Patent loss ruins Oracle's New Year party

Database giant Oracle faced a major setback in the patent litigation against Google, with USPTO rejecting some claims of patent (US6192476) which is one among the several patents that Oracle asserts against Google.

Oracle sued Google last year, claiming that the Google Android operating system uses Java Virtual machine technology and it violates a number of Java patents it acquired along with Sun Microsystems.

Google on the other hand requested the USPTO to re-examine the Oracle patent (US6192476) titled as "Controlling access to a resource”. Last week, U.S. Patent and Trademark Office rejects 17 claims out of 21 claims in patent (US6192476) and it basically means that the patent is invalid since many of the claims have been rejected. Oracle now has six months to appeal for the USPTO's decision. If it fails, then Oracle will probably be stripped of the patent.

"Patents were meant to encourage innovation, but lately they are being used as a weapon to stop it” opined Google's chief legal officer David Drummond.

 

Author: Raghu

 

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COPYRIGHT LAW: Sec. 2(m) dropped from the Copyright Amendment Bill.

The Government has decided to leave out Section 2(m) from the latest version of the Copyright Amendment Bill which legalizes the parallel imports of books and other copyrighted material into India. Sec. 2(m) reads as follows: ‘Provided that a copy of a work published in any country outside India with the permission of the author of the work and imported from that country into India shall not be deemed to be an infringing copy.” It has been speculated that the government gave away to the pressure from the publisher lobbies and deleted it from the newest version of the Bill. The Parliamentary Standing Committee had earlier supported the Bill and had stated as follows: “that availability of low priced books under the present regime is invariably confined to old editions. Nobody can deny the fact that the interests of students will be best produced if they have access to the latest editions of the books.” This deletion is likely to impact the libraries and educational institutions that could import foreign copies of books without seeking permission of the copyright owner. The disabled are also not likely to be spared by the recent development, as many converted copyright material as well as books that require conversion to formats that are accessible to the disabled will not be freely available. Section 51 which allows only one copy of a book for personal use and Section 52(1)(zb) which provides for a number of activities for enabling access to the disabled do not include the right to ‘import’ any copyrighted works. Thus, it will still continue to remain difficult to buy cheapest editions anywhere in the world, without necessarily going through the publisher in India.

Delhi HC Says No Exclusive Right to Use of ‘Krishna’ as a Trademark to Market Dairy Products

In a recent case decided by the division bench of the Delhi High Court upholding the decision of a single judge it was held that:

“Just as the word 'LOW ABSORB', an expression relating to the character of the product, i.e. edible oil was held not entitling the person to an exclusive use who first used the said words, in the decision reported as MANU/DE/3131/2010 : 174 (2010) DLT 279 Marico Ltd. vs. Agro Tech Ltd., the adoption of the name of a deity who is associated with a particular trait relating to goods, in the instant case Lord Krishna having a trait which has an association with milk and butter, would stand on the same low footing for protection as would be purely descriptive expressions pertaining to the subject product. ”

The Appellants, Bhole Baba Milk Food Industries Ltd. are manufacturers of milk and milk products and also registered owners of the label mark “KRISHNA” which falls in Class-29 of the Trade Mark Act. The Respondent, Parul Food Specialties (P) Ltd. are also manufacturers of milk products who started selling ghee under the brand “PARUL’S LORD KRISHNA”, “Parul’s” and “Lord” having a font so small that only the word “KRISHNA” catches the eye due to its prominence. In the suit brought on by Bhole Baba Milk Food Industries Ltd., the Single Judge, Justice Rajiv Shakhdar, ruled in favour of the Defendants- Parul Food Specialties (P) Ltd and stated that prima facie in order for a mark to achieve secondary distinctiveness, the consumer should immediately be reminded of the product of the owner of the mark by looking at it. He also held that “Krishna” being a household name could not achieve secondary distinctiveness and as a result the Bhole Baba Milk Food were not entitled to claim monopoly over the name of the deity.

Aggrieved by the decision of the Single Judge, Bhole Baba Milk Food appealed before a Division Bench of the same Court.

The Hon’ble Division Bench upheld the decision of the Hon’ble Single Judge and reiterated that the name of the deity cannot be monopolized as it was in the public domain and if done so, it would ‘certainly dilute a proprietary claim projected by any person, in relation to Krishna with dairy products.” They also ordered Parul Food Specialties (P) Ltd. to print the words “PARUL’S LORD” with the same prominence as the word ‘KRISHNA’. They also concluded that registration by Bhole Baba Milk Food was not per se for the word KRISHNA but it is for the word KRISHNA written in a distinctive form. It stated that registration cannot possibly give an exclusive statutory right to the appellant qua a particular word of common origin.

The aforementioned decision begs the question- would this decision apply to other registrations having the names of Deities such as “MARUTI” who is the god of wind? Would Maruti Suzuki India Limited not be allowed to enforce their trade mark since the product that they apply it to, happens to be related to transportation? Let’s take the case of the Trade mark NIKE. Nike is the Greek goddess of strength, speed, and victory- in this case would they not be able to enforce their trade mark because they apply it to products related to sport? Would it be considered as descriptive?

One More ‘John Doe Order’ by Delhi High Court

As an addition to the recent series of John Doe Orders for protection of films, the Delhi High Court has issued another such order to protect the movie ‘Speedy Singhs’ in 2011. The producers of Speedy Singhs had filed the suit against a few cable operators and against unknown Defendants for a temporary and permanent injunction in order to pre-empt any copyright infringement. The Hon’ble Court has issued the order against all the prospective Defendants, including unidentified persons, restraining them from indulging in piracy and activities such as displaying, releasing, showing, uploading, downloading, exhibiting, playing the movie, etc. The order was to remain in force till December 19, 2011.

