WEBVTT Kind: captions Language: en-IN 00:00:24.160 --> 00:00:32.680 a very warm welcome in module 1 of week six of the course intellectual property disputes code 00:00:32.680 --> 00:00:40.680 practices and enforcement now this week is dedicated for trademark and we will go into 00:00:40.680 --> 00:00:46.920 details of the IP disputes related to trademark the enforcement and what are the different 00:00:46.920 --> 00:00:54.600 challenges across various jurisdiction in this module we will get the idea just introduction 00:00:54.600 --> 00:01:00.200 about a trademark infringement we will try to understand what exactly is infringement 00:01:00.200 --> 00:01:08.360 and what is exactly the passing off so we will go into the details of that so if you check here 00:01:08.360 --> 00:01:15.360 that when we are talking about a trademark in a week two if you remember we have shared with 00:01:15.360 --> 00:01:23.200 you just basic details about the tradmark so just I will I will give you idea considering 00:01:23.200 --> 00:01:29.960 now the IP disputes because we should know the the details the conceptual understanding which 00:01:29.960 --> 00:01:36.800 which is important when we are going into the details about the IP disputes so when 00:01:36.800 --> 00:01:43.040 we are talking about this trademark definition and trademark types we are very well aware that is a 00:01:43.040 --> 00:01:50.560 very important thing that it is a distinctive sign so when you are dealing with the IP disputes also 00:01:50.560 --> 00:01:59.160 we have to remember that if that distinctiveness is like affected or if there is any issue related 00:01:59.160 --> 00:02:07.480 to distinct iveness of that particular trademark then what will happen that dispute will arise okay 00:02:07.480 --> 00:02:12.520 so it is because that that is a very important characteristic of a trademark that is a it is a 00:02:12.520 --> 00:02:19.200 distinctive it may be sign it may be World it may be symbol it may be phrase it may be some design 00:02:19.200 --> 00:02:25.720 right it may be some Mark so or it may be the combination of all these things then maybe some 00:02:25.720 --> 00:02:32.960 color combination may be there right so all this is a very specific to that particular trademark 00:02:32.960 --> 00:02:40.240 and that distinguishes the source of goods and services of one party from the other party 00:02:40.240 --> 00:02:46.960 so dispute arises if there is any common thing between the two trademarks the distinctiveness is 00:02:46.960 --> 00:02:55.080 if like challenged if it is affected the trademark dispute arises okay so if you see it is like 00:02:55.080 --> 00:02:59.840 when we talk about the that trendmark obviously it gives a source identification 00:03:00.800 --> 00:03:07.440 that who is offering that particular goods or services so for example if you just see the team 00:03:07.440 --> 00:03:14.520 and if that t one t how it is presented it will determine whether it is a Tata whether it is a 00:03:14.520 --> 00:03:21.280 toyato right so that that one word or H if it is take whether it is a Hundai whether it is Honda 00:03:21.280 --> 00:03:28.160 so that Source identification is there considering the trademark quality assurance if we have already 00:03:28.160 --> 00:03:34.040 discussed that thing so it gives a that what quality of that Goods or that services will be 00:03:34.040 --> 00:03:39.880 there that will be determined by that particular trademark obviously brand differentiation will be 00:03:39.880 --> 00:03:45.800 there Goodwill protection is there and creation will be there it it is a great marketing tool for 00:03:45.800 --> 00:03:52.280 your business actually then it gives we can say the legal representation obviously to that 00:03:52.280 --> 00:03:57.760 when you are doing the registration of a trademark it gives you the legal protection so registration 00:03:57.760 --> 00:04:04.320 if you want to take help of a trademark ACT registration is a very important we have already 00:04:04.320 --> 00:04:09.480 seen the types of trademarks like it may be a word mark it may be word it may be letter it may be 00:04:09.480 --> 00:04:16.240 number it may be combination of that okay so for example it may be like IBM so we can understand 00:04:16.240 --> 00:04:22.360 what exactly the organization is or 7eleven we can easily appreciate which is that offering who 00:04:22.360 --> 00:04:28.320 is offering that particular product it may be some logo design it's specifically designed logo like 00:04:28.320 --> 00:04:35.600 Apple logo is there like so that logo may be there some slogans or catchphrases or taglines are there 00:04:35.600 --> 00:04:44.160 just do it right who or then there may be I'm loving it so such taglines are there right then 00:04:44.160 --> 00:04:50.120 there may be like a combination of word and design like huh so if you see the Starbucks logo so there 00:04:50.120 --> 00:04:55.960 is a design also that logo is there words are also written there the company name is there so you can 00:04:55.960 --> 00:05:03.280 just have that kind of a combination also then yes there are like a sound marks like that Jingles are 00:05:03.280 --> 00:05:09.760 there like when you open the window when you open the computer that Intel or window related 00:05:09.760 --> 00:05:14.480 sound marks probably you are very well aware about that color marks that color combination 00:05:14.480 --> 00:05:20.240 if you see that color combination is like acting as a trademark shape as a trademark motion as a 