Friday, 15 September 2017

Why You Should Register Your (Well-Known) Marks in India- Now!

The enactment of the Trade Marks Rules, 2017, has paved the way for formal registration of “well-known” Marks in India. Although India did recognise Well-Known marks earlier (through its Trade Marks Act, 1999, which came into force on September 15, 2003), there was no provision for their formal registration. After the 1999 Act, the Indian Trademark Registry made efforts to consolidate marks that, over a period of time, were recognised as “well-known” by various Courts, Tribunals, Registrar etc. and made available this list online which has 81 “well-known” marks. 

Going by the list, Trademark “Philips” seems to have been the first trademark that was recognized as a well-known mark in India back in 1983. However, it was the famous case of “BENZ” by Delhi High Court which made Well-known marks concept well known and accepted in India (1994 PTC 287).

WHY WELL-KNOWN MARKS?

Almost every brand is created with the aim of making it a top brand; however, only a few survive the test of time and of those few, just a fraction makes it to the big league.
Looking back in history reveals that brands such as Toyota, Microsoft and Apple, that are today globally-recognised, took several years to enter the league. By contrast, brands such as Google, Facebook and WhatsApp made it to the list in much shorter timelines. Of-course, the nature of their business, the increasing pervasiveness of the internet and the era of rapid globalisation also played a role in these brands achieving global recognition much faster.

There surely are certain benefits of “well-known marks”, the most important of them perhaps being protection from dilution, provided of course, that they continue to deliver superior, differentiated products and services.

WHAT IS A WELL-KNOWN MARK?

Section 2(1)(zg) of The Trade Marks Act, 1999, defines a “well-known trade mark” in relation to any goods or services, as  “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 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.”

What that means is - well-known marks are generally those that are acknowledged to have a high degree of reputation even beyond the areas of business of the proprietors of the marks. Such marks have attained such a degree of goodwill amongst general public (within a particular jurisdiction or even beyond) that even the use of such mark in relation to goods/services it is not generally associated with, would remind general public of the original source/product/service/proprietor. 

WHY DID INDIA AMEND ITS LAW TO PROVIDE PROTECTION TO WELL KNOWN MARKS?

India being a signatory to the TRIPS Agreement was obligated to amend its Trademark law by providing protection to well-known marks.

Articles 16.2 and 16.3 of the TRIPS Agreement contain certain provisions on well-known marks, which obligate member States to refuse or to cancel the registration, and to prohibit the use of a mark conflicting with a well-known-mark.

PROCEDURE FOR REGISTRATION OF WELL-KNOWN MARKS

Below we try to address a few questions like 'how to register a well known mark' and 'how much does it cost' to register a trademark.

Application for registration of Trademark:

As per Rule 124 of the Trade Marks Rules, 2017, any person may file a request for determination of a trade mark as well-known (interesting to note that here it has been avoided using the term “registration”, using instead the word “determination”). Each such request shall be accompanied by:
  1. A statement of case describing the applicant’s rights and claim over such mark being a well-known mark;
  2. Evidence in support of applicant’s rights and claims;
  3. Details of a court order, if any in which such mark was recognised as a well-known mark; and
  4. Requisite fee (INR 1, 00,000.00).
The Registrar may call for further such documents/information as he thinks fit for the determination of a mark as “well-known”.

Prosecution & Registration:

If the application is found in order, the Registrar may, before determining a trade mark as well-known, also invite objections from the general public. Such objections must be filed within thirty days from the date of invitation.

Notwithstanding the above, if it is found that a trade mark has been erroneously or inadvertently included in the said list, the Registrar may, at any time, remove a trade mark from the list of well- known marks, after hearing the concerned party.

WHO SHOULD REGISTER?

All proprietors who believe their marks to be “well-known” marks must consider making an application for determination of their mark as a well-known mark.

Further, proprietors of the marks that have been recognised by a Court of Law or Registrar as a well-known mark must also consider this registration with the Trademark Registry.

WHY TO REGISTER?

Once a trademark is determined by the Indian Trademark Registry to be as a well-known mark, the proprietor can be assured that no one else can register an identical or a similar mark in any of the 45 classes of goods and services in India. Registration would definitely safeguard the proprietors (of well-known marks) from the trouble of opposing every identical/similar mark every time a third party tries to register or to contest the registration of marks which may have been erroneously registered in any of the 45 classes.

