Intellectual Property Rights are legal rights governing the use of creations of the human mind. The recognition and protection of these rights is of recent origin. Patents, designs and trademarks are considered as industrial property. The Trade Marks Registry was established in India in 1940 and presently it administers the Trade Marks Act, 1999 and the rules made thereunder. It acts as a resource and information Centre and is a facilitator in matters relating to trademarks in the country. The objective of the Trade Marks Act, 1999 is to register trademarks applied for in the country and to provide for better protection of trademark for goods and services and also to prevent fraudulent use of the mark. The main function of the Registry is to register trademarks which qualify for registration as per provisions of the Trade Marks Act and Rules, and to maintain the Register of trademarks.

1. INTELLECTUAL
PROPERTY RIGHTS
( TRADEMARKS )
Guided by:- Dr.
Balamuralidhar. V
Assistant Professor
Department Of Pharmaceutics
Regulatory Affairs Group
Presented by:-
Shantanu S. Thakre
Pharmaceutical Regulatory
Affairs
JSS College Of Pharmacy,
Sri Shivarathreeshwara
Nagara, Mysore

2. Content :-
A) What is Intellectual Property Rights (IPR).
B) Brief Information.
C) Trademarks.
D) Brief Background.
E) Types.
F) Trademarks Act.
G) Benefits.
H) Introduction about Trademarks Registry.
I) Organizational Structure.
J) Registration Process.
K) Infringement Of Trademark.
L) Cases.
M) Frequently Asked Question.

3. INTELLECTUAL
PROPERTY RIGHTS
 Intellectual Property is the Property, which has been created by
exercise of Intellectual Faculty. It is the result of persons
Intellectual Activities.
 Thus Intellectual Property refers to creation of mind such as
inventions, designs for industrial articles, literary, artistic work,
symbols which are ultimately used in commerce.

4.  Intellectual Property rights allow the creators or owners to have
the benefits from their works when these are exploited
commercially.
 These rights are statutory rights governed in accordance with the
provisions of corresponding legislations.
 Intellectual Property rights reward creativity & human endeavor
which fuel the progress of humankind.
 Intellectual property rights comprises 2 distinct forms:
A) Literary & Artistic Work.
B) Industrial Property.

5. A) Literary & Artistic Works:-
They are books, paintings, musical compositions, plays, movies,
radio / TV programs, performance & other artistic work.
 How are they protected?
Protected by “Copyright’’

6. B) Industrial Property:-
Industrial property describes physical matter that is the product of an
idea or concept for commercial purposes.
 How are they protected?
 By Patented objects
 By Trademarks
 By Industrial designs
 By Trade secrets
 By Layout Designs
 By Geographical Indications

7.  TERMS :-
Copyright:- Copyright protects the expression of literary or
artistic work. Protection arises automatically giving the holder
the exclusive right to control reproduction or adaption.
Patents:- A patent protects an invention. It gives the holder an
exclusive right to prevent others from selling, making and
using the patented invention for a certain period ( typically 20
years from filing date)
Trademarks:- Trademarks means a symbol, logo, sound, color,
design or other device that is used to identify the business or
the product in commerce.

8. Trade Secrets:- A trade secret is a formula, practice,
process, design or compilation of information used by a
business to obtain an advantage over competitors.
Industrial Design:- Protects the form of outward
appearance or aesthetic style of an object. Does not
protect functionally or unseen (internal) design elements.
Geographical Indication:- It is an indication which is
originates from a definite geographical territory. It is
used to identify goods having special characteristics
originating from a definite geographical territory.

9.  WIPO :-
 WIPO ( World Intellectual Property Organization ) was
established by the WIPO Convention in 1967
 The WIPO is a specialized agency of the United Nations.
 It promote the protection of IP throughout the world.
 Its headquarters are in Geneva, Switzerland.
 World Intellectual Property Day- April 26.