00:05:20.240 --> 00:05:25.800 trademark Hol Mark as a trademark hologram as a trademark right and in some jurisdictions 00:05:25.800 --> 00:05:32.040 we are not offering it in India but all Factory trademarks are also there which are like that 00:05:32.040 --> 00:05:39.120 fragrance or that scent is like protected but it is not obviously in India okay so these are the 00:05:39.120 --> 00:05:44.200 that conventional and unconventional different like these are the main types of trademarks 00:05:44.200 --> 00:05:49.920 and trademark can be there in any of that form okay so this is that basic information we have 00:05:49.920 --> 00:05:54.880 already done but the important thing when we are talking about IP dispute that distinctiveness of 00:05:54.880 --> 00:05:59.920 that particular trademark is very very important right now we'll just go into the detail details 00:05:59.920 --> 00:06:05.160 of the some statutory framework and we will just focus on the national level what are the 00:06:05.160 --> 00:06:11.560 different arrangements are there so you can just say see here USA then UK India Australia Canada 00:06:11.560 --> 00:06:17.600 what are the different Arrangements now if you see that United States you can just say that the 00:06:17.600 --> 00:06:25.000 Lanham Act is there and it is a primary Federal trademark Statute in USA and obviously we know 00:06:25.000 --> 00:06:30.000 that if any trademark Act is there it will take care about the requirements what are the 00:06:30.000 --> 00:06:34.840 specific requirements for the registration that guidelines are there that what are the grounds 00:06:34.840 --> 00:06:41.720 for refusal of registration and that is one of the important you we should remember that that if 00:06:41.720 --> 00:06:48.520 that grounds are that that refusal are there that is one of the reason actually for if 00:06:48.520 --> 00:06:54.720 that trademark related dispute may arise because of not following that that particular guideline 00:06:54.720 --> 00:06:59.720 procedures for opposition and cancellation are also shared obviously what are the remedies if 00:06:59.720 --> 00:07:06.920 there think there is any infringement all this details and then some activities like some 00:07:06.920 --> 00:07:14.240 like trademark related challenges or disputes which are like dilution okay that tampering with 00:07:14.240 --> 00:07:19.040 that trademark if it is there we will go into details of that but that are also addressed in 00:07:19.040 --> 00:07:26.360 that particular acts okay now several amendments are done in that Lanham act like trademark law 00:07:26.360 --> 00:07:34.520 revision act 88 1988 then Federal trademark dilution act specific to handle the dilution issue 00:07:34.520 --> 00:07:40.560 we will go into details of that and then there was a revision of that particular dilution related 00:07:40.560 --> 00:07:49.680 act in 2006 okay now if you see now the U UK you can just check here it is a trademarks at 1994 if 00:07:49.680 --> 00:07:58.120 you see India it is a trademark at 1999 obviously definition registration rights duration of renewal 00:07:58.120 --> 00:08:03.480 grounds for refusal everything is covered in these particular acts okay then you can just check here 00:08:03.480 --> 00:08:11.000 Australia trademark act that is 1995 and then the Canada trademarks act that is R 1985 so you 00:08:11.000 --> 00:08:16.400 can just see the list and every country have the protection of that trademark following the trips 00:08:16.400 --> 00:08:20.960 guidelines and the countries which are like a Paris convention members obviously every every 00:08:20.960 --> 00:08:26.280 country will follow that particular guidelines in their trademarks and that protection will be 00:08:26.280 --> 00:08:32.480 like provided to the citizens and obviously the citizens from other countries as if they are a 00:08:32.480 --> 00:08:38.120 citizens of that particular country so so that there will be a non-discriminatory treatment 00:08:38.120 --> 00:08:43.200 will be there for the applicant now what are the international treaties you can just check here the 00:08:43.200 --> 00:08:49.040 what are the different International treaties are there related to the that treadmark so obviously 00:08:49.040 --> 00:08:55.640 Paris convention is a main which is like when we say modern IP system that is like important 00:08:55.640 --> 00:09:03.560 1883 Madrid system is one of the important system in treadmark we will we we will just give 00:09:03.560 --> 00:09:09.320 we will see in one of the session we will check out something some details about that if possible 00:09:09.320 --> 00:09:16.920 but if not you can just go through MD protocol actually which we follow for the that trademark 00:09:16.920 --> 00:09:22.280 that filing procedure renewal procedure obviously then the next trips guidelines are there or trips 00:09:22.280 --> 00:09:27.840 agreement is there trademark law treaty which is like that is again the important nice 00:09:27.840 --> 00:09:33.600 agreement which is giving the ni or n it depends on the pronunciation you can just check that so 00:09:33.600 --> 00:09:40.440 n agreement is there VNA classification is there that is in 1973 so we we are very well aware 00:09:40.440 --> 00:09:46.040 about when we talk about the Paris convention we are we are very well aware about that that the 00:09:46.040 --> 00:09:52.640 the citizens of that member countries will get the protection in all member countries of the 00:09:52.640 --> 00:09:59.400 Paris convention because the trips