HOW IS DETERMINATION/REGISTRAION OF A “WELL-KNOWN” MARK MADE?

As per Section 11(6) of the Trade Marks Act, 1999, The Registrar shall take into account several factors in determining whether a mark can be recognised in India as “well-known”. Such factors include the following:
  1. the knowledge or recognition of that mark amongst the relevant sections of the public in India as a result of promotion of the trade mark;
  2. the duration, extent and geographical area of promotion/use of the trade mark;
  3. the duration and geographical area of any registration/application of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
  4. successful enforcement of the trade mark to such an extent that such trade mark has been recognised as a well-known trade mark by any court or Registrar.
Further, Section 11(7) of the Act states that the Registrar shall, while determining whether a trade mark is a “well-known” mark for the purposes of sub-section (6), also take into account:
  1. the number of actual or potential consumers of the goods or services;
  2. the number of persons involved in the channels of distribution of the goods or services; and
  3. the business circles dealing with the goods or services, to which that trade mark applies.
Section 11(8) of the Act provides that where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court of Law or the Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.

CONDITIONS NOT NECESSARY FOR DETERMINATION AS A WELL-KNOWN MARK

Certain myths and misconceptions prevail that in order to be a well-known mark, the mark has to fulfil various other criteria- for example, it should be registered/used in India etc. However, Section 11(9) of the Act clarifies that for determination of a mark as a well-known mark in India, the following conditions are NOT necessary to be fulfilled:
  1. that the trade mark has been used in India;
  2. that the trade mark has been registered;
  3. that an application for registration of the trade mark has been filed in India;
  4. that whether the trade mark is well known in; or has been registered in; or in respect of which an application for registration has been filed in, any jurisdiction other than India; or that the trade mark is well-known to the public at large in India.
CONCLUSION

By making provisions for registration of well-known marks, India has made it easier for entities with well-known marks to safeguard their rights. As many other countries are still contemplating to bring about such legislations by this amendment India has definitely taken the lead here. Although a few organisations have questioned the validity of the provisions relating to registration of well-known marks, none has yet challenged them in a court of law. Proprietors of reputed brands now have an opportunity to register their marks as “well-known” marks in India in order to not only safeguard their marks against unauthorised and unlawful use but also to protect them from the risk of dilution by inferior product/services. 

This article was originally published at http://www.foxmandal.in/why-you-should-register-your-well-known-marks-in-india-now/.   Please visit http://www.foxmandal.in/blog/ for more interesting reading.

Thursday, 7 September 2017

David v Goliath in the trade marks world

Bentley Motors has been involved in a trade mark dispute for many years, the other party being a company called Brandlogic which owns a number of trade marks of which the important verbal part is BENTLEY 1962, which have been registered for clothes since as long ago as 1982.

Bentley Motors has been using its trade mark on a small range of clothes for nearly 20 years. The prices of the clothes are, other things being equal, comparable to the price of the cars - a polo shirt will set you back £75, according to the Financial Times. Not happy about someone else using the name, Bentley Motors sought to have the Brandlogic trade marks declared invalid or revoked on grounds of non-use for five years. Although they succeeded in part, they were unable to clear the way entirely, and even an appeal (to the Appointed Person) left Bentley Motors in difficulties.

Now Bentley Motors have filed an EU trade mark application. They might have been hoping that this way they might do without Brandlogic noticing, because on the face of it their earlier trade marks will be a barrier to the new application. I've done it myself, usually the other way round - applying for a UK trade mark so the owner of an earlier EU trade mark wouldn't notice. If so, it hasn't worked. The reason the matter has been in the press recently is because Brandlogic's trade mark attorneys have switched sides, in a perfectly proper manner within the rules (although that's not to say that the rules, or the regulator, are right). Inevitably, they will want to act for the client with the biggest chequebook - that's the way the legal industry works (oh, you thought it was a profession?).

