Category: Trademark

Taiwan’s Long-Awaited Trademark Law

Under huge tension from the U.S., Taiwan passed the hotly anticipated updated Trademark Law in November, 1993. Albeit compelling presently, its usage guidelines were not given until July 15, 1994. Since that time, the structures, manuals and strategies of Taiwan’s trademark office, the National Bureau of Standards (‘NBS’), have been reconsidered. The Law improves security for earlier clients of an imprint, just as facilitating necessities for those authorizing, doling out, vowing, and enlisting marks. What’s more, the law annuls the troublesome limitations on trademark task, authorizing and sublicensing. U.S. licensors who were puzzled by the old overly complex necessities will be satisfied to discover that trademark licenses presently need just be recorded not endorsed with the NBS. Be that as it may, the Law decreases the most extreme criminal sentence for encroachment and manages less insurance to renowned however unregistered imprints.

Purchase outs for jail sentences are back basically. Article 62 of the new law lessens the term of detainment for trademark encroachment from 5 years to 3 years or less. Thus, Taiwan again permits infringers to purchase out of prison. Article 41 of the Criminal Code permits convicts to drive sentences of a half year or less to ostensible fines. In 1985, after the U.S. collected solid weight on Taiwan because of lacking requirement of its Trademark Law, Taiwan expanded the most extreme sentence to 5 years with the goal that compensation of sentences was not, at this point conceivable. Be that as it may, infringers can again change over their jail sentences of a half year or less to a fine of around U.S. $34 every day – a little expense of working together.

The new law manages more prominent insurance to real earlier clients. Unregistered clients who in accordance with some basic honesty utilize a trademark on the equivalent or comparative merchandise preceding the enlistment of an indistinguishable or comparable trademark won’t be blocked from proceeding with such use due to the resulting application. Be that as it may, the new law wiped out express assurance for popular however unregistered trademark. Such checks get a lesser level of insurance under the arrangement disallowing enrollment of imprints that ‘are confusingly comparative’.

Taiwan currently accommodates with the worldwide measures of perceiving trademarks as significant business property which might be promised as security, and of taking into consideration the enrollment of two new sorts of imprints: confirmation stamps and gathering marks. Be that as it may, despite the fact that Taiwan expanded the fine for trademark rights infringement from NT$150,000 to NT$200,000 (roughly US$7,700), the greatest fine stays insufficient.

Trademark candidates presently face another enrollment procedure. Following quite a while of grievances by U.S. also, other outside rights holders, Taiwan at long last relinquished its neighborhood characterization framework, contained 107 classes, for the 42 class global framework. In any case, the NBS currently requires a quite certain posting of products for each trademark application. Just the things recorded on an application will be secured by an enrollment. It is important that the NBS is slanted uniquely to acknowledge products explicitly recorded in its Trademark Manual, and frequently creates expensive office activities by requiring beneficial documentation on the side of things not recorded in its manual. Things not recorded must be recognized by submitting inventories, item tests or other such materials to demonstrate the idea of the items. By conceding security just to things recorded, the NBS can produce a bigger number of utilizations per class and in this manner higher income.

U.S. trademark proprietors ought to know that the NBS presently requires proof of utilization for every thing recorded on an enrollment endorsement preceding conceding recharges. In the event that adequate proof isn’t accommodated sure things, they will be erased. Also, general terms and expressions, for example, ‘and every single other great having a place with this class’ are not, at this point worthy. The NBS necessitates that candidates explicitly list every thing and give proof that it was utilized inside 3 years before the date of termination.

Protection of Trademarks for Commercial Purposes: Analytical Essay

Trademark

Type is the name, brand, logo or design or any combination of these used to distinguish the supplier or supplier from the business or any other person and to indicate the origin of the product. Trademarks are often used by manufacturers to identify names, ideas, logos and trademarks in the display of their products. But shapes, sounds, smells and colors can also be registered as trademarks. In recent years, trademark legislation has expanded to include clothing and flood protection. Devices capable of distinguishing virtually any name, name, symbol, or source of a content can be used as a trademark for certain restrictions. A type is an intellectual property that carries a familiar type of product, design, or feeling that identifies a product or service from a specific source, even the types used to identify a service, commonly known as a brand, from a commercial or legal perspective. Come on The product type can be an entry, label, a coupon or a product itself. In the interests of corporate ownership, product types often appear on organizational structure. It is officially known as a kind of intellectual property.[footnoteRef:1] [1: http://data.europa.eu/eli/reg/2017/1001/oj]

It should not be read to determine or compare a trademark denial for filing a trademark application. The exact reasons for this rejection are:

1. This mark is not included in the description of the mark. It’s already been discussed, so I won’t be back here.
2. The tag is not unique.
3. A product is a free description of a product or service.
4. A registered trademark is a name that is commonly used commercially.

If the applicant shows that the product has achieved independence, which means that people need to verify the product with you, not credit, details or badges, these three areas of rejection can be overcome. For example, the slogan ‘Compare Market’ was presented separately, but it turns out that it has acquired a different character and therefore has a functional brand.

There are some common areas of total rejection, such as the use of confusing or scary symptoms. Article marks also have certain limits to prevent the spread of patent errors in life, for example, allowing the same product to be protected as a registered trademark. For example, when designing a product provides you with enough value, it cannot be protected as a trademark because the design laws are so good that I will not go into the details of these exceptions as the topic of your podcast already discussed and more complex than sufficient. Reasons Rejected, Parties Can Only Assert Rights Above:

1. When there are trademarks such as the above and the registration refers to the same products and/or services.
2. When there is a product similar or similar to the previous one and the article refers to the same product or service. In this case, there may be some public confusion about the two product combinations.
3. Symptoms are received incorrectly or damage a good or different character in a previous, identical or similar sign. In short, this is where the brand supports the reputation of another type of Piggy.

These two relevant factors were compared with the overall customer experience. More specifically, the similarity of the phone, the visual and visual effects of the product will be taken into account. If they are intelligently separated, the average customer does not realize. If you use trademarks and/or services and determine whether they are identical or not, the actual use of the trademarks will be compared, among others, with the trademarks in question. Therefore, deciding whether a product is based on a relative rejection is a very difficult process.

Marks if you don’t lie

In case of trademark infringement, the screen refers to the prohibition of trademark applications. In summary, a trademark violation occurs when a third party uses a registered trademark in the context of a company related to a product or service:

1. The brand used by the author is similar to the registered merchant and is used for the brand registration team of the same product and/or service; anyone
2. The type of product used is the same or a registered trademark and is used in connection with a registered trademark or a similar product or service; Or finally
3. The brand used is similar to the registered trademark, which has a reputation for title and the use of a brand that damages or damages the character or brand.

How trademarks are protected for commercial purposes

Obviously, the first step is to use or use the product you are using. If the business is not yet operational or if it is part of the type of product, it is better to obtain approval before submitting the application. This will ensure that there are no conflicts with existing products. These two reasons are very important:[footnoteRef:2] [2: www.trademarkhost.com/european-union-trademark?gclid=Cj0KCQiA04XxBRD5ARIsAGFygj9l-hKgGbDwgt7NLWDfYbksMyVoR-s9D8VYb2Ea_eT0vKitqWe2N-oaAtj7EALw_wcB]

Firstly, the search for a trademark application in conflict with an existing trademark which fails to be filed will be judged, which is a waste of time and money.