guidelines are followed there and the acts are enacted IP 00:09:59.400 --> 00:10:04.600 related acts are enacted in that way Madrid system you can you can just see long back it 00:10:04.600 --> 00:10:13.440 is like it that that is developed and we can say that this this mrid protocol which 00:10:13.440 --> 00:10:20.560 came in 1989 We are following that and it is a it has simplified the multinational trademark 00:10:20.560 --> 00:10:26.200 registration in one go you are just giving application in vipo online application and 00:10:26.200 --> 00:10:32.080 vipo will take care about your application Vio will take take care about your renewal so the 00:10:32.080 --> 00:10:38.920 the task is very simple okay so that MADD system is there trips agreement obviously all IPS are 00:10:38.920 --> 00:10:44.640 following the guidelines of trips and we are very well aware about the trips guidelines trademark 00:10:44.640 --> 00:10:53.280 La treaty came in 1994 and that is like U that another we can say the international agreement to 00:10:53.280 --> 00:10:59.600 standardize and simplify the national and Regional trademark that particular treaty came in into 00:10:59.600 --> 00:11:06.520 the that that is like every the signatories of that trademark lity we are the signatory India 00:11:06.520 --> 00:11:13.680 so we are following that this agreement is a very classic you can say the agreement because that 00:11:13.680 --> 00:11:20.240 is giving you the classification n classification nice classification so here you can just check 00:11:20.240 --> 00:11:26.320 that whatever goods and services are offered all over the world all are like classified into fit 00:11:26.320 --> 00:11:35.240 into that 45 classes and just just find out which are for goods and which are for the services just 00:11:35.240 --> 00:11:41.440 find out that that in 1 to 45 probably you are aware about just write down in the comment box 00:11:41.440 --> 00:11:46.840 one to how many are the classes for the goods and for the services which are the classes we 00:11:46.840 --> 00:11:52.840 are aaable this is a nice classification which has given this particular we can say the luxury 00:11:52.840 --> 00:11:58.480 which has simplified the process then then Venna classification or Venna agreement is there it's 00:11:58.480 --> 00:12:05.520 related to figur ative elements we see that Pari that figure is there right so amul girl is there 00:12:05.520 --> 00:12:12.240 nma girl is there all this figures that that are classified using a Vienna classification 00:12:12.240 --> 00:12:18.760 there was Nairobi treaty related to Olympic symol then there was a like thisa this ACTA that is 00:12:18.760 --> 00:12:24.680 a anti-counterfeiting trade agreement in 2011 this is little bit important we can say because 00:12:24.680 --> 00:12:29.640 counterfeit is a very major infringement issue we can say when we are talking talking about 00:12:29.640 --> 00:12:36.240 a trademark mean even in the covid time also that masks that counterfeit of that masks are 00:12:36.240 --> 00:12:44.040 also happen so we can just imagine the that to what level the there is a possibility of 00:12:44.040 --> 00:12:49.280 the counterfeit products which will be in the market right and therefore this act that is a 00:12:49.280 --> 00:12:57.000 counterfeiting trademark act that is act it is a very very important considering the infringement 00:12:57.000 --> 00:13:01.600 which is due to the counterfeit products okay okay and you can just see because of this 00:13:01.600 --> 00:13:07.520 particular International Arrangement obviously harmonization is there so we can say that when we 00:13:07.520 --> 00:13:15.480 are talking about laws IP laws is we can say the only laws which are across border we can say 00:13:15.480 --> 00:13:22.800 most slim these are similar why because vipo is controlling the all activities and then the 00:13:22.800 --> 00:13:28.400 trips guidelines are there and every country every economy is following that particular 00:13:28.400 --> 00:13:35.840 guidelines so harmonization is much more achieved in this particular IP related matters IP related 00:13:35.840 --> 00:13:42.200 acts it is a simplifying the registration we are very well aware about in P patent there is a one 00:13:42.200 --> 00:13:49.160 Arrangement which is that Arrangement just find out so just like here M protocol is there for 00:13:49.160 --> 00:13:56.320 patent there is another Arrangement which gives us extra time and it makes easy like filing 00:13:56.320 --> 00:14:01.560 compared to the conventional just check out I will give one more hint that is a national phe filing 00:14:01.560 --> 00:14:08.840 is there in that so check down okay so obviously this non-discrimination is another important 00:14:08.840 --> 00:14:14.920 we can say the benefit of this particular like International Arrangement okay so we are very 00:14:14.920 --> 00:14:21.640 well aware about that but but this please remember that when any dispute will arise 00:14:21.640 --> 00:14:27.520 these different International treaties will help us and obviously along with that the acts which 00:14:27.520 --> 00:14:35.280 we have just seen country specific acts will be helpful to handle that particular issue in 00:14:35.280 --> 00:14:42.880 that particular jurisdiction okay so that is very important so that country specific Arrangement and 00:14:42.880 --> 00:14:48.120 then the global Arrangement that that both will help that will make a comprehensive Global 00:14:48.120 --> 00:14:58.160 framework for the