Trade secrets and trade marks

8/10/2019 Trade secrets and trade marks

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TRADE SECRETS &

TRADE MARKS Prashant sunagar Asst professor

MSRITBangalore


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Trade Secrets Under TRIPSThe trade-related aspects of intellectual

property rights - TRIPs Agreement dividedintellectual property rights into thefollowing seven heads -1. Patents,2. Trademarks,3. Copyrights,4. Industrial designs,

5. Layout designs of integrated circuits,6. Undisclosed information (trade secrets),and7. Geographical indications.

Under TRIPs Agreement 'trade secrets' are' '


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Present scenario of trade secrets

In the present scenario of aggressive competition industrialization and liberalization every corporathouse has certain information with regard totechnological know-how, idea, business methodsetc. over which it has exclusive possession that itwants to protect. These are known as trade secreFor instance, the formula for making coke isconsidered to be the most well guarded tradesecret in the world.


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Formulas

The Coca-Cola formula is The Coca-Cola Company 's secret recip

Coca-Cola . As a publicity, marketing strategy and intellectual propeprotection strategy started by Robert W. Woodruff , the company pr the formula as a closely held trade secret known only to a few emplmostly executives . the formula for making coke is considered to be

the most well guarded trade secret in the world.

A glass of Coca-Cola
http://en.wikipedia.org/wiki/The_Coca-Cola_Companyhttp://en.wikipedia.org/wiki/Coca-Colahttp://en.wikipedia.org/wiki/Publicityhttp://en.wikipedia.org/wiki/Marketing_strategyhttp://en.wikipedia.org/wiki/Intellectual_propertyhttp://en.wikipedia.org/wiki/Robert_W._Woodruffhttp://en.wikipedia.org/wiki/Trade_secrethttp://en.wikipedia.org/wiki/Executive_%28management%29http://en.wikipedia.org/wiki/Executive_%28management%29http://en.wikipedia.org/wiki/Trade_secrethttp://en.wikipedia.org/wiki/Robert_W._Woodruffhttp://en.wikipedia.org/wiki/Intellectual_propertyhttp://en.wikipedia.org/wiki/Marketing_strategyhttp://en.wikipedia.org/wiki/Publicityhttp://en.wikipedia.org/wiki/Coca-Colahttp://en.wikipedia.org/wiki/Coca-Colahttp://en.wikipedia.org/wiki/Coca-Colahttp://en.wikipedia.org/wiki/The_Coca-Cola_Companyhttp://en.wikipedia.org/wiki/The_Coca-Cola_Companyhttp://en.wikipedia.org/wiki/The_Coca-Cola_Company


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What is a Trade Secret?

A trade secret is any information that: 1. provides its owner with a competitive

advantage because it is not known toothers;

2. It is the subject of efforts that are

reasonable under the circumstances tomaintain itssecrecy.3. has commercial value because it is

secret,


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Examples of Trade Secrets

Source code


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Engineering Drawings

PCb layout

Mechanical

Automotive Architectural


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Manufacturing processes

Girder Mfg.proc. System Mfg.proc.Pcb assembly.proc.


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Forensic manuals

Franchise manuals

Listings and manuals


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Marketing and business strategies

Marketing strategies business strategies

Media Marketing strategies


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Kentucky Fried Chicken's original "11 herbs and spices" recipe,handwritten by Col. Sanders 68 years ago, was transferred earlierthis month from a Louisville safe to an undisclosed location. Theyellowing parchment is now protected by motion sensors andlaser beams, said KFC spokeswoman Laurie Schalow.

Kentucky Fried Chicken


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S ec r e t v s Tr ad e s ec r e t

A trade secret must be a secret A trade secret must have value


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How to Protect Your SecretsBe aware of company insiders, formeremployees, and competitors milling yourhallways

Keep your employees informed of the value ofdiscretionHave them sign and agree to a PolicyStatement

Create key management teams who oversee thecompliance with securityTrain employees via orientationMaintain an auditing and reporting systemLimit Discretion of key secrets


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Position In India

India being a signatory of the TRIPs Agreement India is under an obligation tobring its intellectual property laws inconformity with international standards.India has achieved this to a large extent byenacting new and amending existinglegislations on intellectual property laws.However, unlike the US and otherdeveloped countries India has nolegislation dealing with trade secrets.