Second, and more importantly, if the app works well, you are suing the current brand owner, you can waste time and money on the test, which can lead to repetition. Investments made in the original brand then completely disappeared.

If you already have a trademark, it is important to know and monitor the market so that no one can start using the same brand in a way that will harm your business. It can only invest in more sophisticated regulatory programs administered by the brand owner, such as corporate law, search for trademarks in Google and see if competitive results are displayed or if companies operate globally. if a competitive market is placed on the market and registered trademarks. Authorizations If no measure is taken for the implementation of a risk that the owner of a registered mark is guilty of an offense and thus losing the right to take legal action.

To do this, you use the songs that are playing, which is beyond the scope of the podcast. However, the best practice is that all brands that can be used or used at an early stage are much more powerful than the trademark rights listed.

When the EU trademark rules were recently changed, a new provision was added. Sur now hopes that the brand’s rules will guarantee full respect for fundamental rights and freedoms, including freedom of expression. At first glance, this is not surprising. Trademark law has never exceeded or exceeded the scope of fundamental rights such as freedom of expression. However, on closer inspection, it is clear that there are clear references to the fundamental rights of trademark rules and the rules of fundamental rights. Concerning trademark law, concerns trade The extension of trademark law beyond the historical beginning must be clearly addressed. In a sense, when trademark law largely prohibited the commercial origin of products or services to avoid consumer confusion and the simple word or number could be deleted, the risk of conflict of rights such as freedom of expression, like commercial use, was limited. Although trademark law is promulgated and protects well-known brands from non-pseudo-use, and new types of paint are adopted, the potential for conflict increases as the scope is broadly covered. At the same time, the law on fundamental rights has broadened in the sense that in recent years, the courts of the European Community have implemented a general restructuring of the interface between intellectuals from the European Community (CJEU) and national courts.

In this scenario, eCialt is one of the main countries in Germany, called the most popular sleep model EPC Alt Sleeper atractiva.The attractive shape of the shoe has received much attention in the media, but other l ‘corrected during lifting. To protect the EC-ALT market, they registered the Imagery brand in January 2017 under the EUIPO and the 3D brand in February 2017. On the other hand, the largest real market in the United Kingdom: X&Y launched a similar product, which was sold in the early 20s

Consequently, Echo-Alt violates X&Y in the UK, claiming that the sale of illustrated shoes violates the Echo-Alt brand. In my opinion, Eco-Alt has the right to sue for violation of X&Y, and X&Y has no right to sell prospectuses registered in trademark law.

After this situation, the following branding issues and policies are discussed:

1. Echo Alt is registered under decorative and three-dimensional marks, which means that digital symbols are symbols that contain only one image or an image with one or more words. Words from certain sources are also considered metaphors. Metaphors can be black and white or recorded in color. If the product itself or the product packaging has a special shape, for example aromatic bottles or alcohol bottles, you can register it as a three-dimensional mark. For the registration of three-dimensional signs, the form must be different from what is known on the market.
2. To register marks in EUIPO, a community must have a mark, which can include a word (with the person’s name), a design, a letter, a number, a color and a packaging of different sizes. products or products or words. A mark must also meet other requirements, for example, it must have a special mark so that the product and the service for which it is registered cannot be descriptive. Since 2017, the graphics presentation requirements of any brand have been removed, which allows the aroma to be saved, although this is extremely difficult. Then, ACIP Alt has the right to be a registered trademark in the field.[footnoteRef:3] [3: Eurorean Union Regulation article 9]
3. According to article 3 of EUTMIR, letter C), a shape mark is a mark which is a container which extends over three-dimensional shapes, including containers, containers, the products themselves or their appearance. The word ‘stretch’ not only constitutes these symbols, but also means verbal or decorative elements, labels, etc.

By accepting trademarks, trademarks of the European Union make certain exceptions in accordance with article. Article 9 European Union trademark regulations. The registration of the EU trademark has obtained exclusive rights. With the exception of the rights of the owners acquired or the EU preference for the date of service, where this EU logo is not authorized to accept the use of a label or a product during the operation of the owner by a third party:

• The mark is similar to the EU mark and is used as a sign in the EU for registered products or services;
• The mark is the same or similar to the EU mark and if part of the public is at risk of confusion, the product or service registered with the EU mark is used for the same product or service. The possibility of confusion is the possibility of associations between symbols and symbols;
• Mark’s mark is similar or similar to the EU trademark, it is used for a product or service that is similar, similar or similar to the EU trademark, while the answer has the same name in union and without its use. Logo of the European Union Abuse or theft of identity or individual reputation.

1. Trademark owners can file fraudulent charges which prohibit packaging, labeling or other preparatory measures related to the use of the substance when the substance is used in relation to the product or service, and there are a risk that such use is contrary to the owner and the owner. Rights. Brand owners can prevent similar or similar brands from being applied to content and prevent others from opposing, marketing, preserving, importing or exporting.
2. This is a violation of ESPC ,Alt, X and Y without the sale of products and loss of reputation for EPC Alt products.
3. Counterfeiting a registered trademark is the unauthorized use of a registered trademark or service mark registered with a product or service which can lead to confusion, fraud or misrepresentation of the source.

In the event of a violation, a violation is triggered by sending a stop sign and a warning letter with a declaration of cancellation. If this warning letter does not resolve the issue, the owner of the trademark (or other intellectual property rights) generally classifies the commission as an appropriate district. You must complain to the court. Both parties are to appear with a German lawyer as a criminal case for a lawyer (‘patent lawyer’), probably in cooperation with a patent lawyer (patent lawyer). Judges acting as applicants outside the European Union must ask the German courts to guarantee the protection of costs and expenses. The claimant must provide evidence of all the factors related to the identification of the crime. In the case of a German dispute, the conclusion is generally not that it is possible to work with information which cannot be justified by the document by providing evidence during the oral testimony. On the other hand, many parties make decisions on the basis of a written presentation of the parties and subsequently clarify the opinion of the court by an oral request to the president of the department and allow the parties to present their arguments and comments. The provision of formal evidence in a trademark infringement is largely confined to proving the difference in reputation or use of reputation; The likelihood of confusion is generally judged by the court as a question of law.

[footnoteRef:4] [4: http://data.europa.eu/eli/reg/2017/1001/oj]

Violation for punishment

Violations are broken down by law or the law, and civil penalties generally result in loss of copyright, patents or trademark owners for intellectual property. The criminal sanction can lead to imprisonment and heavy financial sanctions. The EPO can also ask for fines or compensation for writing down Alt’s reputation.