‘John Doe’ Orders are mostly seen in the American and Canadian Legal practice. The term ‘John Doe’ indicates a placeholder in legal action and is generally used as a synonym to refer to an individual whose identity is not known to the world at large. The name ‘John Doe’ is used to identify anonymous Defendants, who have allegedly committed some wrong, but whose identity cannot be ascertained by the Plaintiff. These orders can be traced back to the reign of England’s King Edward III (1312–1377), when they were used to refer to unidentifiable Defendants in law. These are representative orders against an unidentifiable class of Defendants, rather than named persons, which allow the goods to be seized. In such orders, once the Defendant(s) are identified, ‘John Doe’ is replaced with the name of the concerned Defendant.

Indian Courts visited the scope of John Doe Orders for the first time in the TEN SPORTS CASE (Taj Television vs. Rajan Mandal 2003) whereby the Commissioner was empowered by the Delhi High Court to enter the premises of any cable operator illegally airing the football World Cup 2002. The Indian version of the order is known as ‘Ashok Kumar’ orders. The High Court of Delhi had also restricted the scope of such orders in the case. The judgment in the case of Indian Performing Right Society Ltd. Vs. Mr. Badal Dhar Chowdhry and Ors (2010) stated that vague/ indefinite injunctions may not be issued and that it can be an abuse of the process of the court and hence, can never be granted. It has also stated that the courts should be extremely cautious in granting such ‘John Doe’ orders and specify the extent of applicability of such orders, the product or article concerned to which it relates to and the steps that can be taken by the aggrieved party to enforce such orders.

John Doe Orders have become quite common in the Indian film industry as an effective way to curb piracy. It is evident from the recent orders of the Delhi High Court in cases such as the movie Singham in July 2011 and the movie Bodyguard in August 2011. However, this trend awaits a Supreme Court Decision to make it a Law of the Land.

Delhi HC Says No Exclusive Right to Use of ‘Krishna’ as a Trademark to Market Dairy Products

In a recent case decided by the division bench of the Delhi High Court upholding the decision of a single judge it was held that:

“Just as the word 'LOW ABSORB', an expression relating to the character of the product, i.e. edible oil was held not entitling the person to an exclusive use who first used the said words, in the decision reported as MANU/DE/3131/2010 : 174 (2010) DLT 279 Marico Ltd. vs. Agro Tech Ltd., the adoption of the name of a deity who is associated with a particular trait relating to goods, in the instant case Lord Krishna having a trait which has an association with milk and butter, would stand on the same low footing for protection as would be purely descriptive expressions pertaining to the subject product. ”

The Appellants, Bhole Baba Milk Food Industries Ltd. are manufacturers of milk and milk products and also registered owners of the label mark “KRISHNA” which falls in Class-29 of the Trade Mark Act. The Respondent, Parul Food Specialties (P) Ltd. are also manufacturers of milk products who started selling ghee under the brand “PARUL’S LORD KRISHNA”, “Parul’s” and “Lord” having a font so small that only the word “KRISHNA” catches the eye due to its prominence. In the suit brought on by Bhole Baba Milk Food Industries Ltd., the Single Judge, Justice Rajiv Shakhdar, ruled in favour of the Defendants- Parul Food Specialties (P) Ltd and stated that prima facie in order for a mark to achieve secondary distinctiveness, the consumer should immediately be reminded of the product of the owner of the mark by looking at it. He also held that “Krishna” being a household name could not achieve secondary distinctiveness and as a result the Bhole Baba Milk Food were not entitled to claim monopoly over the name of the deity.

Aggrieved by the decision of the Single Judge, Bhole Baba Milk Food appealed before a Division Bench of the same Court.

The Hon’ble Division Bench upheld the decision of the Hon’ble Single Judge and reiterated that the name of the deity cannot be monopolized as it was in the public domain and if done so, it would ‘certainly dilute a proprietary claim projected by any person, in relation to Krishna with dairy products.” They also ordered Parul Food Specialties (P) Ltd. to print the words “PARUL’S LORD” with the same prominence as the word ‘KRISHNA’. They also concluded that registration by Bhole Baba Milk Food was not per se for the word KRISHNA but it is for the word KRISHNA written in a distinctive form. It stated that registration cannot possibly give an exclusive statutory right to the appellant qua a particular word of common origin.

The aforementioned decision begs the question- would this decision apply to other registrations having the names of Deities such as “MARUTI” who is the god of wind? Would Maruti Suzuki India Limited not be allowed to enforce their trade mark since the product that they apply it to, happens to be related to transportation? Let’s take the case of the Trade mark NIKE. Nike is the Greek goddess of strength, speed, and victory- in this case would they not be able to enforce their trade mark because they apply it to products related to sport? Would it be considered as descriptive?

No injunction granted in Indian Express Ltd. vs. Express Publications Madurai Ltd.

The Plaintiff- Indian Express Ltd. and the Defendant – Express Publications Madurai through settlements in 1997 and 2005 agreed that the Plaintiff would own the trademark “Indian Express” and the Defendant would own the trademark “New Indian Express”. The Defendant would publish an English Daily titled “New Indian Express” only in the five southern states of Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, Orissa and Union Territories of Pondicherry, Enam, Andaman and Nicobar and Lakshadweep. The Defendant was also allowed to use the trademark on the internet for dissemination of news.

The case commenced after the Defendant started publishing the newspaper titled ‘Sunday Standard’ from New Delhi. Beneath the logo, it carried a plea to follow them on Facebook and Twitter at www.newindianexpress.com. It also carried information that the Chairman, Executive Editors and Advertisement also belonged to the ‘New Indian Express Group.’