trademark protection okay so again that U the minor differences are there like 00:14:58.160 --> 00:15:03.720 conventional and unconventional we have talked about but you can you can just handle that 00:15:03.720 --> 00:15:09.320 that is a very minor differences are there so that can be jurisdiction specific handling that 00:15:09.320 --> 00:15:16.600 particular we can say the Mark we can do now just check here something related to about the 00:15:16.600 --> 00:15:21.240 trademark registration process so we are very well aware about that particular definition we 00:15:21.240 --> 00:15:26.960 are aware about statutory framework now we are just focusing on a trademark registration now 00:15:26.960 --> 00:15:33.000 this when we are talking about a registration Pro you can just check here that different steps 00:15:33.000 --> 00:15:38.640 are there and obviously preliminary search is very important because when we are talking 00:15:38.640 --> 00:15:46.080 about that preliminary search right that gives us a novelty aspect that that if it is not like 00:15:46.080 --> 00:15:51.960 matching with existing trademark so that is like preliminary search is taking care obviously there 00:15:51.960 --> 00:15:58.920 are databases for checking that particular trademark if it is there or registered or not 00:15:59.840 --> 00:16:04.080 so comprehensive search you have to do we are very well aware about that are international 00:16:04.080 --> 00:16:10.080 trademark databases country specific databases are there and we can use that to check whether 00:16:10.080 --> 00:16:15.920 that particular trademark is protected in that particular jurisdiction after doing that search 00:16:15.920 --> 00:16:21.680 obviously you can just check about the potential conflict so that you can avoid any litigation 00:16:21.680 --> 00:16:28.920 because of that particular similarity so if you do search probably that first task of 00:16:29.440 --> 00:16:34.880 potential conflict will be avoided so search is very important when you are filing the patent 00:16:34.880 --> 00:16:42.200 filing the trademark actually or registering the trademark okay so we have also have to 00:16:42.200 --> 00:16:48.520 check that there is no any similarity between the whatever trademark we are proposing and 00:16:48.520 --> 00:16:57.240 which is already existing okay so we have to check that particular thing okay now again once you 00:16:57.240 --> 00:17:02.200 do that search you have to check either you can you can go ahead with the F that filing of that 00:17:02.200 --> 00:17:09.320 particular trademark or you have to take a caution or you should not go for the trademark filing that 00:17:09.320 --> 00:17:14.320 particular trademark filing so you have to take that decision there only so that you can avoid 00:17:14.320 --> 00:17:20.200 any litigation because of that similarity also sometimes what will happen if that similarity is 00:17:20.200 --> 00:17:26.120 there your trademark may not be registered right so unnecessary you have to invest your time energy 00:17:26.120 --> 00:17:32.840 and money so just avoid that by using the so that we can avoid the litigation disputes around that 00:17:32.840 --> 00:17:38.800 particular part right application form which is that application form you just find out we know 00:17:38.800 --> 00:17:44.560 that we have dealt with that one form that is used as a application form for the tradmark just 00:17:44.560 --> 00:17:50.720 write down in the comment box okay so where we are giving all details about the that trademark also 00:17:50.720 --> 00:17:56.520 and we are giving details about the applicant also right so that is there if specimen is required we 00:17:56.520 --> 00:18:01.360 are attaching that specimen because if color combination ation is there if that specific in 00:18:01.360 --> 00:18:06.880 color only that word Mark is written obviously or if there is any calligraphic presentation of the 00:18:06.880 --> 00:18:13.760 word Mark obviously please attach that particular like representation the specimen so that the 00:18:13.760 --> 00:18:20.520 registry can go through and check that okay so all this we are like filing fee and then the 00:18:20.520 --> 00:18:26.720 claiming that particular sometimes what happens the another issue comes priority claiming is very 00:18:26.720 --> 00:18:33.640 important so sometimes what happen you have like like foreign application if comes then 00:18:33.640 --> 00:18:38.440 obviously you have to give the yes you have filed already that particular trademark in 00:18:38.440 --> 00:18:43.120 that particular jurisdiction so you have to give that priority claim document also when you are 00:18:43.120 --> 00:18:49.800 filing the that otherwise registry will raise the query regarding that also so we have to take 00:18:49.800 --> 00:18:56.560 caution that priority claim document we have to give okay then then we can say that sometimes 00:18:56.560 --> 00:19:04.400 translation is required if you are like doing that particular trademark in that particular like 00:19:04.400 --> 00:19:09.480 if that series of trademark is there obviously you can share that particular translations and 00:19:09.480 --> 00:19:14.920 all power of attorney if you are going through the trademark agent obviously you are doing that 00:19:14.920 --> 00:19:21.400 particular thing okay so all this all this we can say the filing related caution you will 00:19:21.400 --> 00:19:28.960 do then examination and opposition procedure if if exam during examination if unfortunately 00:19:28.960 --> 00:19:34.840 some opposition happen you have to handle that you have to give reply to that so that that 00:19:34.840 --> 00:19:40.400 and within time you have to give reply so that the this particular examination process will move 00:19:40.400 --> 00:19:49.400 further because if opposition is accepted if it is proved the trademark will not be registered so 00:19:49.400 --> 00:19:55.720 all this like procedural part we have to take care when we are doing the that examination 00:19:55.720 --> 00:20:01.520 obviously there will be the the trademark regist The Examiner will check the distinctiveness 00:20:01.520 --> 00:20:08.400 they will check if it is a conflicting Mark okay then they will check if there is a kind of 00:20:08.400 --> 00:20:16.000 like a generic thing or deceptively similar kind of a trend Mark is there so that that all this 00:20:16.000 --> 00:20:22.680 check will be done by the trademark Registry and then they will decide on whether they should 00:20:22.680 --> 00:20:28.880 go for this particular like registration of that before that they will do Publications so 00:20:28.880 --> 00:20:34.960 that if any opposition is there if somebody is like agreed part is there they can contact the 00:20:34.960 --> 00:20:41.240 registry and for that publication will be there and if opposition comes obviously the opposition 00:20:41.240 --> 00:20:47.000 related proceedings will be there and after that only registration will happen obviously after 00:20:47.000 --> 00:20:52.320 registration what will happen once the trademark is registered so you have given application and 00:20:52.320 --> 00:20:57.400 after the examination it will be registered right so generally 9 months to 12 months that time is 00:20:57.400 --> 00:21:03.960 there sometimes in 3 months also that procedure is completed it depends on the like trademark so 00:21:03.960 --> 00:21:09.440 6 months is average you can say so that is a time which is required we are very well aware 00:21:09.440 --> 00:21:17.040 about that and post registration some like like procedures are there like for example in 00:21:17.040 --> 00:21:23.800 USA you have to give the like proof of use after the registration it is a mandatory if you will 00:21:23.800 --> 00:21:29.840 not give that thing then that Mark will not be like like reg it will not come that is that 00:21:29.840 --> 00:21:36.160 is a compliance you have to do with that only so mandatory it is so use will be like you have to 00:21:36.160 --> 00:21:41.960 prove that thing okay renewal after every 10 years we are very well aware about that and obviously 00:21:41.960 --> 00:21:47.840 you are giving that fees and if you are doing in multi country already application you can use 00:21:47.840 --> 00:21:54.600 Madrid protocol for that particular like renewal so all this like procedures you are very 00:21:54.600 --> 00:22:02.560 well aware about and there are chances that if it is not used the Mark will be cancelled so in India 00:22:02.560 --> 00:22:10.200 we follow propos use that proposal that trademark propose you are like proposing it's not like a you 00:22:10.200 --> 00:22:16.160 are doing a filing and there are the time which is given up to 5 years if five years you are 00:22:16.160 --> 00:22:21.880 not using that obviously if somebody else is using that trademark the registry may allow the 00:22:21.880 --> 00:22:29.280 registration of that particular trademark if the trademark is not used by the applicant who have 00:22:29.280 --> 00:22:35.600 registered that okay so that few things are there which obviously come in a dispute so sometimes 00:22:35.600 --> 00:22:41.640 what happens your competitor may keep watch on you and if you are just a startup or if you are 00:22:41.640 --> 00:22:47.680 like thinking about that business what will happen you you like give the application as proposed to 00:22:47.680 --> 00:22:52.840 use and if you are giving that application and within five years you will not do the business 00:22:52.840 --> 00:22:59.920 somebody else can use that and registry can do the registration of that so aware about that 00:22:59.920 --> 00:23:06.680 particular fact also okay multiclass applications are there you can do that thing in India obviously 00:23:06.680 --> 00:23:16.920 so that is a particular we can say the like the the you can just do the give the fee and 00:23:16.920 --> 00:23:22.320 then multiclass registration you can do even in India you are aware about if you can you can 00:23:22.320 --> 00:23:28.560 you can do the registration as a well-known Mark also a separate procedure is there okay so this is 00:23:28.560 --> 00:23:34.720 something about the registration and you just check now few examples we will just share to so 00:23:34.720 --> 00:23:40.720 we are aware about now the the registration the form the procedure the acts the international 00:23:40.720 --> 00:23:47.800 treaty now just check here after doing all this this is the scenario so Adidas and Adidas I don't 00:23:47.800 --> 00:23:53.840 know how to pronounce that but you can just check here one is original one is the like offering 00:23:53.840 --> 00:24:02.120 that particular products and the other one is like a we can say they have like used this logo some 00:24:02.120 --> 00:24:07.680 modifications they are doing and they are offering the product into the market right duplicate you 00:24:07.680 --> 00:24:12.920 can say in the lay man language check another example so what it is paho I don't know how to 00:24:12.920 --> 00:24:18.120 pronounce that but they have just