The European Union has been replaced by all references to society. Then the new control would be the European Union logo (RMU) and the Community logo would be called the European Union logo (RMU). The Internal Market Coordination Office (OHIM) will be the main European intellectual property organization (EUIPO). Regarding the future application of trademark law, the capitalists combine open standards for fundamental rights with a list of restrictions that explain the existence of a two-level framework, a framework generally recommended because it combines flexibility and transparency in the approval of courtrooms. Using your brand is as important as creating a brand. If you don’t, the brand value can be questioned and the brand value can be lost.

Protection of Well-Known Trademarks: Developments in India and the UK

Background/Introduction

The Trademarks Act, 1999, defines well-known trademark as, ‘a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.’ Well-known trademarks are protected across the nation and across categories of goods and services, which make them different from other trademarks whose goodwill and recognition is restricted. They can be protected, irrespective of whether they are registered or not, with regard to the goods and services which are similar to and for whom they have gained reputation.

Example of protection of a well-known trademark: Rolex Sa v/s Alex Jewellery Pvt. Ltd.

Rolex, incorporated in Switzerland was a manufacturer and distributor of premium watches. It filed a case against Alex Jewellery for manufacturing and selling artificial jewelry in Mumbai under the mark of Rolex. Further, the defendant owned a website named www.rolexjewelleryhouse.com.

Decision: The Court held that Rolex, being registered in 140 districts and having a reputation in India was indeed a well-known trademark. Therefore, the defendant was restrained under Section 29(4)(c) of the Trademarks Act from using the Rolex trademark in any way and was ordered to pull the website down.

Overview of the Problem

The Indian trademark law protects trademarks that are well-known. Indian intellectual property (IP) offices recognise well-known trademarks in India with regard to their national and international reputation. Section 2(1)(zg) states that “Well-known trademark is a mark which has become well known to the section of the public which uses such goods and services and use of that mark in relation to goods and services of other business would be considered as infringement as customers using the product would think that the goods and services given are in relation to the well- known brand.”

Well-known trademarks are of significant importance because they offer huge commercial value for whoever owns them. They can be called as an untapped asset of the company to which they belong. Infringement of the trademark refers to the unauthorised use of such mark. This creates a confusion among consumers about the quality, quantity and other factors of the product and damages the reputation of the brand. Hence, imitation of a well-known trademark is punishable under the law. For example, if a cola company uses a well-known trademark (say Thumsup) of which the company is not the original owner, then it is a case of trademark infringement and the company is liable to get sued in Court based on it.Although, registration is not a mandatory requirement for a well-known trademark, it is beneficial for the company to do so in order to protect the goodwill and reputation of the company.

The Trade Marks Acts of 1994 governs trademarks within the United Kingdom and the Isle of Man. It has come to replace the old Act which was passed in 1938. Section 56 of this Act talks about the well-known trademarks. It can be applicable to all marks which are known in UK, irrespective of whether the brand owner carries on business, or has goodwill there. The only condition for the mark to be a well-known mark is that “the brand owner should be a national of, be domiciled or have a real and effective industrial/commercial establishment in a country that is signatory to the Paris convention.”

Arguments or Main discussion related to identified issues

A well-known trademark was legally defined for the first time in Paris Convention of Industrial Property in 1883. The Paris Convention laid out the fundamental principle that would grant special protection to well-known trademarks but no procedure was laid down and therefore every country could come up with their own procedures for protecting a well-known trademark.

Countries around the world have laid down rules to protect unregistered well-known trademarks in accordance to their international obligations under the Paris Convention for the Protection of Industrial Property and the TRIPS agreement. Article 16.3 of the TRIPS agreement provides protection to ‘registered well-known trademarks’ if they satisfy the following conditions:

• That the goods and services for which the other mark is used or is seeking protection are not identical or similar to goods for which the well-known trademark has required its reputation.
• That the use of the other mark would indicate a connection between these goods and the owner of the well-known mark, and
• That his interests are likely to be damaged by such use.

Developments in India:

Trademark act of 1999:

The Trade Marks Act has laid out the basic requirements to classify a mark as a well-known trademark. The related provisions have been mentioned in sub-sections 6 to 9 of Section 11 of the Act. The Act says that, while determining a mark as a well-known trademark, the Trade Marks Registrar has to consider the following factors:

• (a) the knowledge or recognition of the trademark in the relevant section of the public, including knowledge in India of the mark;
• (b) the duration, ex,tent and geographical area of any use of such trademark;
• (c) the duration, ,extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trademark applies
• (d) the duration and geographical area of any registration of or any application for registration of that trademark under the Act to the extent they reflect the use or recognition of the trademark;
• (e) the record of successful enforcement of the rights in that trademark, in particular, the extent to which the trademark has been recognised as a well-known trademark by any court or Registrar under that record.

While determining the relevant section of the public, the Registrar has to take into account

1. the number of actual or potential consumers of the goods or services;
2. the number of persons involved in the distribution of the goods or services; and
3. the business circles dealing with the goods or services, to which that trademark applies.

Therefore, the law implies that if a trademark has already been determined as well-known in at least one relevant sections of the public in India by any court or the Tribunal, it is binding to the Registrar of Trade Marks to consider it well-known for its registration in India.

Duration of use: The law does not provide for any distinct method to determine the duration of use. However, the legal principle regarding it has been laid down by precedents like the ITC v/s Britannia Industries case where it was specified that “to acquire secondary meaning it is not necessary that product is in the market for number of years. If a new idea is fascinating and appeals to the consumers, it can become a hit overnight,” therefore automatically making it eligible for well-known status.

Documents required for filing an application:

• Statement of case – which has the claimant’s right on the trademark and describes the claim of trademark to be a well-known trademark.
• Details of successful enforcement of rights if the trademark has been recognised as well-known by the court in India or TM Registrar.
• Copy of judgment of any court or the Registrar where the trademark has been recognised as well-known.
• Evidences showing the claimant’s right and justifying his claim. Such evidences shall include data/documents showing-
• Use of trademark or any application filed for registration of trademark, or registration obtained.
• Annual turnover/ net profit of the claimant’s business.
• Actual or potential number of customers who fall/can fall under the said trademark.
• Publicity and advertisement of the said trademark along with the expenses incurred for it.
• Knowledge or recognition of the trademark in relevant sections of public across the globe.

Trademark Rules 2017

The recently enacted Trade Marks Rules of 2017 has eased the process of registering a mark as well-known, without going through the time-intensive procedures and expensive litigation proceedings, in a court of law in India.

Procedure: Rule 124 says that “any person may apply to the Registrar on the prescribed Form TM – M along with the prescribed fees of Indian rupees 100,000 for recognition of a mark as well-known.”

1. The application has to be submitted along with a “statement of case” which has to contain sufficient evidence and facts which prove the claims of the applicant to be true.
2. The Registrar will then review the submitted application to determine the eligibility of the applicant’s request on the basis of the provisions contained in sub-sections 6 to 9 of Section 11 of the Indian Trade Marks Act, 1999.
3. Further, the Registrar while processing the application can ask for any other supporting document, he thinks is appropriate for the cause.
4. Before detrademarka trade mark as well-known, the Registrar can give out a notice to invite objections from the general public. Any person who has any objection to the mark has to file a written objection to the Registrar within thirty days of the date of the Registrar’s invitation. If it is given that that there is no objection from the public or any unsustainable objection has been rejected, the mark will be identified and declared as well-known by the Registrar.
5. To inform the public of the inclusion of the mark as well-known, the mark has to be published in the Trade Marks Journal. The mark will also be included in the database of well-known trademarks, which is usually maintained by the Registrar.