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Position In India

In India protection of trade secrets isCommon Law based. However, section 27of the Indian Contract Act provides somesort of limited remedy, it bars any personfrom disclosing any information which heacquires as a result of a contract. There

are scores of reasons for the absence ofany statute dealing with trade secrets.


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Potential drawback of Trade Secret

One issue involving trade secrets:

the competition authorities have decidedthat protecting software by trade secretprotection is a lesser form of protection.

The theory, anything worth protectingshould be patented.


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Conclusion: Prevention is better than cure

As businesses are growing out of their localmoulds and going global, effective trade secret

protection is becoming a necessity. Though

there is no enactment in India that affords protection to trade secrets, businesses can usethe tools mentioned above to safeguard thesetrade secrets. Businesses must remember thatadequate and effective creation, protection, useand management of trade secrets are crucialfactors in determining their success.


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TRADEMARKS


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What is a trademark?

A trademark is a distinctive sign,whichidentifies certain goods or services as those

produced or provided by a specific personor enterprise.The system helps consumers identifyand purchase a product or service

because its nature and quality, indicated

by its unique trademark, meets their needs.


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What does a trademark do?

A trademark provides protection to theowner of the mark by ensuring the

exclusive right to use it to identify goodsor services, or to authorize another to useit in return for payment.


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What kinds of trademarks can beregistered?

The possibilities are almost limitless.Trademarks may be one or a combinationof words, letters, and numerals.

.
http://images.google.co.in/imgres?imgurl=http://www.bharatexhibitions.com/english/images/bsnl.jpg&imgrefurl=http://www.bharatexhibitions.com/english/3GI2006.shtml&h=128&w=125&sz=7&hl=en&start=5&tbnid=NnaXNQo4sTYZTM:&tbnh=91&tbnw=89&prev=/images%3Fq%3Dbsnl%26gbv%3D2%26svnum%3D10%26hl%3Denhttp://images.google.co.in/imgres?imgurl=http://www.wittysparks.com/wp-content/uploads/2007/04/dd.jpg&imgrefurl=http://www.putvote.com/popular/tv_and_serials%3Fpage%3D3&h=171&w=225&sz=13&hl=en&start=3&tbnid=SELwKP5XP3R6SM:&tbnh=82&tbnw=108&prev=/images%3Fq%3Ddoordarshan%26gbv%3D2%26svnum%3D10%26hl%3Denhttp://images.google.co.in/imgres?imgurl=http://adweek.blogs.com/photos/uncategorized/mcdonalds.JPG&imgrefurl=http://adweek.blogs.com/adfreak/2005/week4/index.html&h=647&w=800&sz=217&hl=en&start=14&tbnid=HPnZj21OUoL5uM:&tbnh=116&tbnw=143&prev=/images%3Fq%3Dmcdonalds%26gbv%3D2%26svnum%3D10%26hl%3Den%26sa%3DX


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TRADEMARK LAW IN INDIA

Trade Mark Act, 1999TM: a visual symbol (word, letter, numeral,name, signature, device, label, symbol)identifying goods or services of one personfrom those of others, and capable ofgraphic representation

Includes shape of goods, packaging,combination of colours


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Well known TM: If consumers seeing it

applied on some goods relate it to the samemark applied on some other goods.Collective Mark: Owned by an Association

of Persons, who do not make a partnership(Indian Partnership Act, 1932)Certification Mark: Proprietor certifies thatgoods conform to certain characteristics:quality, ingredients, etc. e.g. Agmark, ISImark .


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Use of Sign

Used on goods, means appearance ofsign not only on goods but containers &wrappers too.

Used in connection with the marketing means appearance of sign in

advertisements and display windows.