10.  Why do you need to protect your Intellectual Property Rights ?
 Company value
 Entry Barriers
 Legal Monopoly
 Avoid freeriding
 Avoid Infringement
 Financial leveraging
 Advance of man kind
 Goodwill
 Counterfeiting
 Works or Art

11.  Registered Intellectual Property Rights:-
With registered IP, you will have to apply to an authority, such as the
Intellectual Property Office in the UK, to have your rights recognized. If
you do not do this, others are free to exploit your creations. Registered
forms of IP include patents, registered trade marks and registered design
rights. Copyright is also registerable.
 Unregistered Intellectual Property Rights:-
With unregistered IP, you automatically have legal rights over your creation.
Unregistered forms of IP include copyright, unregistered design rights,
common law trade marks and database rights, confidential information and
trade secrets.

12. INTELLECTUAL PROPERTY RIGHTS
Registered Unregistered
• Patents • Copyright
• Trade mark • Unregistered Design Rights
• Design Rights • Common Law trademarks
• Database Rights
• Protection for know how under
laws dealing with confidential
information and trade secrets
• Plant varieties
• Geographical Indications
• Design of integrated circuits
• “Passing off” trade legislation
(Domain names)

14. TRADEMARKS :-
Trademarks means a symbol, logo, sound, color, design or other
device that is used to identify the business or the product in
commerce.
Different Symbols are,
Unregistered Trademarks
Symbol
Service Mark Symbol
Registered Symbol

15.  Unregistered Trademarks Symbol:-
The trademark symbol is a symbol to indicate that the preceding
mark is a trademark, specifically an unregistered trademark. It
complements the registered trademark symbol, which is reserved
for trademarks registered with an appropriate government agency.
 Service Mark Symbol:-
The service mark symbol is a symbol used in the United States and
some other jurisdiction to provide notice that the preceding mark is
a service mark. This symbol may be used for service marks not yet
registered with the relevant national authority.

16.  Registered Trademark:-
The Registered Trademark Symbol is a typographic symbol that
provide notice that the preceding word or symbol is a trademark or
service mark that has been registered with a national trademark office. A
trademark is a symbol, word, or words legally registered or established
by use as representing a company or a product.

17.  Brief Information:-
The Trade Marks Registry was established in India in 1940 and presently
it administers the Trade Marks Act, 1999 and the rules thereunder. It acts
as a resource and information center and is a facilitator in matters relating
to trade marks in the country. The objective of the Trade Marks Act, 1999
is to register trade marks applied for in the country and to provide for
better protection of trade mark for goods and services and also to prevent
fraudulent use of the mark. The main function of the Registry is to register
trade marks which qualifies for registration under the Act and Rules.

18.  Different Types Of Trademarks:-
 CONVENTIONAL Trademarks:-
Also known as Traditional Trademarks.
Traditionally trademark can be defined as any mark which is unique
to the product and was identified with the origin of the product.
These products would usually be ,
• Numeral marks
• Letter marks
• Word marks
• Picture marks

19. • Numeral Marks :- You can use the number as a brand for your
products or services, you may be able to obtain a trademark
registration for the number
For example, The number “13” is currently trademarked for a
line of stapling machines. i.e the owner of the trademark uses the
number 13 to brand all their stapling machines, just like Nike uses
the term Nike to brand their shoes and clothing items.

20. • Letter Marks :- Lettermarks are typographic in nature comprised of
letters that are usually company initials. Lettermarks are effective at
streamlining any company / brand if they have long name. It is very
important that the logo is not just theme best but also legible when
printed on business cards.
The trademark act 1999 evidently recognizes a trademark constituted by
a “letter”. Letters that are descriptive, customary in the trade or devoid
of any distinctive character are not registered as trademark.

21. • Word Marks :- You can trademark a word that identifies your
company or your products. When you trademark a word, you give
a person or company exclusive rights to connect one brand with
that word.

22. • Picture Marks :- The word image mark relates to trade dress
protection. Section 43(a) of the Lanham Act5 of USA defines trade
dress as "almost anything at all that is capable of carrying meaning".
The purpose of trademarks and trade dress is to prevent consumers from
likelihood of confusion from buying one product under the belief that it
is another. It establishes the link between the product and the source.
For example, Apple Inc. recently secured the registration over the
design of its flagship Apple Stores as trade dress.
First time in India the term "image mark" has been used when Indian
Hotels Company Limited (IHCL) obtained the trademark for the Taj
Mahal Palace Hotel and Tower Wing Exterior (image) on 19th June, 2016.