The Plaintiff then filed an interim application before the Delhi High Court seeking an injunction against the Defendants to restrain them from using the trademarks “New Indian Express”, “Indian”, “Express” and “New Indian Express Group” and other such combinations.

The two main issues before the learned judge were:

1. Whether the Defendant had infringed the Plaintiff’s trademark?

2. Whether the Defendant was passing off its goods as Plaintiff’s?

1. The Hon’ble Court dismissed the argument of the Plaintiff, on the basis of Section 28(3) of the Trade Marks Act, 1999 and said that since Indian Express and New Indian Express are similar, so merely having registration of these marks does not give them the exclusive right against each other but only against others who have similar but unregistered marks.

2. On the issue of passing off the Court looked at whether Sunday Standard was cashing in on the reputation by using the mark ‘newindianexpress’ under the Sunday Standard logo. The Court felt that this advertisement was permissible by the agreement between the parties and it was small in comparison with the masthead and it wouldn’t mislead customers.

The Hon’ble Court providing its views on the Agreements between the parties stated “Under the supplementary agreement dated 12th August, 2005, defendant No. 1 was permitted to use the title "New Indian Express" or any of its derivatives/abbreviations on the Internet and this use does not have and cannot have any geographical limitations. By inviting the readers to join to the website www.expressbuzz.com / www.mexpressbuzz.com or to join them on Facebook or Twitter, the defendants are only promoting their Internet business in exercise of the Internet rights given to them under the supplementary agreement. To my mind, no exception can be taken to such promotion of the Internet business of the defendant under the name "New Indian Express" by the plaintiff. I fail to appreciate the contention of the learned Counsel for the plaintiff that the agreements between the parties prohibits the defendants from promoting/advertising their business outside the five southern States/Union Territories specified in the agreement, if it involves use of the express "New Indian Express". Admittedly, the defendants are entitled to publish an English daily under the name "New Indian Express" in the southern States and Union Territories specified in the agreements. There was no prohibition, in the agreements between the parties, against promotion/advertisements even of the newspaper "New Indian Express" outside the southern States and Union Territories specified therein. Hence, if the defendants want to advertise those newspapers outside the specified southern States/Union Territories specified in the agreement, by giving advertisements in other newspapers or on television or radio, that, to my mind, would not constitute a violation of the agreements dated 05th February, 1995 and supplementary agreement dated 12th August, 2005 and in any case would not amount to passing off the newspaper of the defendant as that of the plaintiff.” The Court further stated “In my view, if the defendants advertise the newspaper published by them from any of the five southern State/Union Territories specified in the agreements in any newspaper whether it is Times of India or Hindustan Times or The Sunday Standards that would neither amount to passing off nor would that be in violation of the agreements between the parties. Same would be the position if the advertisements of other newspapers are published in "The Sunday Standard" irrespective of whether it is advertisement of "Hindustan Times" or "Times of India" or "New Indian Express". If tomorrow, the plaintiff advertises its newspaper "Indian Express" in any of the five southern States/Union Territories specified in the agreements, in a newspaper published from these southern States/Union Territories, can it be said that by doing so the plaintiff was trying to pass off its newspaper as that of "New Indian Express Group". The answer again would be in negative. Therefore, to my mind, such advertisements or use of the expression "New Indian Express" or "New Indian Express Group", the way they have been used so far do not amount to passing off and also do not constitute the violation of the agreements between the parties.”

On the aspect of the authors of the editorials/articles referring to themselves by name and as Executive Directors of the New Indian Express, the Court ruled that they were not passing off their paper as Plaintiff’s.

The Hon’ble High Court also looked into the aspect of the Defendants using these marks to mislead the public into believing that the Plaintiff and Defendant were one group. Defendant informed the Court with evidence that the Plaintiff had acquiesced to the use of the ‘New Indian Express Group’ which was visible in the Publications and the Joint Letters sent by them.

The Hon’ble High Court thus, refused to grant an injunction to the Defendant but asked them to mention ‘Madurai’ with the ‘New Indian Express Group’.

No injunction granted in Indian Express Ltd. vs. Express Publications Madurai Ltd.

The Plaintiff- Indian Express Ltd. and the Defendant – Express Publications Madurai through settlements in 1997 and 2005 agreed that the Plaintiff would own the trademark “Indian Express” and the Defendant would own the trademark “New Indian Express”. The Defendant would publish an English Daily titled “New Indian Express” only in the five southern states of Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, Orissa and Union Territories of Pondicherry, Enam, Andaman and Nicobar and Lakshadweep. The Defendant was also allowed to use the trademark on the internet for dissemination of news.

The case commenced after the Defendant started publishing the newspaper titled ‘Sunday Standard’ from New Delhi. Beneath the logo, it carried a plea to follow them on Facebook and Twitter at www.newindianexpress.com. It also carried information that the Chairman, Executive Editors and Advertisement also belonged to the ‘New Indian Express Group.’

The Plaintiff then filed an interim application before the Delhi High Court seeking an injunction against the Defendants to restrain them from using the trademarks “New Indian Express”, “Indian”, “Express” and “New Indian Express Group” and other such combinations.

The two main issues before the learned judge were:

1. Whether the Defendant had infringed the Plaintiff’s trademark?

2. Whether the Defendant was passing off its goods as Plaintiff’s?

1. The Hon’ble Court dismissed the argument of the Plaintiff, on the basis of Section 28(3) of the Trade Marks Act, 1999 and said that since Indian Express and New Indian Express are similar, so merely having registration of these marks does not give them the exclusive right against each other but only against others who have similar but unregistered marks.