• http://www.ipindia.nic.in/writereaddata/Portal/News/333_1_Well-known_public-Notice.pdf

Case on Trademark Infringement in Indian court: Kamal Trading Co. v/s Gillette UK Limited

In this case Gillette registered a case against the defendant who was using the mark of 7 O’ clock on their toothbrushes, which was known across the world as Gillette’s identity. The Mumbai High Court ruled that this mark was indeed a well-known trademark which was used extensively by Gillette in its shaving creams, razors, etc. The use of such mark by the defendant could lead to potential deception of the customer. Therefore, the court ruled in favour of Gillette while the defendant was asked to stop using the mark with immediate effect.

Developments in UK:

The Trademark Act of 1994 and subsequent EU Directive 2015/2436/EC and the EU Community Trademark Regulation (207/2009) have created several provisions in the UK wherein well-known trademarks could get the protection that they ought to. However, the conditions under which such classification may be done remain uncertain. This can be explained by the fact that if a mark is well known in at least one relevant sector of the public in a member state, it “shall” be considered to be a well-known mark by the member state. This kind of legislation leaves enough space for different interpretations and it is up to the discretion of the concerned authorities to decide about the status of such marks.

The subsequent ruling of The EU Intellectual Property Office (EUIPO) says that, even though the terms ‘well known’ and ‘reputation’ denote distinct legal concepts, the criteria for determining whether a trade mark is well known or enjoys reputation will usually be the same.

This can be further illustrated by the case of General Motors Corp v. Yplon SA Case where, the plaintiff, GMC, was the registered proprietor of the mark CHEVY in respect of motor vehicles amongst other things and used the mark generally in Belgium to designate vans and similar vehicles. The defendant, Yplon had registrations and used the same mark in relation to detergents, deodorants and various cleaning products. This case further underlined the meaning of ‘reputation’. It is given as follows- “If a reasonable buyer is not at all likely to think of the senior user’s trademark in his or her own mind, even subtly or subliminally, then there can be no dilution. That is, how can there be any whittling away if the buyer, upon seeing defendant’s mark, would never, even unconsciously, think of the plaintiff’s mark? So, the dilution theory presumes some kind of mental association in the reasonable buyer’s mind between the two parties and the mark.

Critical Analysis of law/regulation/case laws

Infringement of trademark falls under the purview of anti-competitive practices. Such practices can come in the way of consumer welfare, innovation and equal market access. Therefore, the focus should be on how to curb these kinds of practices to promote fair competition among stakeholders. In such a scenario, protecting well-known trademarks can be viewed as an instrumental tool of economic policy to allow all kinds of companies to sustain themselves in global markets. When trademarks are protected, they can lead to the establishment of brand equity and identity as well as a source of instant recognition. The laws which were implemented before the 21st century were pioneers in their own right, as they provided the starting point for the recognition and proper utilisation of well-known trademarks across nations. However, they were quite fundamental in nature as many firms found loopholes in these laws and engaged themselves in infringement. This was the case in underdeveloped and developing countries, where it was much easier to bypass regulations. However, in the recent times with the increase in globalisation and competition, all countries have taken special measures to ensure that these kinds of practices are restricted. Easy legislation of well-known trademarks in India, according to the 2017 law is an example of such developments.

Suggestions for identified issues

1. The Internet boom of recent times, coupled with the diminishing of international boundaries and universal access has made well-known trademarks more susceptible to infringement. In the Kabushiki Kaisha Toshiba case, the Court judged that well-known trademarks need to be protected not only in the country where they are registered but also everywhere else where they are widely known to a relevant section of the public. In this way, the owners of well-known trademarks will be incentivized to expand their business activities under those marks to other jurisdictions as well.
2. The main issue regarding well-known trademarks is that their recognition, to a large extent is up to the discretion of the competent authority, in most cases the Registrar of the country/state where the company is seeking a trademark. This leads to subjectivity in determining the status of such marks. This kind of problem can be eliminated by maintaining a proper journal where all kinds of registered/well-known trademarks can be listed. Such registers do exist in India as of now.

Conclusion

In case of infringement of trademarks, the following remedies are available-

• Prevent registration of deceptive or similar trademark in any related/ unrelated business
• Requesting removal of infringing trademark
• Prevent incorporation of trademark
• Ask for punitive damages in the court of law

Till the present day, about 100 trademarks have been identified as well known by the Indian court. This number is expected to rise very soon as more companies are becoming aware about the importance of registering their trademarks. Recent changes in the existing laws has made the situation more favourable for businesses.

The Multidimensional Question of 3 Dimensional Trademarks: Analytical Essay

Introduction

The product market today is highly competitive. If a brand does not constantly evolve itself, it is at the danger of failing to satisfy its customers. To keep reinventing itself, it must ensure protection to the assets that bring value to the company. For this reason, it is important to give recognition to non-conventional trademarks, such as shape of goods, 3D marks, sound marks, smell marks, etc., through which we can identify various products and services provided by companies. A company may use traditional trademarks to distinguish itself in the market. Traditionally, trademark protection was only given to words, symbols, devices, and other 2D marks. However, with the changing trends in market, non-traditional marks came into the picture. Chanel No. 5 came to be recognized by its smell, Yahoo came to be recognized by its Yahoo yodel, and Coca-Cola vied to be recognised by the shape of its glass bottle.

Today, non-conventional trademarks are recognized across various jurisdictions. In India, in the year 1999 remodelled its legislation and recognized non-conventional trademarks. Section 2(1)(m) of The Trade Marks Act (hereinafter, ‘the Act) defines “mark” to include shape of goods, packaging, colour marks, etc. This blog shall focus on the legal position of the trademark regime with regard to 3D trademarks.

