Sound Board

Our thoughts and views on the practice of Intellectual Property in India and around the world.

Well, if you have a unique surname then you’ll not only have difficulties in explaining to people how to get it right but you will also have the difficulty in getting it registered as a trademark in India. Having said that, there are obviously many discrepancies between the law and the judgments and what is actually happening.

They should not be placed side by side to find out if there are differences; rather the mark should be taken as a whole.

In the last few years, we have had the opportunity of witnessing very interesting intellectual property cases and more importantly, case involving interpretation of intellectual property rights in consonance with other laws. The Delhi High Court recently decided an application to stay the proceedings for a case of trademark infringement till they obtain permission from the Board for Industrial and Financial Reconstruction (BIFR).

The High Court of Delhi recently dealt with a case of comparative advertisement, yet again. The only thing that set this case apart from the recent comparative advertisement cases is the fact that the plaintiff was upset that the defendant did not mention certain advantages of their products. Now does that really amount to disparagement of the plaintiff’s product?

Have you wanted to visit the Maclaren’s Pub or Central Perk and live your moment from How I Met Your Mother or Friends? Have you wanted to taste the Bertie Bott’s Every Bean Flavour from the Harry Potter Series or wished the Bat Mobile was real?! I’m sure we all have wanted to live or rather re-live some form of fantasy and in fact some of it has been made possible! However, as someone working in the field of intellectual property, I’m forced to think of the fictional products in the real world…

Of the several cases of trademark infringement and passing off that are decided by the Courts, some cases are known for clarifying the position of law on an issue and some for addressing issues not previously discussed by the Courts. Not very often do we come across cases that simplify and reemphasize on the basics principles of law; this case is one them. In this case decided by the Bombay High Court, the Court has decided on the issue of unauthorized use of the mark ‘Café Madras’.

You have a brand but you don’t’ sell the products under that brand in India and neither do you hold a trademark registration for the mark in India. Meanwhile, someone in India adopts your brand name and starts manufacturing and selling products under that brand. If you have advertisements in magazines that are distributed in India and if your product is listed on a website accessible from India, can you then say that the reputation of your brand has spilled over into India?

Just as the image says, I would like to get to the point. But well..it is certainly not that easy! One of the most interesting debatable matters, atleast as far as India is concerned, is the validity of tag lines as trademarks.

Rectification of the register is a proceedings in which a party seeks to remove a registered trademark from the register. In India, Section 47 of the Trademarks Act lays down two scenarios regarding removal of a registered trademark, they are :