write down if you see from a distance probably you will 00:24:18.120 --> 00:24:24.720 feel it is like a Pizza Hut only but you check the spelling the carefully you can just check here so 00:24:24.720 --> 00:24:30.520 that minor modifications they are doing and they are like copying the tread Mark as it is right 00:24:30.520 --> 00:24:37.480 then check another example MacDonald's one half circle is like added and you can just check here 00:24:37.480 --> 00:24:44.160 that that the trend Mark is like a this is not the original offering of a MacDonald right then you 00:24:44.160 --> 00:24:51.400 can just check another example here a very popular Landmark you can say the case it was like a when 00:24:51.400 --> 00:24:58.320 you see these two logos you can just check here one is a Starbucks original another is a Sardar 00:24:59.600 --> 00:25:07.920 okay so inside logo is that figure is also there some figurative representation is there the words 00:25:07.920 --> 00:25:13.920 are there so instead of starb you can just see her Sardar Bak is there and inside that 00:25:13.920 --> 00:25:21.600 the figure Sardar B so that figure is there so you can just check here so it's like a 00:25:21.600 --> 00:25:28.560 completely playing with that original trademark original com that offerings so we have to to be 00:25:28.560 --> 00:25:35.000 very careful when we are going into the especially if you see Biser you can just see the difference 00:25:35.000 --> 00:25:42.400 that that letters in that particular word are changed minor changes are there otherwise whole 00:25:42.400 --> 00:25:49.040 that bottle looks like it is a Biser bottle only and you have to just carefully see what exactly 00:25:49.040 --> 00:25:53.800 the minor modifications are there and you can see in Kolkata you see it will be like a very 00:25:53.800 --> 00:25:59.280 different modification is there I have seen in Delhi there was a same structure but one other 00:25:59.280 --> 00:26:05.200 letter is like a modified so you go at different places they are doing that modifications very 00:26:05.200 --> 00:26:12.200 smartly and obviously they are taking share of the original product right so now just check 00:26:12.200 --> 00:26:16.960 here when we are talking about a this treadmark we will go into this case laws and we will go 00:26:16.960 --> 00:26:23.440 into the details how to handle that issues but there are two important we can say terminologies 00:26:23.440 --> 00:26:29.920 always come when we are talking about the this particular Trad mark Mark related dispute one 00:26:29.920 --> 00:26:37.520 is infringement another is a passing off so what exactly these details are infringement and passing 00:26:37.520 --> 00:26:46.240 up so when we are talking about infringement what it is it occurs when an unauthorized party uses a 00:26:46.240 --> 00:26:54.680 tread Mark or a similar Mark in a way that is likely to cause a confusion or deception or 00:26:54.680 --> 00:27:01.960 it will be mistaken about the source of good goods or services so just apply this definition 00:27:01.960 --> 00:27:09.880 of infringement to the Starbuck and sarbu so it is unauthorized party which is using that redma 00:27:09.880 --> 00:27:17.640 but similarity is there right and that similarity is creating the confusion among the that consumer 00:27:17.640 --> 00:27:23.160 so consumer if they will see that Pizza Hut te they have instead of tea they have just write down 00:27:23.160 --> 00:27:29.680 H right so the consumer will may not go into the details of that they will get oh this is a pizza 00:27:29.680 --> 00:27:36.000 heart only and probably they will not get the quality product whatever is offered and sometimes 00:27:36.000 --> 00:27:41.400 may happen if somebody is going to the pizza heart first time and if they taste that particular in 00:27:41.400 --> 00:27:48.440 the that the pizza ho whatever it may be obviously that quality they will not get and obviously 00:27:48.440 --> 00:27:55.480 it will damage the that trademark that will be the brand damage to that particular company because of 00:27:55.480 --> 00:28:01.600 this particular play with that treadmark right so it's a big damage it's like not only pulling the 00:28:01.600 --> 00:28:08.400 share of the market from the market but they are damaging also the the brand so that both things 00:28:08.400 --> 00:28:14.280 are happening with this particular trademark infringment and obviously that will affect the 00:28:14.280 --> 00:28:20.720 consumer perception about that particular product right so that is a situation now when we are 00:28:20.720 --> 00:28:27.480 talking about a passing off what exactly it is happening so in case of passing off it is not 00:28:27.480 --> 00:28:34.440 if you're trademark is not registered okay you have not used many times it is not that parties 00:28:34.440 --> 00:28:40.160 are ignorant about trademark act they are not no aware about that and they start their business 00:28:40.160 --> 00:28:45.360 and sometimes with their name only that business is like a get the goodwi and it is very popular 00:28:45.360 --> 00:28:50.840 in that particular area so here there is no any protection sought through the trademark act which 00:28:50.840 --> 00:28:58.200 is a statutory provision dedicated for trademark now what happens in such case if somebody do the 00:28:58.200 --> 00:29:03.920 the infringe that unauthorized usage I should not say infringement if somebody do the unauthorized 00:29:03.920 --> 00:29:11.200 usage where exactly you can go for like that the