23.  UNCONVENTIONAL Trademark:-
An unconventional trademark is a type of trademark which does
not fall into the category of conventional or traditional trademarks.
An unconventional trademark must possess the communicative
ability of being able to differentiate the goods and services of one
person from that of another. The mark should have the potential to be
distinctive; it must indicate source and thereby distinguish the goods
or services from others.
An unconventional trademark is mainly in the form of
• Colour Trademark
• Sound Trademark
• Holograms Trademark
• Motion Trademark
• Scent Trademark
• Packaging Trademark

24. • Color Marks:- In order to obtain trademark registration for a color, the
color or combination of colors must be capable for distinguishing the
goods or services of one entity from those of other entities.
Single color trademark -Single color trademark registrations are granted
only in very peculiar cases, as most of the average consumers are not in the
habit of making assumptions about the origin of goods and services based
solely on their color or the color of packaging. However, a single color may
be registrable as a trade mark if it is very unusual and peculiar in a
business and is recognized by businesses and consumers alike that it serves
as a badge of origin for that class of goods.

25. Example :-

26. Combination of Color :- A combination of colors may be registrable, if
they are unique and can be used to distinguish good or services from a
certain source. If the colors are presented as a figurative mark, then as few
as two colors could be accepted. However, if the colors are simply the
colors of the packaging of the products, then they are harder to be
trademarked. To obtain color trademark registration for a combination of
colors that are applied to the goods or their packaging, it will be necessary
to prove that the colors are likely to strike the relevant consumer as an
indication of trade source.

27. For example, it is unlikely that the average consumer of washing
soaps would view color combinations such as blue and white as an
indication of trade source – as many of the washing soaps use such
colors. Hence, to obtain color registration which are merely applied
to the goods or their packaging, strong evidence should be
presented to overcome any objection raised in the Trademark
Examiner report.

28. • Sound Trademark :- A sound mark is a non-conventional
trademark. Here sound performs the trademark function of uniquely
identifying the commercial origin of products or services. Sounds
can serve to identify the source or trade origin of a product or
service. Under most Conventions and statutory provisions the
definition of trademark either covers sound as a trademark, or does
not exclude such marks. Examples of Sound Marks – four-note bell
sound of Britannia Industries, default ring-tone of a Nokia mobile
phone, sound of the lion's roar at the beginning of an MGM-
produced film Corporation, Yahoo's yodel, thunderous sound of
Harley-Davidson etc.. This approach is much easier than the prior
one where it was quite difficult to register sound marks.

29. Examples :-

30. • Hologram Trademark :- Holography is a photographic technique that
records the light scattered from an object, and then presents it in a way that
appears three-dimensional. A hologram is a cross between what happens when
you take a photograph and what happens when you look at something for real.
Like a photograph, a hologram is a permanent record of the light reflected off
an object. But a hologram also looks real and three-dimensional and moves as
you look around it, just like a real object. That happens because of the unique
way in which holograms are made. The major difficulty with regards to
Hologram marks is its difficulty to prove as the source identifier of the
product. American Express owns a trademark registration in USA for a
hologram that is applied on the surface of its credit card. India by far hasn’t
received any application for the registration of hologram mark.

31. Example :-

32. • Motion Trademark :- A motion mark may be an animation
created using a computer program, or some other moving object
which exists in the real world. In particular, such a mark may be in
the form of a gesture made by a person using various parts of the
body, especially the hand. Submitting a motion trademark involves
the same criteria of assessment as do other forms of trademarks,
but motion marks remain but a small fraction of the trademark
submissions made in the European Union.

33. • Scent Trademark :- In rare cases, scents and flavors may be
registerable, but like product color and shape, they are never
inherently distinctive. The TTAB ( Trademark Trial and Appeal
Board) has noted that consumers are predisposed to view scents and
flavors as “mere attributes of the product” and not the source of the
product. As such, there is a high bar for flavor and scent marks,
requiring a substantial amount of evidence to show acquired
distinctiveness. Only a few scent marks have been granted a
trademark registration. One of the earliest scent marks granted was
for the smell of floral fragrances for sewing thread, where the
products were not naturally known to be scented and the feature
was emphasized in advertising.