2. On the issue of passing off the Court looked at whether Sunday Standard was cashing in on the reputation by using the mark ‘newindianexpress’ under the Sunday Standard logo. The Court felt that this advertisement was permissible by the agreement between the parties and it was small in comparison with the masthead and it wouldn’t mislead customers.

The Hon’ble Court providing its views on the Agreements between the parties stated “Under the supplementary agreement dated 12th August, 2005, defendant No. 1 was permitted to use the title "New Indian Express" or any of its derivatives/abbreviations on the Internet and this use does not have and cannot have any geographical limitations. By inviting the readers to join to the website www.expressbuzz.com / www.mexpressbuzz.com or to join them on Facebook or Twitter, the defendants are only promoting their Internet business in exercise of the Internet rights given to them under the supplementary agreement. To my mind, no exception can be taken to such promotion of the Internet business of the defendant under the name "New Indian Express" by the plaintiff. I fail to appreciate the contention of the learned Counsel for the plaintiff that the agreements between the parties prohibits the defendants from promoting/advertising their business outside the five southern States/Union Territories specified in the agreement, if it involves use of the express "New Indian Express". Admittedly, the defendants are entitled to publish an English daily under the name "New Indian Express" in the southern States and Union Territories specified in the agreements. There was no prohibition, in the agreements between the parties, against promotion/advertisements even of the newspaper "New Indian Express" outside the southern States and Union Territories specified therein. Hence, if the defendants want to advertise those newspapers outside the specified southern States/Union Territories specified in the agreement, by giving advertisements in other newspapers or on television or radio, that, to my mind, would not constitute a violation of the agreements dated 05th February, 1995 and supplementary agreement dated 12th August, 2005 and in any case would not amount to passing off the newspaper of the defendant as that of the plaintiff.” The Court further stated “In my view, if the defendants advertise the newspaper published by them from any of the five southern State/Union Territories specified in the agreements in any newspaper whether it is Times of India or Hindustan Times or The Sunday Standards that would neither amount to passing off nor would that be in violation of the agreements between the parties. Same would be the position if the advertisements of other newspapers are published in "The Sunday Standard" irrespective of whether it is advertisement of "Hindustan Times" or "Times of India" or "New Indian Express". If tomorrow, the plaintiff advertises its newspaper "Indian Express" in any of the five southern States/Union Territories specified in the agreements, in a newspaper published from these southern States/Union Territories, can it be said that by doing so the plaintiff was trying to pass off its newspaper as that of "New Indian Express Group". The answer again would be in negative. Therefore, to my mind, such advertisements or use of the expression "New Indian Express" or "New Indian Express Group", the way they have been used so far do not amount to passing off and also do not constitute the violation of the agreements between the parties.”

On the aspect of the authors of the editorials/articles referring to themselves by name and as Executive Directors of the New Indian Express, the Court ruled that they were not passing off their paper as Plaintiff’s.

The Hon’ble High Court also looked into the aspect of the Defendants using these marks to mislead the public into believing that the Plaintiff and Defendant were one group. Defendant informed the Court with evidence that the Plaintiff had acquiesced to the use of the ‘New Indian Express Group’ which was visible in the Publications and the Joint Letters sent by them.

The Hon’ble High Court thus, refused to grant an injunction to the Defendant but asked them to mention ‘Madurai’ with the ‘New Indian Express Group’.