What is deplorable here is not that a company should be trying to maximise the power of its trade marks. As car companies go into making clothes - as everyone goes into making clothes, I suppose - trade mark registrations have to get wider. Often these conflicts are dealt with in a very heavy-handed way - the Goliath tries to bully David. I've seen it happen to my own clients and it isn't nice. But Goliath is answerable to its shareholders, and they are going to insist on trying every trick in the book to overcome the nuisance earlier trade mark, regardless of the merits. Often might alone (or at least a big chequebook) is enough. And that isn't a sound basis for a just trade marks system.

Sunday, 3 September 2017

Nottingham Law School graduation

I enjoyed the hugely gratifying experience of seeing many of my students from this past year receive their degrees a few weeks ago. Thanks to the wonders of modern technology it's all there on YouTube. And the vote of thanks at the end is great.

I can't begin to say how much they taught me!

Ferrari's TESTAROSSA trade mark under threat

According to international IP firm Novagraaf, Ferrari face a challenge to their registration of the trade mark TESTAROSSA. Autec AG of Nuremberg has applied to register an identical trade mark (in Germany, presumably) for bicycles (including e-bikes), and Ferrari's opposition has been rejected by the German courts on the grounds that the Italian manufacturer has not used its trade mark for more than five years. Non-use for five years or more makes a trade mark registration liable to revocation, and Autec is now seeking to have Ferrari's German and EU trade marks revoked.

Ferrari had argued that the trade mark was in use, as it was providing maintenance and repair services for the Testarossa - which it stopped making in 1996. But the court, crucially, held that in fact those services were marketed under the Ferrari brand not TESTAROSSA.

That seems quite correct to me. Trade marks perform several functions, not just the traditional origin-indicating one, but essentially a trade mark owner must use a trade mark to indicate the origin of its goods and services. TESTAROSSA in connection with servicing and repair is an indication of the purpose of the services, and should not support the registration of the trade mark for cars. There are 11 various registrations in Ferrari's name for TESTAROSSA (and quite a few in other people's names, hardly surprising given that the word could just as well be used for many different goods), but none of them are for services. Replacement parts are covered, but I suspect that the objection that they are sold under the Ferrari name not TESTAROSSA (and, if it be used at all, that designation is purely descriptive of the purpose of the goods) would apply here too.

A cautionary tale for owners of "heritage" (that is to say, old) trade marks. In the UK, perhaps they don't need to worry so much because an action for passing off might lie even if the trade mark were liable to revocation, but far better and cheaper to keep the trade mark in use, somehow. When the modern Testarossa was launched in 1984 its chosen name harked back to the 1957 Ferrari 250 sports racing car, and the name could similarly be recycled now to maintain protection. 

Friday, 30 June 2017

Intellectual property and competition law

Always an interesting topic ...

Hemphill, C. Scott, Intellectual Property and Competition Law (May 9, 2017). Forthcoming, Oxford Handbook of Intellectual Property Law (Rochelle C. Dreyfuss & Justine Pila eds. 2017). Available at SSRN: https://ssrn.com/abstract=2965617 or http://dx.doi.org/10.2139/ssrn.2965617

And another article of interest:

Lim, Daryl, Retooling the Patent-Antitrust Intersection: Insights from Behavioral Economics (April 14, 2017). 69 Baylor Law Review 124 (2017). Available at SSRN: https://ssrn.com/abstract=2953031

Thursday, 29 June 2017

"The Great Intellectual Property Trade-Off"

Tim Harford ("The Undercover Economist") is, I find, always worth reading, and here is his take on the intellectual property system via the BBC (the website article is based on a programme on the World Serve). Nothing new in saying that there is a trade-off involved in the intellectual property system, of course, we have known that for a long time, but it's good to see it aired in this way. The chilling effect of James Watt's steam engine patents is interesting, and I hadn't fully appreciated that before (nor that Watt also suffered because of other patents). Remember though that the patent system was in its infancy in those days, and modern patent legislation is unlikely to allow this to be repeated.