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Registration of TMController General of Patents, Designs andTrademarks is also Registrar of TrademarksRegistry H.O. BombayBranch offices (4) Kolkata, Chennai, New Delhi,

AhmedabadRegister of TM contains all record of registeredTMs, with names, addresses and description of

proprietors, users, conditions, assignments,transmissions and limitations.A digital library of 1,50,000 TMs and 1250 TM

journals on CD-ROM


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REGISTRABILITY OF TMA TM should satisfy at least one of thefollowing characteristics for registration.

Be a name of a company/individual

represented in a special manner;Be the signature of the applicant;Be one or more invented words;

Be one or more words having no directreference to the characters or quality ofthe goods, barring certain exceptions

A part of TM can be registered separately.


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ABSOLUTE GROUNDS FORREFUSAL

Not being distinctive;Consisting exclusively of marks and

indications to designate kind, quality,quantity, intended purpose, values,geographical origin etc.;Mark being identical with or deceptivelysimilar to a registered TM in respect ofsame goods or services.


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A Mark whose use would be contrary to anylaw;A Mark containing scandalous/obscene

matter; or likely to hurt religioussusceptibility of any class/section of the people;A mark if it is prohibited under theEmblems and Names (Prevention ofImproper Use) Act, 1950;


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A trademark, which consists of a nationalflag, or contains a national flag, cannot beregistered, according to Art 3, 1. h. of theDirective.The following shall not be registered or ifregistered shall be liable to be declared

invalid:Trade marks which have not been authorizedby the competent authorities and are to berefused or invalidated pursuant to Article 6terof the Paris Convention for the Protection ofIndustrial Property, hereinafter referred to asthe 'Paris Convention'.


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When is a flag a ground for refusal?


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A mark if it consists exclusively of theshape of goods which

results from the nature of goods

themselves;is necessary to obtain a technical result;which gives substantial value to the

goods (difficult to interpret).


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RELATIVE GROUNDS FOR

REFUSALExcept in rare circumstances of honest,concurrent use, a mark shall not beregistered, if

it has identity with an earlier TM andsimilarity of goods or services; orit has similarity to an earlier TM andthe identity or similarity of the goods orservices; and such identity orsimilarity is likely to cause confusion.


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A TM has similarity/identity with an earlierwell known TM even for dissimilargoods/services, if its use would take unfairadvantage of, or be detrimental to, thedistinctive character or repute of the earlierTM.If its use is prevented by any law,

particularly the law of passing off, protecting an unregistered TM.


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PROHIBITION FROMREGISTRATION

No word which isthe commonly used and accepted name ofany single chemical element or

compound, ordeclared by the WHO and notified by theRegistrar as an international non-

proprietary name, (or word deceptivelysimilar to it),

shall be registered as TM.


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Honest Concurrent Use

Registrar may permit registration ofidentical or similar TMs by more than one

proprietor in special circumstances.If a TM falsely suggests a connection with aliving person (or a person, who has died

within 20 years preceding the application),Registrar may require written consent of theliving person or the legal representative ofthe deceased.


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ADVERTISEMENT, OPPOSITION

After acceptance, the application is advertisedin the Trademarks Journal.

Any person may give notice of opposition toRegistrar within 3 months of publication the

period extendable by 1 month.


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Registrar serves a copy of the notice to theapplicant, who files a counter-statement within2 months, which is then sent to the opponent.

Registrar considers evidence, hears the partiesand decides suitably. Any conditions orlimitations could be prescribed on registration.


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TM is then registered and Registrar issues acertificate of registration to the application

with the seal of the Registry.Registration valid for 10 years, may berenewed indefinitely, for 10 years each time.

Failure to renew registration leads to removalof TM from the Register; it could be restored

by an application filed within one year.

REGISTRATION


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INFRINGEMENT OF TMA registered TM is infringed by a personwho, without the permission of the

proprietor,Uses in the course of trade an identical or adeceptively similar TM in relation to goods

or services for which the TM is registered;or


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Uses a mark which because of

its identity with the regd. TM and the

identity or similarity of the goods/services

covered by it; or its similarity to the regd. TM and the

identity or similarity of the goods/services;

Is likely to cause confusion on the part of the public.


