Law of Trademarks and Domain name

Dr.V.C.Vivekanandanvivekvc2001@yahoo.co.in

Law of Trademarks and Domain name issues

Trademarks

Why Brands ?

• To protect the public so that it may be confident in getting the product which it asks for and it wants to get.

• To protect an owner’s investment from misappropriation by pirates and cheats

• Trademark helps customers to select goods. By identifying the source of goods, they convey valuable information to consumers

How Brands connect ?

• Functional Benefit - A BMW automobile include power, excellent brakes and great cornering ability

• Emotional level – BMW Engine sound and sensations of excitement that come from accelerating down an open highway

• Self Expressive sense - A BMW owner feels his or her own success resulting from ownership of an expensive and distinctive vehicle

Brand value

• When Philip Mores bought Kraft, the maker of cheese, the price was 12.9 Billion US $ for the brand names, which was four times Kraft’s tangible assets

• Nestle paid 2.5 Billion US $ for the brand name KITKAT, which was 5 • Nestle paid 2.5 Billion US $ for the brand name KITKAT, which was 5 times Rowndstree’s book value

• In the Life Insurance joint venture between Bajaj Auto and Allianz of Germany, a premium of Rs. 72 crores has been paid to Bajaj Auto for using the brand name BAJAJ in the life Insurance business by the joint venture

TRADE MARKS

• Device, heading,• Label, ticket, name, signature,• Word, letter, numeral• Shape of goods, packaging or• Shape of goods, packaging or• Combination of colours or any• Combination thereof.• Services • New act - Trade Marks Act, 1999

A Device

Heading

Labels

Tickets

NAME

Signature

Word – Dictionary &Invented

Word

Number

Shape of Goods

Packaging

Combination of Colour

Services

What does not constitute a TM

• A trademark should NOT have the following features:

• a) It should NOT be deceptively similar to any other existing mark

• b) It should not be a descriptive of the goods. A remote • b) It should not be a descriptive of the goods. A remote reference is sometimes allowed.

• c) It should NOT be a word that defines the nature of the product

• d) It should not be the name or the surname of a person• e) It should not be a geographical name

Exemptions

• non-distinctive mark that is used in trade by the extensive use of the mark in relation to the goods in which the marks are being used, resulting in the mark becoming distinctive of the goods and the manufacturer. manufacturer.

• In such cases, the doctrine of prior use applies and it serves as a valid defense for the manufacturer to claim proprietary rights over the trademark. Some examples of such marks /brands are Nilgiris, Nagarjuna Fertilisers, Taj Mahal Tea etc.

Some case laws

• Win -Medicare Ltd V. DUA Pharmaceuticals Pvt Ltd,Diclomol was used by the plaintiff and Dicamol was used by the defendant.

• The court held that the two products were similar and considered the factor that these drugs are sold and considered the factor that these drugs are sold without prescription.

• Therefore these drugs can be bought off the counter by illiterate customer and therefore restrained the use of the trademark by holding that they are similar.

• 1997 PTR 152

Some case laws• Delhi High Court granted an ex-prate injunction to

Smithkline Beecham Ltd which was the registered owner of the mark Crocin against the use by Apar Pharma of Hyderabad and Cyper Pharma of Delhi against the use of the word Crocinex.

• Both the marks were sought to be used for paracetamol • Both the marks were sought to be used for paracetamol tablets.

• The Court held that the words were so similar that the it attempt was to deliberately mislead the public. (Here the issue of phonetic similarity was also conceded).

• APTN Set 1 No 3 April 98 p 13

Some case laws• Calida Lab v. Dabur Pharma Ltd, Calida alleged that

Zexate was deceptively similar to Mexate in respect of a particular injection used to treat cancer.

• The Court based its conclusions only on the fact that the drugs were specialized drugs which could only be purchased showing the prescription of a cancer drugs were specialized drugs which could only be purchased showing the prescription of a cancer specialist.

• It was felt that the prescriptions were made by specialist doctors who are knowledgeable and are capable of distinguishing the names and therefore court held that the trademarks can be allowed APTN Set 1 No2, Dec 97, p 12

Some case laws

• Biofarma V. Sanjay Medical Store, the question was with reference to Flavedon and Trivedon for a drug that was prescribed for heart disease.

• The court gave importance to the fact that the drug was a Schedule H drug under the Drugs and Cosmetics Act, a Schedule H drug under the Drugs and Cosmetics Act, which meant that the drug cannot be bought off the counter.

• The Court held that the two drugs need not be considered to be deceptively similar on the same logic followed in the above mentioned case.