TRADEMARK CLASS DISCRIPTION

Class                                                   Description

1. Chemicals used in industry, science andphotography, as well as in agriculture, horticulture and forestry; unprocessedartificial resins, unprocessed plastics; manures; fire extinguishingcompositions; tempering and soldering preparations; chemical substances forpreserving foodstuffs; tanning substances; adhesives used in industry
2. Paints, varnishes, lacquers; preservatives againstrust and against deterioration of wood; colorants; mordants; raw naturalresins; metals in foil and powder form for painters, decorators, printers andartists
3. Bleaching preparations and other substances forlaundry use; cleaning, polishing, scouring and abrasive preparations; soaps;perfumery, essential oils, cosmetics, hair lotions; dentifrices
4. Industrial oils and greases; lubricants; dustabsorbing, wetting and binding compositions; fuels (including motor spirit) andilluminants; candles, wicks
5. Pharmaceutical, veterinary and sanitarypreparations; dietetic substances adapted for medical use, food for babies;plasters, materials for dressings; material for stopping teeth, dental wax;disinfectants; preparations for destroying vermin; fungicides, herbicides
6. Common metals and their alloys; metal buildingmaterials; transportable buildings of metal; materials of metal for railwaytracks; non-electric cables and wires of common metal; ironmongery, small itemsof metal hardware; pipes and tubes of metal; safes; goods of common metal notincluded in other classes; ores.
7. Machines and machine tools; motors and engines(except for land vehicles); machine coupling and transmission components(except for land vehicles); agricultural implements other than hand operated;incubators for eggs
8. Hand tools and implements (hand operated); cutlery;side arms; razors
9. Scientific, nautical, surveying, electric,photographic, cinematographic, optical, weighing, measuring, signaling,checking (supervision), life-saving and teaching apparatus and instruments;apparatus for recording, transmission or reproduction of sound or images;magnetic data carriers, recording discs; automatic vending machines and mechanismsfor coin-operated apparatus; cash registers, calculating machines, dataprocessing equipment and computers; fire-extinguishing apparatus
10. Surgical, medical, dental and veterinary apparatusand instruments, artificial limbs, eyes and teeth; orthopedic articles; suturematerials
11. Apparatus for lighting, heating, steam generating,cooking, refrigerating, drying, ventilating, water supply and sanitary purposes
12. Vehicles; apparatus for locomotion by land, air orwater
13. Firearms; ammunition and projectiles; explosives;fireworks
14. Precious metals and their alloys and goods inprecious metals or coated therewith, not included in other classes; jewelry,precious stones; horological and chronometric instruments
15. Musical instruments
16. Paper, cardboard and goods made from thesematerials, not included in other classes; printed matter; book bindingmaterial; photographs; stationery; adhesives for stationery or householdpurposes; artists' materials; paint brushes; typewriters and office requisites(except furniture); instructional and teaching material (except apparatus);plastic materials for packaging (not included in other classes); playing cards;printers' type; printing blocks.
17. Rubber, gutta-percha, gum, asbestos, mica and goodsmade from these materials and not included in other classes; plastics inextruded form for use in manufacture; packing, stopping and insulatingmaterials; flexible pipes, not of metal
18. Leather and imitations of leather, and goods madeof these materials and not included in other classes; animal skins, hides;trunks and traveling bags; umbrellas, parasols and walking sticks; whips,harness and saddlery
19. Building materials (non-metallic); non-metallicrigid pipes for building; asphalt, pitch and bitumen; non-metallictransportable buildings; monuments, not of metal
20. Furniture, mirrors, picture frames; goods (notincluded in other classes) of wood, cork, reed, cane, wicker, horn, bone,ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes forall these materials, or of plastics
21. Household or kitchen utensils and containers (notof precious metal or coated therewith); combs and sponges; brushes (exceptpaint brushes); brush-making materials; articles for cleaning purposes;steelwool; unworked or semi-worked glass (except glass used in building);glassware, porcelain and earthenware not included in other classes
22. Ropes, string, nets, tents, awnings, tarpaulins,sails, sacks and bags (not included in other classes); padding and stuffingmaterials (except of rubber or plastics); raw fibrous textile materials
23. Yarns and threads, for textile use
24. Textiles and textile goods, not included in otherclasses; bed and table covers
25. Clothing, footwear, headgear.
26. Lace and embroidery, ribbons and braid; buttons,hooks and eyes, pins and needles; artificial flowers
27. Carpets, rugs, mats and matting, linoleum and othermaterials for covering existing floors; wall hangings (non-textile)
28. Games and playthings; gymnastic and sportingarticles not included in other classes; decorations for Christmas trees
29. Meat, fish, poultry and game; meat extracts;preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces;eggs, milk and milk products; edible oils and fats
30. Coffee, tea, cocoa, sugar, rice, tapioca, sago,artificial coffee; flour and preparations made from cereals, bread, pastry andconfectionery, ices; honey, treacle; yeast, baking powder; salt, mustard;vinegar, sauces (condiments); spices; ice
31. Agricultural, horticultural and forestry productsand grains not included in other classes; living animals; fresh fruits andvegetables; seeds, natural plants and flowers; foodstuffs for animals, malt
32. Beers; mineral and aerated waters and othernon-alcoholic drinks; fruit drinks and fruit juices; syrups and otherpreparations for making beverages
33. Alcoholic beverages (except beers)
34. Tobacco; smokers' articles; matches
35. Advertising; business management; business administration;office functions
36. Insurance; financial affairs; monetary affairs;real estate affairs
37. Building construction; repair; installationservices
38. Telecommunications
39. Transport; packaging and storage of goods; travelarrangement
40. Treatment of materials
41. Education; providing of training; entertainment;sporting and cultural activities_
42. -45   Providing of food and drink; temporaryaccommodation; medical, hygienic and beauty care; veterinary and agriculturalservices; legal services; scientific and industrial research; computerprogramming; services that cannot be placed in other classes