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Uses a mark which is identical with orsimilar to the regd. TM and is used inrelation to dissimilar goods/services and

the regd. TM has a reputation in India andthe use of the mark takes unfair advantageof, or is detrimental to, the distinctivecharacter or repute of the regd. TM


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Infringement [I-IS, S-IS, IS-D (WT)]

TM Goods/services StatusIdentical Yes

Similar Yes

Identical YesSimilar Yes

Dissimilar Yes

Dissimilar Yes

Identical

Similar

(only for Well-

Known TM)Identical

Similar

TM-21


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Exemptions

Use of a mark in accordance with honest practices, and not such as to take unfair advantageof, or harm the distinctive character/repute of the

TM, is not infringement.

The following are not infringement:

use in relation to goods/services to indicatekind, quality, quantity etc. of thegoods/services;


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use in a manner outside the scope of

registration;

use in relation to goods/services where theowner had once applied the mark and had notsubsequently removed it or impliedlyconsented to its use;

use in relation to parts/accessories of othergoods, where such use is reasonablynecessary and not likely to deceive as to theorigin.


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The proprietor of a registered TM can notinterfere with the use of anyidentical/similar TM, if a person has been

using this mark from an earlier date.

Trademarks A Cautionary Tale


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Trademarks - A Cautionary Tale In 1998, sales of the luxury car brand RollsRoyce were declining and its owner, VickersCorporation , put the Rolls Royce Ltd. divisionup for sale.BMW had long been making parts for the Rolls,and offered Vickers $575 million dollars for thecompany.However, Volkswagen was also keen to enterthe luxury car market and pushed BMW into abidding war. Volkswagen won in the end, paying$795 million for the company.Unfortunately, Volkswagen was in such a hurryto beat its German rival, that it overlooked theessential question of what exactly it would getfor its $795 million.


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BMW kept its eye on the ball, however. Itknew that the Rolls Royce trademarkswere in fact owned by Rolls-Royce PLC the aircraft company, not Rolls RoyceLtd the motor car company. BMWpurchased the trademarks from the aircraft

company for a mere $65 million dollars.


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Volkswagen then belatedly discovered thatalthough they owned the rights to build theworlds most elegant luxury car, they could not

use the grill, the hood ornament, or thelegendary name! The point is that whileintellectual property (IP) can be critical to thesuccess of many deals, IP due

diligence often receives scantattention and this omissioncan be very costly.


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The test laid down by the Supremecourt is a person of averageintelligence with imperfect memory Amritdhara case AIR 1963 SC 449.

This test is followed by the Supreme

Court and by various High Courts allover India.

Infringement of Trademark

CASTROL VS PENTAGON


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CASTROL VS PENTAGONIS THERE ARE

INFRINGEMENT ?


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NYLE VS KAMILL- IS THERE

AN INFRINGEMENT ?

.


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SABENA VS SUBEENAIS THERE AN INFRINGEMENT ?


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- IS THERE AN INFRINGEMENT

?

Marks different Get up same


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Marks different Get up sameCASTROL VS PENTAGON

Where the marks are different, but the colourscheme, get up and layout are identical, injunctionhas been granted in a suit for passing off.

Castrol Vs. Pentagon Lubricants C.S. No. 327of 1999 Order of Mr. Justice A. Ramamurthidated 22.12.1999. The Learned Judge observed

that in view of the colour scheme, packing beingidentical, an ordinary person would assume thatthe defendants goods also emanate from Castrol.


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NYLE VS KAMILL

Beauty Cosmetics Vs.Kamil cosmetics C.S. No. 415 of 1998 Mr. Justice AkbarBasha Khadiri

by an order dated 25th June 1998 grantedan injunction restraining Kamil Cosmeticsfrom selling Shampoo with a label similarto Nyle Shampoo label although the marks

Nyle and Kamil are completely different

M k i il i il


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Marks similar, getup similar

Scientific Compounds Vs. HanumanCottage (2001) 1 CTMR 403

Mr. Justice A.K. Rajan of Madras HighCourt granted an order of injunction in

a suit for infringement and passing offon the ground that the trade marksSABENA and SUBEENA are similar,

the colour scheme, getup are similar.


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Thank you.

Documents

Trade secrets and trade marks