Sound Board

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

The law of trademarks firmly establishes that a trademark owner reserves the exclusive right to use the trademark and enforce the same. However, there are instances when economically stronger entities or large corporations aggressively secure their intellectual property against, mostly, smaller entities without any justifiable grounds. Through this, the former aims to monopolize the market and kick out any remotely similar business operating under the mark. This is often perceived as a means of…

Fantasy Sports refers to an area of online gaming wherein participants put together virtual teams composed of proxies of current professional players within a league and play for points and/or money. One of the most glaring problems that trademark owners of high-profile sporting leagues and sports teams face today is the piracy of their trademarks. Innumerable fantasy sport developers have taken advantage of the fans' desire to identify with a popular team, leagues and athletic organisations by…

The basic purpose of a trademark is that it serves to distinguish the goods or services of one person from those of another. If a mark is not distinctive, it would lead to confusion among consumers between the mark and existing brands present in the market, as well as be unable to distinguish the source/origin of the goods/services. Distinctiveness is an elementary feature of a trademark, and lack of distinctiveness would be a ground for refusal of the trademark. With that in mind, let us…

A sound mark is a non-conventional trademark which is different from traditional trademarks such as a word mark or a device mark. The requirements to apply for a sound mark was brought in recently through the Trade Marks Rules, 2017 wherein Rule 26(5) provides where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy…

As most readers will be aware, the period of time between 2020-2021 has been marked with unprecedented disaster and suffering. 2020 started out with the Australian wildfires, which was followed by rising geo-political tensions, and then of course, COVID-19 spread rapidly across the globe. Once COVID-19 vaccines were invented, concern then shifted to availability of said vaccines across the world. This was especially concerning in the poorer countries of the developing world. It goes without…

Section 11(1) of the Designs Act, 2000, grants copyright protection to a design for a period of ten years from the date of registration. However, if priority is claimed then the registration period is calculated as being ten years from the priority date. Further, as per Section 11(2) of the Designs Act, 2000, a design may be renewed once for an additional period of 5 years anytime within the initial ten-year period of registration

When a trademark is used to a point where the consumers begin to associate it to a particular product rather than its source, then the trademark is said to have become genericized or undergone Trademark Genericide, wherein it becomes the common descriptive name of a certain product and the trademark owner no longer has the exclusive right over the use of the said trademark. Some examples of popular trademarks that have become genericized over time are ‘Cellophane’ tape, ‘Escalator’, ‘Thermos’,…

In Metso Outotec Corporation v. the Registrar of Trade Marks, appeals were preferred before the Bombay High Court from orders passed by the Registrar of Trade Marks in respect of trademark applications for the word mark SISUPER and device mark SISUPER bearing application nos. 4433306 and 4435364 respectively (IR Nos. 1513304 and 1512932). After a perusal of the facts of the case, the Court set aside and quashed the decisions of the Senior Examiner of Trade Marks refusing the mark “SISUPER”.

The Delhi High Court on April 5, 2021 dismissed two applications filed by Britannia Industries against ITC Ltd for alleged trademark infringement and passing off by the latter.

Under the USA’s Post Registration Audit Program, a declaration of use must be filed between the fifth and sixth year of the validity of the registration of the trademark. So, the Applicant has the burden of proof to show proper usage of the mark for all the goods and services provided under the relevant classes. However, India being a common law country and a first-to-use jurisdiction, one would assume that the use of a trademark would be of prime importance and would consequently, be a…