Sound Board

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

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…

At some point in a guy’s life, he just has to buy jewellery! Whether it’s for a girlfriend or partner, going through row after row of earrings, necklaces, rings and other adornments for someone else is one of the inescapable truths of life. Shopping for jewellery has changed a great deal as well - from discretely picking up something on a holiday (but having to sheepishly empty your baggage at airport security amid grins from your folks) to browsing through and buying the latest visually…

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…

The Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) released a document titled the draft guidelines for examination of Patent applications in the field of pharmaceuticals on February 28, 2014 which was open for comments until March 31, 2014 which was eventually extended to April 4, 2014.

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.

What happens when you want to get a composite mark, which has both distinctive and non-distinctive elements,registered as a trademark? The answer is this - you simply have to disclaim that you claim no exclusive rights over the particular element or elements of the mark that the Registry concludes to be unregistrable standing alone on account of it being more of a generic term, to limit and define the rights of the proprietor, after which allowing you to proceed toward getting your mark…