• 1997 PTR 97

Concurrent registrations• The pharmaceutical industry has some interesting examples of such

concurrent registrations:

• a) Durex- Durex Products Inc, USA and The London Rubber Co, UK • b) Kerocleanse - Scientific Pharmacals Ltd, UK and Patel Brothers Service &

Eng, Eng, • Mumbai (Class 5)• c) Nifecard - Lek Tovarna Farmacevtskih, Yugoslavia; Biochem

Pharmaceutical Industries, Mumbai (Class 5)• Taktic:- The Boots Co Ltd, UK and Eskayef Limited, Bangalore•

• APTN Set 1, No 2, Dec 31

TM becoming a generic word• TRADEMARK BECOMING A GENERIC WORD: It should be noted

that unless a trademark is carefully protected it will lose its significance.

• This essentially means that the trademark will degenerate in status to a generic word.

• The consequence is that the trademark will start referring to goods • The consequence is that the trademark will start referring to goods of that variety rather than serve as a link between that product and the manufacture.

• Hence the manufacturer/ owner will not be able to claim any proprietorship /ownership rights over the trademark.

• This may occur if the owner fails to take action against the infringoror because of the use of the mark in a descriptive sense. Some examples of these are: Asprin, Refrigrator, GripeWater, Xerox etc. in which the goods fall.

How do you acquire a Trade Mark ?

• You can apply on various categories permitted under the law

• The mark if it is a word has to be distinctive than descriptive

• E.g. apple cannot be for apples but can be for • E.g. apple cannot be for apples but can be for computers

• Invented words get protection across the categories

• 34 categories for products and 8 categories for services

TRADE MARK

• A Dictionary Word can be given as mark to others in other categories

• If it is an invented word the holder gets the exclusive right across all categories

• Eg. INVENTED WORD- KODAK, DUREX

How do you acquire a Trade Mark ?

• You can use a mark without registration• It establishes you as a senior player• However it only allows you to stop others of

using your markusing your mark• Registration of mark allows you to claim

damages and profits of the infringer• Registration to be done with the Trade mark

registrar

Infringement of Trademark

• The test laid down by the Supremecourt is a person of averageintelligence with imperfect memory –intelligence with imperfect memory –Amritdhara case AIR 1963 SC 449.This test is followed by the SupremeCourt and by various High Courts allover India.

LET US PLAY THE JUDGE—CASTROL VS PENTAGON

IS THERE ARE INFRINGEMENT ?

NYLE VS KAMILL- IS THERE AN INFRINGEMENT ?

..

SABENA VS SUBEENAIS THERE AN INFRINGEMENT ?

Marks different – Get up sameCASTROL VS PENTAGON

• Where the marks are different, but the colour scheme, get up and layout are identical, injunction has been granted in a suit for passing off.

• Castrol Vs. Pentagon Lubricants – C.S. No. • Castrol Vs. Pentagon Lubricants – C.S. No. 327 of 1999 – Order of Mr. Justice A. Ramamurthi dated 22.12.1999. The Learned Judge observed that in view of the colour scheme, packing being identical, an ordinary person would assume that the defendants’ goods also emanate from Castrol.

NYLE VS KAMILL

• Beauty Cosmetics Vs.Kamil cosmetics –C.S. No. 415 of 1998 Mr. Justice Akbar Basha Khadiri Basha Khadiri by an order dated 25th June 1998 granted an injunction restraining Kamil Cosmetics from selling Shampoo with a label similar to Nyle Shampoo label although the marks Nyle and Kamil are completely different

Marks similar, getup similar

• Scientific Compounds Vs. Hanuman Cottage –(2001) 1 CTMR 403

• Mr. Justice A.K. Rajan of Madras High Court • Mr. Justice A.K. Rajan of Madras High Court granted an order of injunction in a suit for infringement and passing off on the ground that the trade marks SABENA and SUBEENA are similar, the colour scheme, getup are similar.

Domain Names & Trademarks

Unique URL addressesInternet protocol started as a series of

numbers that were difficult to rememberDomain names started being usedDomain names started being usedUseful mnemonic means of locating specific

computers on the Internet Whenever human beings use a word to

identify a business trademark law comes into play

Domain Names- hierachy

• Top-level domain names • Open (.com, .org, .net)• Closed (.edu, .int, .gov and .mil)• Unique country specific top level domain namesUnique country specific top level domain names• Proposal to add more top level names• Most legal disputes center around Second level

domain names• Two identical second level domain names cannot

coexist under the same top level domain

Issues in DN/TM

• Problems with traditional trademark law• Identical trademarks in different businesses• Can co-exist in the real world, because no

likelihood of confusion between goods likelihood of confusion between goods registered in different classes

• Domain names are unique• Can give rise to genuine disputes

Infringement in Internet

SimilarConfusing SimilarBlurring/Whittling away or TarnishmentCyber squattingCyber squattingPolitical cybersquattingPost Domain disputesTypographical errors

Infringement of Trademark (contd.)