APPLICATION FORMS FOR TRADMARK REGISTRATION

1. 1. On application to register a trade mark for a specification of goods or services included in one class [Sec 18(1)] TRADEMARK FORM-1
2. On application to register a textile trade mark (other than a certification trade mark or a collective mark) consisting exclusively of numerals or letters or any combination thereof for a specification of goods or services included in one item of the Fifth Schedule under rule25(5) & 145. TRADEMARK FORM-22
3. On application to register a trade mark for goods or services included in a class from a convention country under section 18(1) & 154(2) TRADEMARK FORM-2
4. On a single application under section 18(2) for the registration of a trade mark for different classes of goods or services from a convention country under section 154(2) TRADEMARK FORM-52
5. On a single application under section 18(2) for the registration of a trade mark for different classes of goods or services. TRADEMARK FORM-51
6. On application to register a series trade mark under section 15 for a specification of goods or services included in a class or different classes TRADEMARK FORM-8
7. On application to register a series of trade mark from a convention country under section 154(2) for a specification of goods or services included in a class or classes TRADEMARK FORM-37
8. On application under section 63(1) to register a collective mark for a specification of goods or services included in a class TRADEMARK FORM-3
9. On application under section 71(1) to register a certification trade mark for a specification of goods or services included in a class. TRADEMARK FORM-4
10. On application for the registration of a textile trade mark (other than a certification trade mark or a collective mark consisting exclusively of numerals or letters, or any combination thereof for a specification of goods or services included in one item of the Fifth Schedule under rule 145 from a convention country under section 154(2). TRADEMARK FORM-45
11. On a request under rule 40(1) to state grounds of decision. TRADEMARK FORM-15
12. On a notice of opposition under section 21 (1), 64, 66 or 73 for each class opposed. TRADEMARK FORM-5
13. On application for extension of time for filing notice of opposition under section 21(1) TRADEMARK FORM-44
14. On a counter statement in answer to a notice of opposition under section 21, for each application opposed, or in answer to an application under any of the section 47 or 57 in respect of each trade mark or in answer to a notice of opposition under section 59 or rule 101 for each application or conversion opposed. TRADEMARK FORM-6
15. On notice of intention to oppose hearing under any of the section 21, 47, 57 and 59 by each party to the proceeding concerned. TRADEMARK FORM-7
16. On application under section 16(5) to dissolve the association between registered trade marks. TRADEMARK FORM-14
17. For renewal under section 25 of the registration of a trade mark at the expiration of the last registration not otherwise charged. TRADEMARK FORM-12
18. For renewal under section 25 of the registration of a series trade mark at the expiration of the last registration- For the first two marks of the series of each separate class: For every additional mark of the series of each separate class. TRADEMARK FORM-12
19. For renewal under section 25 of a single application of a trade mark for goods or services in more than one class-in respect of every class. TRADEMARK FORM-12
20. For renewal under section 25 of the registration of a collective mark/certification trade mark. TRADEMARK FORM-12
21. On application under section 25(4) for restoration of a trade mark removed from the register. TRADEMARK FORM-13
22. On application for renewal under proviso to section 25(3) within six months from the expiration of last registration of the trade mark. TRADEMARK FORM-10
23. On application for approval of the Registrar under section 41-
24. For the first trade mark .
25. For every additional mark of the same
26. proprietor included in the same transfer. TRADEMARK FORM-19
27. On application under section 42 for direction of a Registrar for advertisement of assignment without goodwill of a trade mark in use-
28. For the first mark assigned.
29. For every additional mark assigned with the
30. same devolution of title. TRADEMARK FORM-20
31. On application for extension of time for applying for directions under section 42 for advertisement of assignment without goodwill of trade mark in use in respect of devolution of title-
32. Not exceeding one month
33. Not exceeding two months
34. Not exceeding three months TRADEMARK FORM-21
35. On application under section 45 to register a subsequent proprietor in a case of assignment or transfer of a single trade mark:
36. If made within six months from the date of acquisition of proprietorship.
37. If made after expiration of six months but before 12 months from the date of acquisition of proprietorship.
38. If made after 12 months from date of acquisition of proprietorship. TRADEMARK FORM-23 or TRADEMARK FORM-24
39. On application under section 45 to register a subsequent proprietor of more than one trade mark registered in the same name, the devolution of title being the same in each case:-
40. If made within six months from the date of acquisition of proprietorship-
41. For the first mark
42. For every additional mark
43. If made after the expiration of six months but before twelve months from the date of acquisition of proprietorship:-
44. For the first mark
45. For every additional mark
46. If made after expiration of twelve months from the date of acquisition of proprietorship:-
47. For the first mark
48. For every additional mark TRADEMARK FORM-23 or TRADEMARK FORM-24
49. On application under section 46(4) for extension of time for registering a company as subsequent proprietor of trade marks on one assignment :-
50. Not exceeding two months
51. Not exceeding four months
52. Not exceeding six months TRADEMARK FORM-25
53. On application under any of the sections 47 or 57 for rectification of the register or removal of a trade mark from the register or cancellation of a registered collective mark or a certification trade mark TRADEMARK FORM-26
54. On application under rule 94 for leave to intervene in proceeding under any of the sections 47 or 57 for rectification of the register or removal of trade mark from the register or under rule 133 or 139 in respect of a collective mark or certification trade mark. TRADEMARK FORM-27
55. On application under section 49 to register a registered user of a registered trade mark in respect of goods or services within the specification thereof. TRADEMARK FORM-28
56. On application under section 49 to register the same registered user of more than one registered trade mark of the same registered proprietor, where all the trademarks are covered by the same registered user agreement in respect of goods or services within the respective specification thereof and subject to the same conditions and restrictions in each case:-
57. For the first mark
58. For every additional mark of the proprietor included in the application, and in the registered user agreement TRADEMARK FORM-28
59. On application under clause (a) of sub-section 1 of section 50 to vary the entry of a registered user of one trade mark where the trademarks are covered by the same registered user in respect of each of them:-
60. For the first mark
61. For every additional mark included in the application TRADEMARK FORM-29
62. On application under clause (b) of sub-section (1) of section 50 for cancellation of the entry of a registered user of one trade mark-
63. Where the application includes more than one trade mark-
64. For the first mark
65. For every additional mark included in the application TRADEMARK FORM-30
66. On application under clause (c) or (d) of sub-section (1) of section 50 to cancel the entry of a registered user of one trade mark:-
67. Where the application includes more than one trade mark:-
68. For the first mark
69. For every additional mark included in the application TRADEMARK FORM-31
70. On notice under rule 90(2 ) of intention to intervene in one proceeding for the variation or cancellation of entries of a registered user of a trade mark TRADEMARK FORM-32
71. On application under section 58 to change the name or description of a registered proprietor or a registered user of a trade mark, where there has been no change. In the proprietorship or in the identity of the registered user (except where the application is made as a result of an order of a public authority or in consequence of a statutory requirement as per law in India, where the application includes more than one trade mark -
