NON-REGISTERABLE MARKS

Priyanga. G August 1,

2009

TRADE MARK- “Who makes this product?”

One of the members of the IP family.

Trade Mark includes a device, word, letter,

numeral, sound, smell, shape of goods,

packaging, combination of colors or any

combination therefore allowing consumers

to distinguish between goods originating in

different sources.

A variety of intangible creation of human

imagination.

Trademark- forever.

TRADEMARK

World's first Trademark

Mark -

Use since - 1600Registered - 1876Owner - Bass & coCountry - UKGoods - Alcoholic Beverages

Requisites of a Trade Mark:

• Marks should have a distinctive feature.

• Marks should be graphically representable.

• Marks should be capable of distinguishing the goods/services of one trader from those of others

WHAT CAN BE A TRADE MARK?

Conventional set of Trademarks: Letters - Eg. M for McDonalds, K

for Kellogg’s Numerals - Eg. 555 Words - Eg. APPLE Logo - Eg. Picture - Eg.

Symbols - Eg.

Combinations of one or more of these elements - Eg.

Combination of colours or even

a single colour in combination with a word or device.

Shape of goods or their packaging.

Eg. Pepsi Bottle

Sound marks when represented in conventional notation or described in words by being graphically represented.

Eg: YAHOO’s sound mark

Non- Conventional/non- Traditional Trade Marks

NON-REGISTRABLE MARKS

A mark by its very

nature deceives the public or cause confusion.

Marks that are

contrary to any law.

A mark which is likely

to hurt the religious susceptibilities.

A mark which

contains scandalous or obscene matter.

The shape of goods

which is purely functional of necessary to obtain

technical result or

which gives substantial value to the goods.

The mark consists of

or comprises a name, portrait or signature

identifying a particular living individual.

 Contd...

Chemicals names and International Non–

proprietary names.

Surnames, personal names or other

common abbreviations are non- registrable.

Marks when devoid of distinctive character

or not capable of distinguishing.

Descriptive marks are not registerable.

Generic names are not registrable.

Identical or Similar marks are non-

registerable.

 

THE MARK WHEN IT DECEIVES THE PUBLIC OR CAUSE CONFUSION.

Eg: AQUAFENA for AQUAFINACase Study 1:

1. S.M. Dyechem Ltd v Cadbury (India) (Ltd)- The marks PICNIC & PICNIK were in dispute

2. Glaxo Smith Kline Pharmaceuticals Ltd. v. Unitech Pharmaceuticals Pvt. Ltd.

The mark FEXIM for PHEXIM were in conflict.

Test to determine similarity:

1. Nature of the marks2. Degree of resemblance- visual, phonetic and also

similarities in ideas3. Nature, purpose and character of goods4. Class of purchasers5. Trade channels

Case Study 2:

• Use of the word “Patent” or “Trademark”:

Case: Anneliese Hackman’s Appln. (1963) 63 Bom LR 650, the use of the word “PATENTEX” over contraceptive pills was held to be deceptive

• Marks that guarantee: Case: Vitasafe Tm (1963) RPC 256-

“Vitasafe” for vitamin preparation was refused on the ground that it guarantees which is then interpreted as

deceptive.

• Marks containing false or misleading matters:

Case: Eno v. Dunn- Marks which are not strictly true.

Contd….

• Marks used in illegal business.

• Marks suggesting geographical origin.Eg: Scotchlite

• Mark that consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent. (Section 14 of the Trademark Act, 1999).

Cases: 1. Jane Austen for toiletries (Jane Austen Tm

2000)2. Diana, Princess of Wales (Diana, Princess

of Wales, Tm 2001)

THE MARK WHEN IT IS LIKELY TO HURT THE RELIGIOUS SUSCEPTIBILITIES

For example:

Attukkal Bhagavathy Temple issue- The mark which had a temple deity’s picture and the title “Sabarimala of Women” as a under class 42 over temple services, worship services etc., was highly contended on the ground that a mark shall not be registered as a trade mark as it contains matter likely to hurt the religious susceptibilities of the Hindu’s.

“The pope smokes the dope” over T-Shirts

Jesus Jeans over clothing

The mark if consists of scandalous or obscene matter

"Scandalous," means "shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation."  

Political imagery Religious terms and icons Race, Gender, and Sexual

orientation Vulgar Illegality

POLITICAL IMAGERY:

Portrait and signature “Grover Cleveland” for cigars (Banner Cigar Mfg. Co., 1909 C.D. 9, 10-) Queen Mary on underwear-(Martha Maid Mfg. Co., 37 U.S.P.Q. (BNA) 156 (Comm’r Pat. 1938) Obama Bin Laden

RELIGIOUS TERMS AND ICONS:

• MESSIAS for wine and brandy. In re Sociedade Agricola E. Comerical Dos Vinhos Messias, S.A.R.L., 159 U.S.P.Q.(BNA) 275, 275-76 (T.T.A.B. 1968).• SENUSSI for cigarettes

RACE, GENDER, AND SEXUAL ORIENTATION:

• “Washington Redskins” - Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 96(D.D.C. 2003)

• DYKES ON BIKES• DE PUTA MADRE

VULGAR:

• BULLSHIT, REALLY GOOD SHIT in connection with any goods/services was held to be scandalous because the term “shit” in it is vulgar.ILLEGALITY:

• The mark W.B.WIFE BEATER for clothing was refused on the ground the term clearly evokes connotation of spousal abuse and held scandalous.

Marks contrary to any law

1. Marks prohibited under the Emblems and Names (Prohibition of Improper Use) Act, 1950 Example: Name, Emblem or Seal of UNO, WHO,

Indian Flag etc.,

2. Use of the marks like I.S.I., I.S.S are prohibited under Indian Standard Institution Act, 1954 .

3. B.P., I.P., - Under Drug and Cosmetics Rules 1945.

The mark should not be signs which consist exclusively of:

1. Shapes which results from the nature of the goods themselves; or- For example, a picture an umbrella cannot be considered as a registrable label in relation to umbrella.

2. Shape of goods which is necessary to obtain a technical result

3. Shape which gives substantial value to the goods

Chemicals names and international non –proprietary names

cannot be a Trademark

Case Laws:

• Pharma Research v. Jam (1986) IPLR 16 (TMR)The mark “OLEIN” was refused on the ground

that it is similar to the chemical name “OLIN”

• ICI v. Cipla 1980 IPLR 90The mark “AIENOLAR” for medicinal

preparation refused being similar to the non –proprietary name“ATENOLOL”

Surnames, personal names or other common abbreviations are non-registrable.

• “Fantastic Sam’s” over hair dressing services was refused on the ground that the word ‘Fantastic’ is laudatory and the ‘Sam’ as a common name used by the Christians as a trading style. Fantastic Sam’s service mark (1990)RPC 531

• But can be registered when acquired distinctiveness.

Eg: Saravana Stores with Application No. 1027142

Marks when devoid of distinctive character or not capable of distinguishing.

• Laudatory epithets are open to all in the world and cannot be registered. Eg. Super, Good etc., these words can never lose their primary meaning.

• Name of the Article patented cannot be a Trade Mark

Eg. Synoptophone for optical instruments was refused, as it is a special type of optical instrument that has been patented.

Marks when descriptive of characteristics or qualities of goods or services.

i. SHARP for televisionsii. DIGITAL for computersiii. WINDOWS for windowing software

Defense available under the Act:• Long term use, or• Large amounts of advertising and publicity.

Generic names are not registrable.

• MODEM has been derived from “modulator- demodulator • WWW has been derived from “world wide web”

THANK YOU