Ferrero Rocher Conundrum

On 19th December 2019, the Intellectual Property Office of Singapore passed an order declining the grant of a 3D trademark to the Italian chocolatier Ferrero. The company has a trademark over the word ‘Ferrero Rocher, which it uses for its chocolate-covered praline balls. Each chocolate ball is wrapped with crumpled golden paper, has an oval sticker with the word mark ‘Ferrero Rocher, and is seated on a pleated brown paper base. Ferrero had applied to protect this unique packaging of the chocolate as a 3D trademark in 2013. However, in the order, IPOS declined to register the trademark stating lack of distinctiveness. It stated in its order that Ferrero had failed to show that the mark had acquired uniqueness of its own. It further stated that it has not been proven that customers would associate such a packaged chocolate solely with Ferrero Rocher without the oval sticker. In refusing to register the trademark, the IPOS reasoned that the elements sought to be protected did not make it distinctive, but could be merely looked at as decorative packaging material[footnoteRef:1]. [1: Singapore IPO Rejects Ferrero Rocher’s 3D Mark, available at: https://ennobleip.com/news/singapore-ipo-rejects-ferrero-rochers-3d-mark-20122019/]

3 Dimensional Trademarks

A 3 Dimensional mark can be applied for when a product stands out in the relevant product market due to its shape or its packaging[footnoteRef:2]. Applications for a 3D trademark are assessed by various factors. It is not a traditional trademark, in the sense that it does not comprise 2D elements of merely words, numerals or figures. It is in fact a tangible component of the product. In the above case, the packaging of the Ferrero Rocher chocolate would constitute to be a 3D mark. Other examples may include the shape of the Coca-Cola bottle, the 4-bar shape of the KitKat chocolate, and the packaging of a Toblerone chocolate bar. [2: 3-Dimensional Trademark Registration India, available at: http://www.trademarksindia.net/three-dimensional-trademark-registration-3-d.php]

In such cases, the paramount question is whether the application mark is distinguishable from other products by the virtue of the shape, or if it has acquired a well-known reputation due to that shape or its packaging. The court does not merely look at how such products are marketed and advertised, but it looks at the public reception of the product. If the shape or its packaging has become interlinked with the good itself, and the shape/packaging reminds its consumers instantly of the good, it plays a pivotal role in granting the trademark.

Position in India

In India, the Trade Marks Act 1999 provides for certain conditions to be fulfilled for a mark to be a trademark. Section 2(1)(zb) lays down the following conditions:

1. The mark should be capable of being represented graphically
2. The mark should distinguish the goods or services of one person from those of others.

This implies that even non-conventional marks must comply with the above-mentioned conditions to be a trademark. The condition of graphical representation becomes of particular relevance then. Smell marks, sound marks, shape marks, colour marks must be represented graphically. Fortunately, India has always welcomed non-conventional trademarks. Indian Trademark Registry granted protection to the shape of ZIPPO lighters way back in 1996[footnoteRef:3]. India’s first sound trademark was issued to Yahoo in 2008[footnoteRef:4]. India has also developed its law to accommodate and address the concerns relating to graphical representation of non-conventional trademarks and has issued a Manual of Trademarks, Practice and Procedure in 2015 (hereinafter, the “Manual”) to aid the applicants. The Manual lists down the requirements to be fulfilled by the applicant in cases of non-traditional trademarks, including smell marks, colour marks et al, along with adhering to the requirements under Section 2(1)(zb). [3: The Shape Mark Conuncdrum vis-à-vis Acquired Distinctiveness, available at: http://www.mondaq.com /india/x/612218/Trademark/The+Shape+Mark+Conundrum+VisVis+Acquired+Distinctiveness] [4: Yahoo Awarded India’s First Sound Mark; Nokia in Queue, available at: https://www.livemint.com/Home-Page/5z2B1NQUy3YyPkpRDp789M/Yahoo-awarded-India8217s-first-sound-mark-Nokia-in-queue.html]

3D trademarks include both shape of goods and packaging. Section 9(3) of the Act lays down that a mark shall not be registered if it consists of (i) shape of goods which results from nature of goods themselves, or (ii) shape of goods which is necessary to obtain a technical result, or (iii) shape which gives substantial value of goods.

The Manual elaborates that the purpose of Section 9(3) is to ensure that the common shape of goods does not get monopolised, and should be free for the public to use. Apart from that, Rule 29(4) of the Trade Mark Rules, 2002 lays down that when applying for a trademark of a shape mark the graphical representation must be in the form of a perspective drawing showing all features of the mark, accompanied with an accurate description of the constituent features of the mark. The Manual also provides that packaging shall be deemed to the shape of good, where the good, due to its nature, can only be traded in that packaged form[footnoteRef:5]. [5: Manual of Trademarks, Practice and Procedure in 2015, Chapter II, Serial No. 12.2.7l]

This fortifies the argument that in India, the legal framework is such that it welcomes the registration of 3D trademarks. If a trader has applied for a shape trademark, or packaging, according to the prescribed rules and can show that the said mark distinguishes his products from the products of other players in the market, there is a positive inference that such trade mark shall be granted registration.

Will Ferrero Rocher meet a sour end in India?

While Ferrero Rocher was not granted a 3D trademark over its packaging in Singapore, the situation is entirely different in India. In the 2018 case of Ferrero Rocher v. Ruchi International[footnoteRef:6], the Delhi High Court awarded damages to Ferrero, against a Chinese manufacturer for infringing its trade dress. Ferrero had relied on the recognition of ‘Ferrero Rocher’ as a well-known trademark, and had claimed that the defendant violated its trademark by copying its trade dress. The court reasoned that the similarity in the packaging between Defendant’s products and Ferrero’s chocolate infringed the latter’s rights under Section 29(5) of the Act. The court decided to accord the trade dress protection as a well-known trademark within the meaning of Section 2(1)(zg) read with Section 11(6) of the Act. An implication of this is that Ferrero Rocher now has trademark over its packaging, i.e. it has been granted a 3D trademark. Falling in line with other precedents, this judgement also gave a sweet victory to Ferrero. [6: Ferrero Spa v M/s Ruchi International (CS(COMM) 76/2018), Delhi High Court.]

The author believes that one of the most pivotal considerations in granting a non-conventional trademark is whether or not it has acquired significant distinctiveness. There must be firm evidence to show that customers can recognize the packaging without the associated word mark. Mere evidence of advertising in the packaged form cannot substantiate consumer recognition. It must also be shown that the packaging of Ferrero Rocher has in fact acquired enough distinctiveness to be regarded as a well-known trademark in the relevant product market.

Therefore, in all cases relating to 3D trademarks specifically, the following factors need to be taken into consideration:

1. Whether the shape of the good is enough to distinguish it from other goods, without the aid of other word marks?
2. Whether the shape of the good has been graphically represented in a perspective drawing by the applicant?
3. Whether the shape of the good results from the nature of the good or to obtain merely a technical result?
4. Whether the shape of the good indicates instantly to the consumer the origin of goods from that particular trader?
5. What will be the impact on other traders if the shape of good is granted a trademark, i.e. if the trademark will give the trader dominance in use of a common shape?
6. Whether there is evidence that the shape has functioned as a mark for a long period?
7. Whether the shape has goodwill attached to it?

In granting a trademark to non-conventional marks, courts and the Trade Mark registries should consider all relevant factors to balance the interests of the trader applying for the trademark with the interests of other traders who may be using elements of such trademarks in good faith. Consumer recognition and acquired distinctiveness also becomes an important factor in granting a non-conventional trademark. Be as it may, India is gradually becoming an agreeable market for traders applying for non-conventional trademarks, and the laws in India also aide in the same which is a favourable step towards the growth of Intellectual Property.

Case Study of ‘Teen Dreams” Trademark: Refusal of Registration on the Basis of Confusion

#1 Concurrent use registration

Rule: 15 U.S.C. §1052(d) That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; …. [footnoteRef:1]; Dawn Donut Rule. [1: 15 U.S. Code]

Facts: Since 2015 trademark “Teenage Dream” has been used by Fashion Nova in 35 states. There is a state registration of this trademark in the state of California (for clothing).