34. There are several examples of unsuccessful attempts at trademarking a
taste, including an orange flavor for antidepressant pills, which was
found to be non-registerable as functional, because the taste masked
the otherwise unpleasant drug taste.

35. • Packaging Trademark :- One of the ways that companies add to their
brand recognition is by trademarking distinctive packaging for their
products. Memorable packaging can crystallize your product and your
brand in the mind of your customer. Whether it’s a shipping box spotted
like an animal, a unique opening or closing feature of a package, or a
stylized flap that opens to reveal a viewing window in the package so that
customers can see the product inside, packaging can set your product apart
from the products of your competitors. It is important to note that if you
do obtain trademark protection on your product packaging, the protection
is limited to only the packaging that your product is contained in. It does
not apply to the product held within the package.

36. Separate trademark, or other intellectual property rights, such as a patent
or copyright, will need to be obtained on the product if you want the
intellectual property behind your product to be legally protected from
unauthorized use.

37.  Trademark Act:-
Major changes that have taken place in the Trade Marks Act, 1999 (in
force since 15th Sept. 2003) which has replaced the earlier Trade &
Merchandise Marks Act, 1958 (now repealed) includes the following:
A) It has enlarged the definition of trade mark. It now includes shape
of goods, packaging and combination of colors which can adopted as a
trade mark.
B) The Act provides for registration of trade mark for services in
addition to goods
C) It provides for a single Register of Trade Marks with simplified
procedures for registration.

38. D) The Act has simplified the procedure for registration of registered
user (licensing of registered trade mark)
E) Provides for registration of collective marks owned by association
of persons.
F) Provides for establishment of an Intellectual Property Appellate
Board for speedy disposal of appeal from Registrar orders and
decision.
G) Transferred the final authority for registration of certification of
trade marks to the Registrar.
H) Provides for enhanced punishment for the offences relating to trade
marks on par with the Copyright Act, 1957 to prevent the sale of
spurious goods.

39. I) Provides for enhanced punishment for the offences relating to trade
marks on par with the Copyright Act, 1957 to prevent the sale of
spurious goods.
J) Prohibits use of some one else’s trade marks as part of corporate
names or name of business concern.
K) Provides for filing of a single application for goods or services
falling in more than one class (multi class filing)
L) Increased the period of registration and renewal from 7 yrs to10
yrs.

40. M) Has made some trade mark offences cognizable
N) The Act has amplified the powers of the court to grant ex parte
injunction in certain cases
O) There are other related amendments to simplify and streamline
the administration of the trade marks law and procedures in the
country.

41.  Benefits:-
 It identifies services or product and its source guarantee its
quantity.
 Advertisement of services product.
 Inform consumers that product with the same trademark originate
from the same source.
 All consumers to distinguish my goods from another by affixing a
trademark to the goods.

42.  Introduction about Trademarks Registry:-
 After accession to the Madrid Protocol, a treaty under the Madrid
System for international registration of trademarks, the Trade Marks
Registry also functions as an office of origin in respect of applications
made by Indian entrepreneurs for international registration of their
trademarks and as an office of the designated Contracting party in
respect of international registrations in which India has been
designated for protection of the relevant trademarks.
 The Head Office of the Trade Marks Registry is at Mumbai and branch
offices are at Ahmedabad, Chennai, Delhi and Kolkata.

43.  For the purposes functions related to international applications and
registrations under the Madrid Protocol, an International
Registration wing is set up in the Head Office of the Trade Marks
Registry at Mumbai.
 Apart from the above, the Registry has to discharge various other
functions like offering preliminary advice as to registrability;
causing a search to be made for issue a certificate under Section
45(1) of the Copyright Act, 1957 to the effect that no trademark
identical with or deceptively similar to such artist work as sought to
be registered as a copyright has been registered as a trademark;
providing public information and guidance to the public on the
subject; providing information to various government agencies
including Police,

44. Central Excise personnel, Public Grievance Redressal,
maintenance of top class IP library, the production of annual
statistical report, production of official Trade Marks Journal in
electronic form and submit an Annual Report to Parliament.
 The Controller General of Patents, Designs and Trade Marks
heads the TRADE MARKS Registry offices and functions as the
Registrar of TRADE MARKS. He, from time to time, assigns
functions of the Registrar to other officers appointed by the
Central Government and such officers also function as Registrar
in respect of matters assigned to them.
 Presently all the functions of the Trade Marks Registry are
performed through an automated Trade Marks System. The
Central Server of TMR is at Intellectual Property Office (IPO)
Building in Delhi and Disaster Recovery server is at IPO,
Mumbai.

