sales figures world wide in the preceding 5 to 10 years so as to show that the Indian public was aware of the existence of the trademark before the infringer dishonestly adopted it. The rules which apply to unregistered trademarks apply to such foreign trademarks.

Some of the foreign brands which have faced such problems in India include Dunhill, Pfizer, Pizza Hut, Time, Whirlpool, McDonalds, Volvo, Mercedes Benz , Jolen, etc.

2. What cannot be registered

Trademarks like surnames e.g. Sharma, geographical names e.g. London, deceptively similar trademarks e.g. Phillipz, Marootee, those which may hurt religious sentiments, those which designate kind / quality / geographical origin / other characteristics of goods or services, common words, those which are scandalous / obscene, marks which are prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 etc. cannot be registered as trade marks.

3. Acquired Distinctiveness, Well known Trademark

Where a trademark has gained such a reputation that if it is used for any other goods or services, the general public might think that the use of trademark in latter case and person using it in former case are connected in trade, it is a well known trademark. It can be registered on such a ground provided that the registrar is satisfied that it meets the criteria.

Where a common word, surname etc. which cannot ordinarily be registered under the Act has acquired distinctiveness through use, it can get a registration on such a ground provided that the registrar is satisfied that it qualifies for such registration. For example, Cadbury (a Swiss brand of chocolates) is a surname and has been given registration. Similarly, Windows (a trademark owned by Microsoft), which is a common word, is a registered trademark.

4. Assignment, Transmission

Assignment:

The proprietor of a trademark can assign the trademark with or without the goodwill of the business. It has to be done in writing. In case of assignment, some or all the rights get transferred to the assignee. This may be for a specific limited period or forever. All of this depends on the terms of the contract.

Transmission:

It takes place by operation of law, devolution, any other mode which is an assignment. For example, on the death of the proprietor, his right gets transmitted to his legal representatives.

5. Registered User and Permitted User

Registered Users:

The registered proprietor can make any other person a registered user. For this, both of them must apply in writing to the registrar along with their agreement, affidavit, conditions, period etc. When the registrar is satisfied, he may enter the name of the registered user. UTI Bank (now AXIS Bank) was using the trademark UTI as a registered user till June 2007. If a registered user commits any breach of his agreement with the registered proprietor, his name can be removed from the register.

Permitted Users:

These include wholesalers, retailers, franchisees etc. A registered user is also a permitted user. They merely have the right to use the trademark in relation to the actual goods. The use of the trade mark must be backed by a written permission from the proprietor.

6. Intellectual Property Appellate Board (IPAB)

There is an IPAB established by Central Government under the Trade Marks Act. Any person who is not satisfied by any order or decision of the registrar may appeal to IPAB within three months.

7. Power to make rules

The Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) of the Central Government is the appropriate ministry which can make rules to carry out the provisions of the Trade Marks Act, 1999.

(Amritesh Mishra is an ex-student of ILS Law College, Pune.)