Discussion: Fashion Nova is the owner of identical trademark registered in the state of California for the same category of products – women’s clothing. It is also stated that Ms. Perry decided “to work on a denim clothing line specifically featuring blue jeans”, however, it is enough that goods are related (apparel items) and it’s not necessarily that they shall be identical. Thus, the basis for opposition – “likelihood of confusion”.

The rights of Fashion Nova are not geographically limited exclusively to the state of California. Common law rights in a trademark were established in other 34 states, regardless of the registration status.

Registration of a “Teenage Dream” trademark (geographically limited) can be based on the rights provided by concurrent use of the trademark with the Fashion Nova as a common law owner of a conflicting trademark. However, the application can be filed on the basis of actual use in commerce and not on Ms. Perry’s intent to use a trademark. Thus, after providing a statement of use to prove that a trademark is actually in use Ms. Perry can seek concurrent use registration.

Also, I would like to mention that Ms. Perry can show the good faith intent to use the mark (according to 15 U.S.C. § 1051 § 1 (b)(1)) because since 2010 Teenage Dream clothing (in particular, t-shirts printed with the words “Teenage Dream”) has been sold by Ms. Perry’s concert promoter. However, I assume that words “Teenage Dream” did not function as a trademark (could be considered as a part of design and not as source indicator). Thus, common law rights in a mark were not established, even though concert merchandise with “Teenage Dream” brought millions of dollars to concert promoter and Ms. Perry.

Conclusion: Ms. Perry has a bona fide intent to use the trademark “Teenage Dream”.

#2 “Teen Dreams” trademark – refusal of registration on the basis of confusion

Rule: 15 U.S.C. § 1052 §2 No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it –

… (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, …, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive[footnoteRef:2]. [2: 15 U.S. Code]

Facts: Trademark “Teen Dreams” has been federally registered since 1990. Trademark owner – Starline Publications, Inc. Goods/services: magazines.

Discussion: “Teenage Dream” is similar to a “Teen Dream” trademark. However, the key issue to be decided is not the “similarity” but “customers’ confusion” as to the source of goods/services. A likelihood of confusion will exist if goods/services are related. Goods and services for the mark “Teen Dreams” do not relate to t-shirts or other apparel items. This mark stands for magazines, thus, I believe that it’s unlikely that customers will mistakenly think that the source is the same.

Conclusion: Since in our case we have almost identical marks but for unrelated products, there is no ground to believe that the use of both marks will cause a confusion.

1. II. How will the trademark examiner react to Morgan’s in-use application? Will Morgan be able to register the mark “Teenage F**K’N Nightmare”? Why or why not?

To answer this question I would like to present the following issues for consideration:

1. Does “Teenage F**K’N Nightmare” printed on products function as a trademark?
2. Whether the mark has already been used in commerce?
3. Is it possible to register the mark that contains the word F**K’N?

Summary: Trademark “Teenage F**K’N Nightmare” shall be refused in registration since it doesn’t function as a trademark and it wasn’t used in commerce.

#1 Functioning as a trademark

Rule: 15 U.S. Code § 1127 – Trademark is used by a person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, ….”[footnoteRef:3]. [3: 15 U.S. Code]

Facts: The words “Teenage F**K’N Nightmare” were printed on products.

Discussion: Firstly, for Morgan it’s important to show that trademark “Teenage F**K’N Nightmare” is used with the goods listed in his in-use application in a way that customers will consider it as a source indicator. Actually, it shall be shown that trademark is used in such manner that customers will definitely be able to identify the source and on this basis consider whether to purchase the goods or not. According to the facts the words “Teenage F**K’N Nightmare” were only printed on Morgan’s products (t-shirts, hats and phone cases). Customers would rather perceive them as a part of design, part of the product itself and not as a source indicator. I can name the following examples of how to prove that trademark is actually used in connection with Morgan’s products: label on the neckband of a t-shirt or tags affixed to the products[footnoteRef:4]. [4: https://www.uspto.gov/trademark/laws-regulations/specimen-refusal-and-how-overcome-refusal]

Conclusion: In order to function as a trademark words “Teenage F**K’N Nightmare” shall be capable of identifying the source of products. Since customers will not have associations with the source of the products, “Teenage F**K’N Nightmare” would not function as a trademark.

# 2 Use in commerce

Rule: Under 15 U.S.C. § 1051 §1 (a) the federal registration may be requested by the owner of a trademark if such trademark is in use in commerce[footnoteRef:5]. [5: 15 U.S. Code]

The term “use in commerce” is defined in 15 U.S.C. § 1127. In particular, the following conditions shall be met:

1. mark is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
2. the goods are sold or transported in commerce[footnoteRef:6]. [6: 15 U.S. Code]

15 U.S.C. § 1127 § 45 defines the word commerce as “all commerce which may lawfully be regulated by Congress”[footnoteRef:7]. [7: 15 U.S. Code]

According to Article 1 Section 8 Clause 3 of Constitution – The Congress shall have Power to regulate Commerce with foreign Nations, and among the several States, and with Indian Tribes[footnoteRef:8]. [8: U.S. Constitution]

Facts: Morgan decides to sell via his website products with printed words “Teenage F**K’N Nightmare”.

Discussion: For federal registration of a trademark it must be shown that such trademark has already been used in interstate commerce. Morgan should show that commerce occurs at least in 2 states. As to the website selling the goods at minimum the following information shall be available: the product for sale, its price as well as shopping cart button[footnoteRef:9]. Thus, the website shall contain sufficient ordering and purchasing information. As one of the examples of showing the interstate commerce I can name “Shipping & Delivery terms” at the website (containing information regarding the shipping of orders within the US). However, it’s not enough to show only the information at website proving that Morgan defines his target market as customers from different US states. It shall be shown that products have actually been provided to someone in 2 or more states. [9: https://www.uspto.gov/trademark/laws-regulations/specimen-refusal-and-how-overcome-refusal]

According to the facts “Morgan decides to sell… and has filed an application”. Thus, there are no pieces of evidence showing use in commerce. If I were Morgan, I would decide to file an intent-to-use application (providing that the words would function as trademark and not as a part of design).

Conclusion: In order to register a trademark Morgan shall show current interstate use of the trademark in commerce. Use in a commerce means that goods with placed on them trademark were sold or shipped to customers from different states. Simple advertising of goods at a website is not enough to establish use in commerce.

#3 Nature of a trademark

Rule: Iancu v. Brunetti, 588 U. S.__(2019)

Facts: Morgan Days has filed an in-use application on the mark consisting, in particular, of the word “F**K’N”.

Conclusion: “F**K’N” itself and as a part of the “Teenage F**K’N Nightmare” can be registered as a trademark provided that all other requirements are met.

1. III. (1) Ms. Perry wishes to file a lawsuit in the U.S. District Court for the Central District of California. Who should be the parties to the lawsuit, what causes of action should be plead, and how will the trial court decide the issues?