45.  All branches of the Trade Marks Registry are connected to the main
server in Delhi with Virtual Private Network (VPN). All the actions
done by the office staffs through the TMS are recorded in the central
server on real time basis.

46.  Organizational Structure:-

47. Registration Process :-

51.  Infringement of Trademark :-
Registration of a trademark is a prerequisite for initiating an
infringement action. The following essential conditions must exist for
initiation of an infringement action:
 The allegedly infringing mark must be either identical or deceptively
similar to the registered trademark;
 The goods / services in relation to which the allegedly infringing
mark is used must be specifically covered by the registration of the
registered trademark;
 The use of the allegedly infringing mark must be in the course of
trade; and
 The use must be in such a manner as to render the use likely to be
taken as being used as a trademark.

52. A registered trademark is also infringed by use of a mark when because
of:
 Its identity with registered trademark and similarity with goods /
services covered by registration; or
 Its similarity with registered trademark and identity with goods /
services covered by registration; or
 Its identity with registered trademark and identity with goods /
services covered by registration
Is likely to cause confusion on the part of the public (in case 3 above,
confusion is presumed), or which is likely to have an association with
the registered trademark.

53.  If an identical or similar mark is used with respect to goods or
services which are not similar to those for which a registered
trademark is registered, such use amounts to infringement if a
registered trademark has reputation in India and the use of the mark
without due cause takes unfair advantage of or is detrimental to the
distinctive character or repute of the registered trademark.

54.  CASES :-
 STIMULIV vs. STIMULET – Bombay High Court Mulls
Infringing Similarity between Two Registered Marks
Franco Indian Pharmaceuticals Pvt. Ltd. ('Plaintiff') filed an
infringement suit against Corona Remedies Pvt. Ltd. ('Defendant')
for unauthorized passing-off of the Plaintiff's mark "STIMULIV"
by open advertisement of the registered mark "STIMULET" by
the Defendant.

55. The counsel for the Defendant argued that the products of the parties are
different as the one sold by the Defendant is an allopathic preparation for
the treatment of breast cancer or infertility, while the Plaintiff's
formulation is Ayurvedic used as liver supplement. Additionally, while
relying on Section 28 (3) of the Trade Marks Act, 1999, the Defendant
argued that when there are two registered proprietors of trademarks which
are identical, neither party shall have the exclusive right to use their mark
against the other.
The Bombay High Court ('Court') applied two distinct approaches while
assessing the deceptive similarity:
• One with respect to the common perception upon seeing the
marks; and
• Second based on the Defendants conduct.

56. On the first account, the Court noted that because of the niche segregation
in goods of the parties, even the slightest amount of confusion shall not be
permitted. On the second account, the Court noted that the moment the
Defendant sought the registration of the mark "STIMULET" there was an
implicit acceptance that the mark as a whole is distinctive and capable of
being distinguished, therefore the Defendant could not have argued that the
word "STIMUL" is common to the trade. Resultantly, the Court observed
that the two marks are deceptively similar.
The Court observed that when there is a conflict between two registered
proprietors, the evaluation of rights in common law was essential to enable
the Court to determine whose rights were better and superior.

57. In view of the same, the Court noted that the registration and the use of
the Plaintiff's mark is greater by at least two decades coupled with the
fact that its sales are incomparably higher than that of the Defendant.
Thus, an injunction order was issued against the Defendant for usage in
the mark 'STIMULET’.

58.  Ex-parte interim injunction issued against the mark
"CINEFONES"3
While issuing an ad-interim injunction against the use of the mark
'CINEFONES', the Bombay High Court ('Court') observed that Cinefones
Systems ('Defendant') attempted to pass off the trademark of Cinefones
('Plaintiff') as a whole and also illicitly put to use the Plaintiff's label on
which it has copyright protection. The Plaintiff has been using the mark
'CINEFONES' since 1947 for audio-visual equipment including
projectors, screens, etc. which was subsequently registered in 1979 under
Class 9 for cinematographic hardware products.