remedy where is it is it is called as a 00:29:11.200 --> 00:29:20.920 passing off and it is a common law tart which is used to enforce unregistered trademark right and 00:29:20.920 --> 00:29:28.040 obviously it is followed in UK Australia India so we are following that passing of procedure 00:29:29.080 --> 00:29:58.160 okay so that will help in protection of a Goodwill of the business okay or if any misprescribing 00:29:58.160 --> 00:30:05.000 certificate if you have a trademark registration you have a clearcut prim offy evidence of that 00:30:05.000 --> 00:30:11.040 certificate from the trademark Registry and it is very easy to prove that you are the owner 00:30:11.040 --> 00:30:15.680 of that particular trademark but now what happened you have not done the registration 00:30:15.680 --> 00:30:21.200 so you are taking a remedy like a passing off and you are handling that through 00:30:21.200 --> 00:30:28.160 the common law provisions and you have to prove now burden is very high compared to that earlier 00:30:28.160 --> 00:30:34.960 case so you have to prove that Goodwill is established reputation is attached to that 00:30:34.960 --> 00:30:41.000 particular good or a service so you have to prove into the court that Goodwill you have to also 00:30:41.000 --> 00:30:48.800 prove that there is like a misrepresentation so you have to plenti have to prove that defendant 00:30:48.800 --> 00:30:58.160 have done the misrepresentation of that particular trademark right and you have to prove again that 00:30:58.160 --> 00:31:05.960 because of that behavior of defendant you are suffering plenti is suffering okay so burden 00:31:05.960 --> 00:31:13.600 of proof is on the plenti you have to prove everything that you are like the your suffered 00:31:13.600 --> 00:31:19.120 because of that the damage which is because of that misrepresentation so what happened 00:31:19.120 --> 00:31:25.200 here the characteristics of passing off is like unregistered it is a unregistered mark it may be 00:31:25.200 --> 00:31:32.360 trade race also so it is a unre registered you have not the the party has not taken a use or 00:31:32.360 --> 00:31:39.720 they have not used this provisions of a trademark act then what is happening this is a unregistered 00:31:39.720 --> 00:31:49.360 trademark but the you are now seeking remedy through common law right now what happened that 00:31:49.360 --> 00:31:55.360 obviously you have to kind of prove the reputation as I have told you and you have 00:31:55.360 --> 00:32:00.560 to prove that there is a misrepresentation and you have to proof that damage has happened to 00:32:00.560 --> 00:32:06.520 you because of that misrepresentation Court will check all these factors and then only decision 00:32:06.520 --> 00:32:14.040 will be taken on this particular thing okay so this is the scenario so now what we will do take 00:32:14.040 --> 00:32:19.800 a small break just watch this video related to the trademark dispute and then we will move further to 00:32:19.800 --> 00:32:27.080 know further details about the infringement Pune restaurant for copyright infringement in the 2011 00:32:27.080 --> 00:32:33.240 while also demand fing monetary damages of 20 lakh rupees their argument Burger King was a well-known 00:32:33.240 --> 00:32:39.160 Global brand despite its absence from India back in 1992 the Irani family opposed the lawsuit 00:32:39.160 --> 00:32:45.080 alleging malfi intentions to suppress a legitimate business in India and said that apart from the 00:32:45.080 --> 00:32:50.200 name there was no similarity between the American Burger King's trademark and their Shop's name it 00:32:50.200 --> 00:32:55.160 also sought 20 lakh rupees in compensation for the harassment and intimidation they faced from 00:32:55.160 --> 00:33:01.080 the American corporation the Pune district judge ruled in favor of the Indian business stating 00:33:01.080 --> 00:33:07.280 that the American Burger King miserably failed to demonstrate that that trademark was infringed upon 00:33:07.280 --> 00:33:12.520 whether or not the verdict will be challenged in a higher court is yet to be seen But such battles 00:33:12.520 --> 00:33:20.640 are not exactly new okay so let us move further now and we will just check now the trademark 00:33:20.640 --> 00:33:28.160 infringement related like Common Law related key aspects what are there passing off we are just 00:33:28.160 --> 00:33:35.600 focusing on passing off so when we are talking about this a few points you can just check here so 00:33:35.600 --> 00:33:41.640 what are the what are the we when we are talking about the common law rights in treadmark actually 00:33:41.640 --> 00:33:48.120 these are actually after usage these rights are created right in trademark what is happened 00:33:48.120 --> 00:33:53.640 proposed to use also is possible but when you are talking about a passing of when common law rights 00:33:53.640 --> 00:34:01.600 are there obviously you have used it okay and and then the the after usage you are getting the 00:34:01.600 --> 00:34:07.520 rights over that particular trademark so you have to prove that yes your trademark you are using it 00:34:07.520 --> 00:34:13.960 since these many days these many years there are cases like 20 years somebody's using that somebody 00:34:13.960 --> 00:34:20.040 then comes and realizes that yes now trademark should be registered there are cases like that 00:34:20.040 --> 00:34:26.200 and then obviously registry will demand that okay if you are claiming that proof that 00:34:26.200 --> 