To answer this question I would like to present the following issues for consideration:

1. Can physical appearance be protected as a trademark?
2. Trademark infringement claim vs. False endorsement claim

Summary: Defendant – Fashion Nova; cause of action – false endorsement (unauthorized use of Ms. Perry’s identity in connection with Fashion Nova’s products; decision – in favor of Ms. Perry.

# 1 Physical appearance as a trademark

Rule: 15 U.S.C. § 1127 defines trademark as “any word, name, symbol, or device, or any combination thereof”[footnoteRef:10]. [10: 15 U.S. Code]

15 U.S. Code § 1127 – Trademark is used by a person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, …”[footnoteRef:11]. [11: 15 U.S. Code]

Facts: Katheryn Hudson is a well-known celebrity presented to the public under the stage name Katy Perry. Katy Perry has a distinct physical appearance in her “Teenage Dream” music videos – hairstyle, eye makeup, clothes, poses. Beginning in 2010 – “Teenage Dream” concert merchandise. Model with a “striking physical resemblance to Ms. Perry” promoted Fashion Nova’s “Teenage Dream” clothing line.

Discussion: Since the term trademark includes, in particular, “any symbol”, trademark law may protect the physical appearance as well, provided that it is used in connection with goods and services and functions as a source identifier for those goods and services. In order to consider Ms. Perry’s physical appearance as a trademark the following facts can be taken into account: Katy Perry as a “stage persona” is presented to public by Katheryn Hudson in a particular way and has some distinctive features, namely, hairstyle, makeup, poses, etc., thus, not only the words “Katy Perry” can be protected as a trademark (that successfully have been registered by Ms. Perry), but also the physical appearance. I do believe that Ms. Perry identity is a “powerful brand” that can function as a trademark.

Conclusion: Physical appearance may be protected as a trademark if it is used in connection with goods/services and functions as a source identifier for those goods/services. Common law trademark rights may be established.

#2 False endorsement claim

Rule: 15 U.S.C. § 1125 § 43 (a) (1) (A) – Any person who, on or in connection with any goods or services … uses in commerce any word, term, name, symbol ……. which — is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person… shall be liable..[footnoteRef:12]. [12: 15 U.S. Code]

Facts: as defined in #1

Discussion: 15 U.S.C. § 1114 §32 governs only registered trademark infringement claims. Ms. Perry can protect her rights under 15 U.S.C. § 1125 § 43.

Ms. Perry is a well-known celebrity and contributed a lot of efforts to built up her unique “public image”, create her own mark. There are no doubts that Ms. Perry can be easily recognized in the crowd. Due to the facts we can conclude that the similarity of Ms. Perry’s look-alike was strong. Fashion Nova promotion was aimed at the same target marker – women and teenagers. To my mind, Fashion Nova intentionally used Ms. Perry’s look-alike, who has very distinctive features and style, in ad campaign with the purpose of customers confusing thinking that Ms. Perry sponsored or endorsed their products. It was a kind of imitation of Ms. Perry’s identity. According to the facts customers were not confused as to the personality of a model and didn’t believe that it was Ms. Perry, however, it is still possible that customers could be confused as to the sponsorship or endorsement.

Conclusion: Fashion Nova’s ad campaign created a false impression of endorsement or affiliation/sponsorship in the minds of potential customers between their products and famous celebrity.

1. III (2) Are there any other legal issues that Ms. Perry could pursue outside of this lawsuit?

To answer this question I would like to present the following issues for consideration:

1. Whether the domain name can consist of a trademark taking into account that website is/is planned to be used for commercial purposes?
2. Can such use of a trademark constitute a trademark infringement?
3. Can such use of a trademark be defined as Cybersquatting?

Summary: Yes, to my mind, there is one more legal issue that Ms. Perry could pursue. Using of her trademark “Katy Perry” for offering competing goods constitutes bad faith and can be defined as “Cybersquatting”. Thus, Ms. Perry may brought against Morgan Days trademark dilution claim.

Rule: 15 U.S.C. § 1125 § 43 (d)(1)(A) (Anti-Cybersquatting Piracy Act (ACPA)) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—

1. has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
2. registers, traffics in, or uses a domain name that— …

• (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or …[footnoteRef:13]. [13: 15 U.S. Code (Anti-Cybersquatting Piracy Act (ACPA))]

Facts: Morgan Days is the owner of the websiteWeHateKatyPerry.org. Trademark “Katy Perry” is federally registered for entertainment services, apparel, fragrances, and cosmetics. Morgan Days decides to sell the products (t-shirts, hats, phone cases) via his website.

Discussion: In this case domain name consists of trademark “Katy Perry” as well as critical commentary – “we hate”. One of the main issues for consideration can be defined as follows: Whether such use of trademark is permissible for commercial purposes? As far as I understand initially this web page was created exclusively for criticism (“gripe site”) which I consider as permissible use of “Katy Perry” trademark since the domain name contains the indication of the website nature – criticism of famous celebrity. Thus, the non-commercial use of “Katy Perry” trademark as the part of a domain name of Morgan’s website doesn’t constitute any infringement and can be protected as a “free speech”.

However, according to the facts Morgan decides to change the non-commercial use of the website into commercial. That’s not the option for Ms. Perry to proceed against the Morgan’s website with a trademark infringement claim under 15 U.S.C. § 1114 § 32 (1), since trademark infringement is defined as 1) use in commerce of a registered mark 2) in connection with the sale, offering for sale, distribution, or advertising of any goods or services 3) which is likely to cause a confusion[footnoteRef:14]. Use of “Katy Perry” trademark can’t be defined as infringing because the key issue is “likelihood of confusion” caused by such unauthorized use. Potential customers for sure will not be confused as to the source of goods. [14: 15 U.S. Code]

I would suggest Ms. Perry to proceed with “Cybersquatting claim”, since Cybersquatting is defined as 1) registration as a domain name 2) of a trademark 3) that is distinctive or famous 4) with a bad faith intent to profit. In our case Morgan uses famous mark for offering competing goods, thus, it can be considered as “bad faith” intent on profiting the mark. Moreover, as for me it’s clear enough that those goods have a direct link to Katy Perry and her “Teenage Dream” concert merchandise due to the printed words “Teenage F**K’N Nightmare”.

Conclusion: If there is no possibility of customers’ confusion, use of trademark can’t be defined as trademark infringement under 15 U.S.C. § 1114 § 32. Registering a trademark as a part of domain name with intent to offer and sell competing goods may be defined as Cybersquatting.

Trademark under the Pakistani System Versus International System: Comparative Study

Abstract

Traditionally, trademarks were considered as convenient tools for source identification and were granted legal recognition on this premise. However, more recently, trademarks have progressed in a new yet challenging medium as an effective tool for both corporate and social communication.

Given the dilemma, this thesis aimed to evaluate and analysis the current system for trademark in Pakistan and to propose change accordingly.