59. Peculiarly, the Plaintiff used to carry on its business from a rented
premise till 1992 post which the landlord let the premise out to the
Defendant. Thereafter, the Defendant began to advertise its goods basis
the Plaintiff's billboard over the same premise. The Court observed that
the Plaintiff had previously filed opposition and rectification
proceedings against the marks of the Defendant and hence the
Defendant not only had constructive but actual notice of the Plaintiff's
prior registration. The Court issued an ex-parte ad-interim injunction
against the Defendant restraining them from advertising the mark
'CINEFONES' in any manner.

60.  Himalaya Drug Company Secures a Win for IP Protection.
The Himalaya Drug Company and others ('Plaintiff'), filed a suit before
the High Court of Delhi ('Court') seeking injunction against the
infringement by Ashok Kumar & others ('Defendant'). The Defendant
was involved in infringement of the 150 registered trademarks
"HIMALAYA" across multiple class and 82 domain names of the
Plaintiff. Since 1930, the Plaintiff had registered rights in the trademark
for Medicinal, Ayurvedic and Pharmaceutical preparations.

61. The Plaintiff claimed that their logo constituted original artistic work
under the Copyright Act, 1957. The Plaintiff further contended that
the Defendant is conducting fraudulent activities by offering 'Business
Opportunities' and distributorship of the Plaintiff's products through
its rogue websites like (www.himalayapharmaci.in). Despite operating
over seven websites, the Court noted that the exact identity of the
Defendant could not be ascertained. Notably the plaint also contained
information regarding emails, pamphlets, franchisee application
forms, fraudulent franchisee agreements, products lists, etc. of the
Defendant, using the logo of the Plaintiff.

62. The Court further observed that the total investment sought by the
Defendant on its website for franchising, ranges from INR 10,00,000
to INR 20,00,000. Surprisingly, each of the fraudulent distributorship
agreements executed by the Defendant were signed by Mr. Philipe
Haydon, who was the retired Chief Executive Officer (CEO) of the
Plaintiff. Though the registrant detail of the domain names of the
Defendant were inaccessible even by the private investigator of the
Plaintiff.

63. Accordingly, the Court was of the opinion that the Defendant illegally
sought to capitalize the goodwill of the Plaintiff without any due
authorization, and further issued an ad interim injunction restraining
the Defendant from using the impugned trademarks or the domain
names of the Plaintiff in any manner. The Court also ordered the
bank(s) of the Defendant to not allow any withdrawals from their
accounts(s) save and except with the leave of the Court.

64.  Frequently Asked Questions :-
 Who can Apply?
Any person claiming to be the proprietor of a trademark used or proposed to
be used by that person can file an application for registration. The
application may be made in the name of the individual, partner of a firm, a
company, any government department, a trust, or even in name of joint
applicants. Domestic and international applicants are treated at par. An
application can also be filed on behalf of a company that is about to be
incorporated or registered under the Companies Act, 1956.

65.  Can the Registration Process be Expedited?
After receipt of the official number of an application, the applicant
may request an expedited examination of a registration application,
together with a declaration stating the reason for the request and a
payment of five times the application fee. If the Registrar of
Trademarks is satisfied with the reason, the examination of the
application is expedited and the examination report is issued within
three months of the date of such request. If such a request is rejected
after the hearing, the fee paid is refunded.

66.  What is the Term of Registration?
The registration is valid for ten years and is renewable for a subsequent
period of ten years. Non-renewal leads to a lapse of registration. However,
there is a procedure whereby a lapsed registration can be restored.
 How can the Registration of a Trademark be Cancelled?
An application for cancellation or rectification of registration of a
trademark can only be filed by the aggrieved person (e.g. prior users of the
mark). Such an application must be filed with the Registrar of Trade
Marks or the Appellate Board.

67.  Reference:-
1) https://ipindia.gov.in/trade-mark-agents.htm
2) https://www.wipo.int/portal/en/index.html
3) https://assets.publishing.service.gov.uk
4) https://iprgroup.info
5) https://www.conventuslaw.com/report/india-non-
conventional-marks/
6) https://patentsavers.com/2016/05/trademark-protection-
product-packaging/

68. THANK YOU