00:34:33.480 you are registering it since the the last 20 years right so that is very important that usage is very 00:34:33.480 --> 00:34:40.000 very important so you have to establish that that con consistent use of that Mark is there 00:34:40.000 --> 00:34:47.600 for the Commerce and you may have to give that geographical area but many times it depends on 00:34:47.600 --> 00:34:52.640 like sometimes it is very specific locally you are doing that particular activity sometimes it may 00:34:52.640 --> 00:34:58.320 be cross border also both situations extreme situations may be there but we have to prove 00:34:58.320 --> 00:35:06.000 that particular thing okay then this protection is limited to obviously in a trademark you can 00:35:06.000 --> 00:35:14.120 just check that the the differences there is a difference you can see location at same location 00:35:14.120 --> 00:35:19.640 we have probably discussed in detail in some of the courses when we are dealing with 00:35:19.640 --> 00:35:25.840 a trademark we're just focusing on our disputes here so we will focus on that aspect but please 00:35:25.840 --> 00:35:32.240 remember that considering the trade there is a possibility that one trademark same trademark 00:35:32.240 --> 00:35:38.400 can be owned by different owners in same local jurisdiction just check that that scenarios are 00:35:38.400 --> 00:35:46.920 also there dispute may arise but there are like a some special situations in that it is allowed so 00:35:46.920 --> 00:35:52.600 we have to check this particular situation also when we are talking about the trademark related 00:35:52.600 --> 00:36:00.640 disputes okay you can read it related it or you can just refer the probably we will share 00:36:00.640 --> 00:36:07.160 that link also with you okay then a trademark owner have to proof in passing of priority of 00:36:07.160 --> 00:36:14.360 that use continuous use and it has acquired distinctiveness or a secondary meaning because of 00:36:14.360 --> 00:36:22.560 that continuous usage so that that distinctiveness is like because of that usage in that business 00:36:22.560 --> 00:36:28.840 that must be proved when we are talking about that is very very important Court will look into that 00:36:28.840 --> 00:36:35.400 aspect when there are when any dispute related to the trademark passing off will come okay then 00:36:35.400 --> 00:36:40.920 enforcement is through obviously lawsuit you have to go to the court and then the sometimes 00:36:40.920 --> 00:36:45.720 unfair competition so competition commission will come into the bu we will go into the details of 00:36:45.720 --> 00:36:52.160 that in coming sessions so in all actually the button of proof is in on a trademark owner 00:36:52.160 --> 00:37:00.320 to establish his rights actually okay so that particular situ uation is always there so if you 00:37:00.320 --> 00:37:08.200 see the trademark infringement and trademark that passing off obviously enforcement is 00:37:08.200 --> 00:37:15.000 little bit we can say challenging it is like time taking considering passing off actually because 00:37:15.000 --> 00:37:21.280 you are applying the common law principles and you have to kind of it may take a little more 00:37:21.280 --> 00:37:28.080 time little more efforts than the infringement related issues okay and symbol you probably 00:37:28.080 --> 00:37:34.720 no aware about the various symbols which are used in trendmark so I request you to go through that 00:37:34.720 --> 00:37:42.440 symbols related to trademark what are that particular symbols are used okay so this was 00:37:42.440 --> 00:37:51.240 all about the passing off and infringement and so we have seen like a details like a this that 00:37:51.240 --> 00:37:57.440 what are the that registration procedure what exactly is the like how exactly the 00:37:58.120 --> 00:38:02.240 that what are the what is a passing of what is the infringement what are the international 00:38:02.240 --> 00:38:07.040 Arrangement what are the jurisdiction specific arrangements are there what is a procedure which 00:38:07.040 --> 00:38:13.040 is followed for trademark what is a definition what is a scope so that basic understanding is 00:38:13.040 --> 00:38:19.760 there we have appreciated the difference between infringement and then the passing off also right 00:38:19.760 --> 00:38:26.800 now quiz time so just check this I've just talked about the symbols in the previous 00:38:26.800 --> 00:38:33.520 just few minutes back so now I'm just sharing with you three symbols so just check out what exactly 00:38:33.520 --> 00:38:40.120 TM is what exactly SM is what exactly R is okay and then in the session also I have just raised 00:38:40.120 --> 00:38:48.760 few question regarding the N classification right so just check out what that which what what is 00:38:48.760 --> 00:38:56.360 for goods what is for the service so just check that particular details actually okay so with 00:38:56.360 --> 00:39:03.680 this we are coming to the end of this session and in the next session you can just you 00:39:03.680 --> 00:39:10.960 can check that particular forther details about the treadmark okay rishika what happened click it 00:39:10.960 --> 00:39:27.360 now okay 00:39:29.840 --> 00:39:37.160 okay okay okay so with this we are coming to the end of this session see you in the 00:39:37.160 --> 00:39:43.360 next session and next session we will continue the details regarding the this 00:39:43.360 --> 00:39:52.520 further enforcement related issues and infringement related issues okay thank you