72. For the first trade mark
73. For every additional mark included in the application TRADEMARK FORM-33
74. On application under section 58 to alter an entry of the address of a registered proprietor or of a registered user of a trade mark unless exempted from fee under rule 96(3): Where the application include more than one trade mark - and where the address in each case is the same and is altered in the same way- For the first entry,For every other entry included in the application TRADEMARK FORM-34
75. On application to make an entry of an address for service in India of a registered proprietor or a registered user of a trade mark- where the application include more than one trade mark and the address for service to be entered is the same in each case- For the first entry - For every other entry included in the application TRADEMARK FORM-50
76. On application to alter or substitute an entry of an address for service in India in the register unless exempted from fee under rule 96(3).
77. Where the application includes more than one trade mark and the address in each case is the same and is altered or substituted in the same way- For the first entry For every other entry included in the application TRADEMARK FORM-50
78. On application under clause (c) of sub-section (1) of section 58 for canceling the entry or part thereof from the register or under clause (d) to strike out goods or services from the register. TRADEMARK FORM-35 or TRADEMARK FORM-36
79. On application under section 59(1) for leave to add or alter a registered trade mark (except where the application is made as a result of an order of a public authority or in consequence of statutory requirement)- Where the application includes more than one trade mark and the addition or alteration to be made in each case being the same- For the first mark- For every other mark included in the application. TRADEMARK FORM-38
80. On notice of opposition under sub-section (2) of section 59 to an application for leave to add or to alter a registered trade mark for each application opposed TRADEMARK FORM-39
81. On application under section 60 for conversion of specification. TRADEMARK FORM-40
82. On notice of opposition in each separate class under sub-section 2 of section 60 to a conversion of the specification or specifications of a registered trade mark: For the first mark- For every additional mark included in the notice of opposition. TRADEMARK FORM-41
83. On application under section 66 for amendment of the deposited regulations of a collective mark or alteration under section 74(2) for the regulation of a certification trade mark- Where the marks are entered in the register as associated trademarks- For the regulation of one registration. For the same or substantially same regulation of each additional registration proposed to be altered in the same way and included in the same application. TRADEMARK FORM-42
84. On application under section 68 to remove the registration of a collective mark or cancel or vary the registration of a certification trade mark under section 77 TRADEMARK FORM-43
85. For a search under rule 24(1) in respect of one class TRADEMARK FORM-54
86. On request for the Registrar's preliminary advice under section 133(1) for a trade mark in respect of one class. TRADEMARK FORM-55
87. On request for certificate of the Registrar under section 137( other than a certificate under section 23(2)). TRADEMARK FORM-46
88. On request for certificate of the Registrar [other than certificate under section 23(2)] of the registration of a series of the trade mark under section 15 for each class. TRADEMARK FORM-46
89. On request for a certified copy of any entry in the register or of any document under section 148(2). TRADEMARK FORM-46
90. On request to enter in the register and advertise a note of certificate of validity, under rule 124 in respect of one mark in a class On request, not otherwise charged for correction of a clerical error or for amendment under section 18(4), 22 and 58, except where the request is made as a result of an order of a public authority or in consequence of a statutory requirement as per law in India. TRADEMARK FORM-47
91. On application for extension of time for a month or part thereof under section 131 [not being a time expressly provided in the Act or prescribed by rule 79 or by rule 80(4)] TRADEMARK FORM-16
92. On application for review of the Registrar's decision under section 127 (c) TRADEMARK FORM-56
93. On petition (not otherwise charged) for obtaining Registrar's order on any interlocutory matter in a contested proceeding. TRADEMARK FORM-57
94. On request to Registrar for particulars of advertisement of a mark under rule 46. TRADEMARK FORM-58
95. On request for a duplicate or further copy of certificate rule 62(3) TRADEMARK FORM-59
96. On a counter statement in answer to a notice of opposition in respect of a collective trade mark or a certification trade mark under section 64, 66,73 or 77 TRADEMARK FORM-9
97. For search and issue of certificate under rule 24(3). TRADEMARK FORM-60
98. On application under sub-section (b) of section 25 of Geographical Indications of Goods (Registration and Protection )Act, 1999 to refuse or invalidate the registration of a trade mark which conflicts with or which contains or consists of a geographical indication identifying goods or class or classes of goods notified under sub-section (2) of section 22 of the said Act. TRADEMARK FORM-74
99. On application under sub-section (a) of section 25 of Geographical Indications of Goods (Registration and Protection )Act, 1999 to refuse or invalidate the registration of a trade mark containing or consisting of a geographical indicating not originating in the territory of a country or a region or locality in that territory which the geographical indication indicates. TRADEMARK FORM-73
100. Notice of intention to attend hearing under section 64, 66, 73 or 77 in respect of a collective mark or in respect of a certification trade mark, as the case may be. TRADEMARK FORM-7
101. On a request to divide an application or to divide a single application under proviso to section 22. TRADEMARK FORM-53
102. On application under sub-rule 16 of rule 25 towards inclusion of specification of goods or services in excess of five hundred characters at the time of filing of application as excess space fee. TRADEMARK FORM-61
103. On application under section 43, rule 140(2) for consent of Registrar to the assignment or transmission of certification trade mark. TRADEMARK FORM-62
104. On application under rule 38(1) for the expedited examination of an application for the registration of a trade mark. TRADEMARK FORM-63
105. On application under section 63(1) to register a collective mark of a specification of goods or services included in a class from a convention country under section 154(2). TRADEMARK FORM-64
106. On application under section 71 to register a certification trade mark for a specification of goods or services included in class from a convention country under section 154(2). TRADEMARK FORM-65
107. On request for an expedited certificate of the Registrar (other than a certificate under section 23(2) of the Act) or certified copies of documents under proviso to rule 119. TRADEMARK FORM-7
108. On request for an expedited search under proviso to rule 24(1). TRADEMARK FORM-71
109. On request for an expedited search and issuance of a certificate under rule 24(5). TRADEMARK FORM-72
110. On application for registration as a trade mark agent under 152. TRADEMARK FORM A-1
111. On application for restoration of the name of a person to the Register of trade marks agents under rule 159. TRADEMARK FORM A-2
112. On application for an alteration of any entry in the Register of Trade Marks Agent under rule 160. TRADEMARK FORM A-3
113. On a single application under section 18(2) for the registration of a collective mark for different classes of goods or services. TRADEMARK FORM-66
114. On a single application under section 18(2) for the registration of a collective mark for different class of goods or services from a convention country. TRADEMARK FORM-67
115. On a single application under section 18(2) for the registration of a certification trade mark for different class of goods or services. TRADEMARK FORM-68
116. On a single application under section 18(2) for the registration of a certification trade mark for different class of goods or services from a convention country under section 154(2). TRADEMARK FORM-69
117. On request for search and issuance of a certificate pursuant to clause (ii) of sub-section (2) of section 20 of the Companies Act, 1956. TRADEMARK FORM-75

