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”
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