The thesis argued that which and where Pakistan Trademark legal system is lacking by analytical approach by internal laws and as comparatively with USA, UK, China, Japan and international standard prescribed by different treaties. In this thesis, I will also discuss protection level available to traders in Pakistan, as trademark is vital to the promotion of trade and the protection of customer interest. Therefore, study on protection of trademark with system/mechanisms in Pakistan will be meaningful. As it is clear from the interpretation of court in the case[footnoteRef:1], it was held that the very purpose of enactment of Trademark Ordinance 2001, as it appears from the preamble, is to provide for registration and better protection of trademark and for prevention of the of fraudulent marks; and that an unwary purchaser should not be deceived and a confusion should not arise in the mind of a common man so as to mislead him to purchase product of one manufacturer for the other considering it to be same, which he actually wanted to purchase. [1: ]

The Background and General Overview of Thesis

Currently, few could realistically argue against the significance of trademarks in modern society. Yet, despite the recognition of the importance of trademarks, mirrored in their explicit legal protection under most constitutions the topic was until recently overshadowed by other fields of intellectual property. Even though I have faced many problems while doing my research on thesis because Trademark books are not very common and available in Pakistani markets and not even internet material is having any connection with Pakistan simply because not more research has been done on Trademarks. I used to visit many places on regular basis and meet many people throughout my thesis in order to gather some information on my topic. Because of such problems I was compelled to limit my research based on Pakistan.

And this cause me to think again and again that which methodology I should adopt to explain fully what I really want to discuss in my thesis. So finally after lot of discussion with my supervisor, I wasn’t having any other option but to adopt multiple methodologies all together. So my thesis is mainly based on Analytical & Quantitative research.

My main agenda was to work on trademark and by any mean it may be a source for awareness in Pakistan. While doing my research, I experienced that mostly researches done on US and UK which motivated me to do highlight Pakistan with comparison to other countries and which is very difficult task for me as I am facing too much difficulties while gathering the material due to unavailability of books in our market and unawareness about the trademark importance in our society. In the start it was so disturbing and so hard for me to make my research so I was thinking to change my Topic but I realize the need when I saw lack of awareness in our society about trademark. I was running low budget but even though somehow I managed to get books from India as these were referred to me, which costs me heavy but by the time I was so compassionate and took challenge to complete this thesis and wish to break the ice in trademark industry of Pakistan.

Research Purpose and Objectives

Given the broad nature of the issues highlighted above, it is important to confine them for the purpose of this thesis. Therefore, the main question that the thesis will focus on: –

How should we improve modern trademark functions without harming the interests of any of the market players involved? To answer this research, question the thesis will carry out the analysis through the lens of the Internal Level. This will facilitate the understanding of the modern realities of trademarks and will add a practical dimension to the debate.

To answer this question, the following research objectives, need to be fulfilled:

1. To discuss the evolution of trademarks and their relationship to other related concepts such as China, UK, USA, Japan,
2. To critically analyze both the traditional functions and the modern functions of trademarks,
3. To provide theoretical grounds on which the modern functions of trademarks can be incorporated into the Pakistani trademark system,
4. Trademark can play vital role in china Pakistan economic corridor? Or Can trademark boost cpec development and can play vital role in Pakistan Business? Or Can trademark resolve Business investment protection issues in cpec development
5. Unsigned trademark treaties are obstacle in development of Pakistani Business
6. Trademark Procedural mechanism making it lot difficult to resolve modern era needs in Pakistan
7. Lack of trademark Law enforcement encourages piracy makers in Pakistani Business markets
8. Internationally recognized standards of Trademark unavailability cause Pakistani Business growth slow down.
9. Why international investors are not interested in Pakistan
10. Trademark law and accountability in Pakistan
11. What cause UK to progress more in Trademark and what makes Pakistan to grow slowly
12. What cause USA to attract international investors and why not Pakistan
13. What are the reasons of believing investors in UK to invest and why Pakistan is back to give such protections?
14. What are the pros and cons of Trademark law in Pakistan?
15. What should government do to improve and implement trademark reforms in Pakistan
16. Why Pakistani traders/manufacturers are avoiding trademark
17. What benefits can take investor of small industry if trademark protection is given

Methodology

Given that the aim of this thesis is to Analyze features of the Trademark and to propose change accordingly, elements of doctrinal research will be used. Under a doctrinal analysis, the essential features of the legislation and case law will be critically examined. Then all the relevant themes will be combined to establish an arguably complete statement of the relevant law. Therefore, this thesis will commence by locating the sources of the law that are relevant to answering the research questions, and will then proceed to interpreting and analyzing the text. Doctrinal analysis can take a variety of forms, including theoretical research and reform oriented research. For the purpose of this thesis, a reform oriented approach, which is premised on the idea of evaluating the adequacy of existing rules and recommending changes, will be used.

However, relying on pure doctrinal analysis for the purpose of this thesis could be inadequate. In discussing the modern functions of trademarks, it is important to address the derivations of the law, its effects on the society, and its effect on the consumer. Therefore, an interdisciplinary approach will also be employed. Such research method involves any form of integration or synthesis between two or more disciplines. From a legal perspective, interdisciplinary research involves the connection of traditional methods of legal research with methods and techniques from other disciplines. In particular, for the purpose of this thesis, Overall, a hybrid approach which employs doctrinal research in addition to interdisciplinary research will be used to address the research objectives.

Structure

This thesis is mainly divided into Four Parts in addition to an introduction (Part One) and conclusion (Part Four).

Part Two:

This chapter will define Trademark under Internal Law for better understanding to subject. In light of any legal subject the source is always standard and as far as Trademark is concerned every country is always trying to match their standards to internal law and held accountable where they are lacking.

In my thesis internal law and Pakistani jurisdictional structure of Trademark is analyzed. This debate results to identify where Pakistani system is standing with the lenses of Internal Law.

Part three:

The chapter emphasis on First Class Countries Jurisdictional Structure of Trademark, basically to have solid analysis results to match Pakistani jurisdictional Structure of Trademark, unless you will not sneak into other jurisdictional systems you won’t have idea how fast they growing the economy and how they are taking initiatives to improve their Trademark Jurisdiction systems.

Part four:

Building on the sneak peek discussed in Part three, this chapter explores the realities of the modern functions and discusses whether they should be legally recognized in Pakistan also. The chapter is divided into Three main parts. The first part digs into the comparative conclusion with Internal Trademark Law and Pakistan.

And on Second multi-jurisdictional systems are critically analyzed with Japan, USA, UK and China to match Pakistani Trademark structure and where we are lacking.

On Third, there are recommendations as a critique that how can Pakistan improve in Trademark and what benefits can be there in this regard.

Bibliography

1. Abbreviations
2. CFI Court of First Instance
3. CTMR Community Trademark Regulation
4. EC European Community
5. ECJ European Court of Justice
6. EU European Union
7. FTDA Federal Trademark Act
8. INTA International Trademark Association
9. ITU Intent-to-Use
10. OHIM Office for Harmonization in the Internal Market
11. PTO Patent and Trademark Office
12. TLRA Trademark Law Revision Act
13. TRIPS Trade-Related Aspects of Intellectual Property Rights
14. WIPO World Intellectual Property Organization XV
15. The concept of trademark