Sound Board

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

Yes you can unless there is proper policing done, you are highly likely to lose your trademark rights. In my previous article I had mentioned how getting your mark registered is just the first step to the long battle ahead because even if your trademark is approved, people can challenge and steal your trademark and can do so by legal means. It sure does sound oxymoronic; how can one “legally” steal something, but if you read on you’ll know exactly what I mean. So to put this in perspective,…

In my previous article on character merchandising, I mentioned that all of us have at some point been guilty of buying merchandise of our favorite characters but how many times do we stop to think if it’s actually being licensed from the creators of the work or whether they are just rip offs? Not very often. The point here is that we love the character and are so thankful that the creators came up with it, but when it comes to their revenue, we don’t really give it too much thought because it…

Filing an application or obtaining a registration is only the first step to the long battle ahead; because once the mark has been registered, the owner has to be more vigilant in protecting it in this era of "passing off". Here’s the thing, if you come across your mark which someone else is using, then don’t let it go by because if you don’t take an action soon you will not be able to act on it ever unless you are lucky enough to prove fraudulent usage on part of the other person. This post…

Recently, I came across an exclusive store for Chota Bheem merchandise in Chennai that had every product (towels, bags, footwear and more) one could possibly imagine and I’m sure every child who walked into that store hasn’t left without throwing a tantrum to own one of those products! That really got me thinking of how character merchandising has been a fast growing market in India in the last few years. We’ve all been fans of cartoons and fictional characters at some point in our life and…

Trademarks like any asset can be transferred from one owner to another. The transfers could be temporary through licensing or permanent through an assignment. Assignment of a trademarks is a process in which the owner of the trademark transfers the ownership of the mark either with or without the goodwill of the business. In other words, it is transferring of proprietary rights in the property of the proprietor. The manner in which an assignment can be made are as follows:

The Bombay High Court in the case of Dalmia Cement Bharat Limited v. Ultratech Cement Limited recently ruled on the issue of cause of action and jurisdiction of Courts in cases of trademark infringement and passing off. The Court discussed various aspects of Section 134 of the Trademarks Act in a very well-reasoned manner.

When it comes to international treaties and agreements, India generally signs first and thinks later. We sign on fast and then push the limits of implementing and amending our national laws until the last possible day. India’s accession to the Madrid Protocol was done in a rather similar manner. Either way India is a part of protocol which is touted as the international registration of trademarks. A little over a year down the line and the scenario is rather interesting: the Trademark Office in…

Have you come across advertisement while watching TV that compare one product with another and it is quite obvious which the contender is despite them having “blurred” the brand name? The Pepsi and Coke disputes and one-upmanship have been going on for several years. What’s generally noticeable is that when one product is compared with another, we immediately recognise the two different products (which are generally trademarked) because of their brand names, the shape of the product and the…

The Madrid Protocol has simplified the process of filing trademark applications across the world by bringing it all under the World Intellectual Property Organization (WIPO). Once a trademark application has been filed in the home country or what is generally referred to as the origin country, one can designate other countries that are a part of the Madrid Protocol using the registration of the origin country as their earliest date of priority. Currently, 92 countries are a part of the Madrid…

In my previous post I discussed three major reasons as to why descriptive words are bad trademarks. They generally will be objected to by the Registry, or they may be allowed with disclaimers and even if they are registered, they may not let you stop someone else from using a similar mark. A common way brand owners try and overcome this is by misspelling DISKRIPTIVE words to try and get them registered as trademarks.