HARVARD SCHOOL AND CHICAGO SCHOOL (SOCIAL VALUE OF TRADEMARK)

Asstated above trademarks possess in itself the power to appeal consumer’sbehaviour, influencing them to purchase the marked products. This marketingpower of the trademarks has been criticised for a really long time. Thequestion “whether the marketing power of the trademark which gives “benefitthat are illusory” or creates an economic benefit which serves some usefulpurpose in marketing the product. The two major schools debating on this topicare, the Harvard school criticising the marketing power of the trademark andthe Chicago school favouring it.

HARVARD SCHOOL

Trademarkas a means of providing information through advertising gains recognition inthe minds of the consumers. The marketing power of the trademark acquired bythis recognition gives some advantages to the brand owner including some whichare not in favour of the consumer. For example, as recognized trademark appealto the consumer at emotional and psychological level, which makes the consumerto re-purchase the product and finally makes addicted to that product.“Addicted” here mean “brand insistence” where the consumer refuse to switch toany other brand. This process of inducing the consumer to buy a particularproduct is highly criticised but “Harvard school”. According to Harvard school,the firms induce consumers to buy product by “persuasive advertising”, as ‘mostadvertising, however, is designed not to inform, but to persuade andinfluence’.[1]

Itgoes further than this; Firms could use trade marks to achieve a form ofmonopoly power or at least to engage in price discrimination.^[2]The tendency of marked products to demand high prices on the market compared toalternatives or to enjoy a relatively large market share appears to favourHarvard school. Similarly, ECJ has ruled in many cases that, “the image or theaura of the recognised trademark does add value to the price of the product aswell as plays an important in conferring intangible characteristics upon theproduct, as it appeals to the mind of the consumers[3]”.According to Harvard school, it is also arguable that this is merely a form ofprice discrimination and does not add genuine value to the marked products[4].

Inconclusion, economists supporting Harvard school of thought insists on thestatement that “Firms may differentiate their product from competitor’sproducts and achieve consumers brand insistence through persuasive advertising,and insulate his market share from price competition and create high barriersto entry”. Edward Chamberlain go further that this when stating that “thepublic interest would be best served by permitting unlimited confusion throughimitation, so that it would be almost impossible to accomplish advertisingdifferentiation” ^[5],supporting no trademark at all which in my view he suggested “the world ofconfusion” where there is no way to distinguish between the products.

 

CHICAGOSCHOOL

Chicagoschool’s theory on trademark aimed to disprove the Harvard School’s theory ontrademarks and argued that, trademarks facilitate competitiveness, by reducingthe search and communication costs that may result from there being significantdifferences in the quality of products and provides mechanism for combating theproblem that consumers may lack the information and expertise they need tocompare the products available to them on the market[6].Further, Chicago School’s theory has been elaborated to take account of the cognitive impact of such trade marksonthe basis that this capacity reduces consumers’ mental or “internal search costs”.Even ECJ’s has stated that trademarks are consistent with the economic theoryof trademarks, which is associated in particular with the ‘Chicago School’ ofeconomics.^[7]

Furthermore,it can be said that the recognised brand do offer premium price, but that brandpremium cannot, over time, exceed the informational and economic value of thebrand itself. So for example, if a consumer is paying more prise for a productit is because of the highly quality and low search cost which is inferred onthe product, so it not correct to say “justbecause consumer have paid more for some products did not mean there had beenany actual increase in the quality of the product rather, they themselves havetalked into paying premium price for the same product”

Favouringthe Chicago school, in United Kingdom, the system of certification markssignifies that a firm or its products have been certified as complying withspecific standards on such matters as safety, performance or geographicalorigin.^[8]This practice gives consumers an assurance that the products they are buyinghave a certain level of quality standard and other attributes, which it haspassed to claim that mark.

Under Chicago School of thought, trademarks promotethe product rather than distort competition, they facilitate communication andreduce search, they increase the flow of information to consumers, and theyenable consumers to rely on prior experience.

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[1] Kenner ParkerToys, Inc. v. Rose Art Industries, Inc. - Confusing Play on Words Costs Doughfor Rose Art http://heinonline.org/HOL/Page?handle=hein.journals/utol25&div=14&g_sent=1&collection=journals accessed on21/7/2011

[2] Pricediscrimination occurs when a seller of products that are identical or closelysimilar to each other is able to charge different purchasers a different priceaccording to their individual willingness to pay rather than having to sell ata uniform market price.

[3] L’Oréal v.Bellure [2009] ETMR 987] and Copad v Christian Dior [2009] ETMR 683.

[4] Van den Berghand Camasasca, 2006

[5] Ralph brown,Advertising and the Public Interest, http://digitalcommons.law.yale.edu/cgi/viewcontent.cgi?article=3707&context=fss_papers&sei-redir=1#search="Ralph+brown,+Advertising+and+the+Public+Interest" accessed on09/5/2011

[6] An Economic Perspective onTrade Mark Law (Edward Elgar Publishing, 2011)

[7] McClure, 1996

[8] The 1994 Act,s. 50. (as amended).