Mr Harford cites "the economists Michele Boldrin and David Levine". ("The economists"? Surely there are more than two?) Their book Against Intellectual Monopoly can be downloaded from here. They are from Washington University of St. Louis, Economics Department, and have done a lot of work on the economics of intellectual property (though what bears a date seems to be ten or more years old). The idea of the book is intriguing, but I am somewhat concerned about the lack of information about publishers - of course self-publication is perfectly respectable, but I'd like to see something objective to enable me to judge whether to spend time reading it (or to suggest my students read it). At first glance, it looks like a popular rather than a scholarly work. It lacks footnotes, though there are extensive notes at the end of each chapter. I would also like to know when it was written - I haven't found a reference to a source later than 2005 yet. Mr Harford should give his readers a bit more information, although I don't expect high levels of academic rigour in his work (that's one of its attractions). When I read more of the book I will write more about it.

And while I am writing about the BBC - "The Bottom Line" on Radio 4, presented by Evan Davis, had a recent episode entitled "Corporate Espionage". It's currently available to download as a podcast here. It features serial inventor and entrepreneur Mandy Haberman, patent attorney Vicki Salmon and investigator-cum-author Chris Morgan Jones. Different intellectual property rights get a little confused but it's definitely worth listening to.

Tuesday, 27 June 2017

Google in record fine for abuse of dominant position

Google has been fined a record €2.42 billion (more than twice as much as expected, and indeed twice as much as the "bung" given by the UK government to persuade the DUP to maintain it in office) for abusing its dominant position, contrary to Article 102 of the Treaty on the Functioning of the European Union. The Commission found that the search engine gave illegal prominence to Google's comparison shopping service. Unless it terminates the abuse within 90 days, the company will become liable to daily penalty payments up to 5% of the global turnover Google's parent, Alphabet.

The competition Commissioner Margrethe Vestager said:
Google has come up with many innovative products and services that have made a difference to our lives. That's a good thing. But Google's strategy for its comparison shopping service wasn't just about attracting customers by making its product better than those of its rivals. Instead, Google abused its market dominance as a search engine by promoting its own comparison shopping service in its search results, and demoting those of competitors.
What Google has done is illegal under EU antitrust rules. It denied other companies the chance to compete on the merits and to innovate. And most importantly, it denied European consumers a genuine choice of services and the full benefits of innovation.
The Commission keeps imposing record fines on technology companies. In 2009 it fined a record Intel €1.06 billion for paying manufacturers and a retailer to favour its products over those of AMD, surpassing the €497 million penalty imposed on Microsoft in 2004. There's a brief survey of the eight biggest fines imposed on technology companies for breaches of EU competition rules on the Computer Business review website here. And there is, I think, an outstanding investigation into another abuse by Google involving Google Play and the Google search engine being installed on smartphones. There's also the Commission's state aid case involving the Irish tax authorities and Apple. So many that commentators write about the EU being at war with Silicon Valley - which just happens to be where many of the dominant firms come from (and incidentally a long way from Redmond, WA). The fact remains, however, that there is an interesting phenomenon here as the law on abuse of dominant position (and the penalties for breaches) develops. The fact is, the technology sector offers huge scope for abuses of one sort or another.

There's too much to do to write more about the Google decision right now but I will get back to the story later. If you want to know more here is the Commission's press release. There's also an interesting Fact Sheet. And, with a hat-tip to Warwick Rothnie's IPwars.com blog, Ben Thomposon's comments on Stratechery.com are also well worth reading. I found them very eye-opening.

Monday, 19 June 2017

India: Balancing Competition - SEP Injunctions

SEP Injunctions and the Balance of IPRs and Competition in India is a posting on the IP finance blog by Mike Mireles, linking to an article in the Financial Express by Professor V.K. Unni of the Indian Institute of Management, Calcutta entitled 'Promoting Innovation: Moving Towards a Better Intellectual Property Regime'. 

The balance between IP rights and competition law is of course a crucial one to lawyers in either of (or, more likely, both) those disciplines. The learned Professor notes that the the Delhi High Court has recently considered whether the competition authorities are entitled to consider possible abuses of dominant positions by owners of standards-essential patents, and has concluded that they can, which sounds rather like the process that the Court of Justice went through many years ago to reconcile the provisions of the (then) Treaty of Rome with national intellectual property laws. But it's not for me to tell you what IP Finance, or Prof Unni, said - follow the link and read it for yourself. As my students might find themselves doing next year ...

 

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