• The test laid down by the Supreme court is aperson of average intelligence with imperfectmemory – Amritdhara case AIR 1963 SC 449.This test is followed by the Supreme Court and byvarious High Courts all over India.

• The test laid down by the SC is overall impression /• The test laid down by the SC is overall impression /comparison of the two marks. A side by side, word,by word comparison is not permitted. In the Parlecase AIR 1972 SC 1359 the marks involved wereGluco biscuits wrapper and the defendant usingsimilar wrapper although there were minordifferences like the Basket being held differently, thebackground, etc. Still the court granted injunctionin view of the over all similarity of the marks.

Domain name disputes-Confusion-8 factors

(Polaroid Corpn v Polard Electronics Corpn

The Strength of the Plaintiff’s markSimiliarity Competitive proximityBridging the gap by the defendant Bridging the gap by the defendant Actual confusion between productsGood faith of the defendantQuality of defendant productSophistication of the buyer

Confusion requirement

Point-of-sale: confusion of the purchaser as to the services or goods at the time of purchase

Pre-sale confusion: when an infringing use is likely to attract potential customers based on the to attract potential customers based on the reputation of the owner of the mark

Post-sale confusion: when the public, viewing the purchased goods or services, associates a defendant's goods or services with the plaintiff, regardless of whether the purchaser was confused

DN litigations on ‘confusingly similar to reg TM ’

Interstellar Starship Services Ltd V Epix Inc epix.comToys ‘R’Us Inc v Feinberg - gunsareus.comAlta Vista Corpn Ltd v Digital Equipment Alta Vista Corpn Ltd v Digital Equipment

Corporation – Alta Vista Site EngineMobil Oil Corp v Pegasus Oil Corpn

TM V DN- Geographic limitations

Use does not infringe or dilute the senior User’s MarkAvoid using the proposed mark in contested

regionsregionsReach some sort of accomodation with the

senior including a buyout Alta Vista case redefined the Geographic

limitations factor of TM in Domain Name

Cyber squatting

Panavision International LP v Toeppen panavision.com /panaflex.com Defendant had photos of City of Pana, Illinois

and ‘Hello’ in Panaflex site- The court decided and ‘Hello’ in Panaflex site- The court decided Toeppen acting as a spoilerToys ‘R’ Us vs Abir - toysareus.com

Confusingly similiar

Amazon.com, Inc. v. Paul Horner -Case No. D2003-0071-amazon.com –amazonbook.netPfizer Inc. v. Jason Haft-Case No. D2003-0133Pfizer Inc. v. Jason Haft-Case No. D2003-0133 fem-viagra.com>, <fem-viagra.net>, <viagra-fem.com> and <viagra-fem.net>

Meta tags

Meta tags are HTML code used to describe the contents of a web site. Search engines retrieve results for Internet users by looking for metatags, keywords in domain names and actual text on web pages. pages.

The more often a term appears in the metatags for a site, the more likely it is that the web page will be found in a search for that term. International court cases have held that the use of another's trademark as a metatag leads to trademark infringement

Keywords

Search engines sell keywords to competitorsSearch produces results along with a banner

or advertisement of the competitor Estee Lauder v Fragrance counterEstee Lauder v Fragrance counterPlayboy v Excite

UDRP

Rodney D. Ryder Preconcept

Trademarks on the Internet [People for the Ethical Treatment of Animals]

Rodney D. Ryder Preconcept

Trademarks on the Internet […contd.]

Rodney D. Ryder Preconcept

Cybersquatting in India: the Yahoo! Case

Rodney D. Ryder Preconcept

Cybersquatting: the Yahoo! Case and Copyright Issues

Rodney D. Ryder Preconcept

Second Generation Trademark Issues: Metatags

Rodney D. Ryder Preconcept

Second Generation Trademark Issues: Metatags

Rodney D. Ryder Preconcept

Legitimate Hyperlinking

Rodney D. Ryder Preconcept

Linking [Hyperlinking] and Framing

Rodney D. Ryder Preconcept