Brand protection strategy in India includes strong trademark protection and proactive approach to prevent counterfeiting and infringement of trademarks.
Trade dress is a type of trademark directed to the distinctive look and feel of a product or service which identifies its source. To be registerable, a trade dress needs to serve as a source identifier, be distinctive in the marketplace, be used in commerce, and be primarily non-functional. Trade dress could embody the look of a product or its packaging. If a product design is identifiable with a company or source, trade dress rights prevent other products from appearing confusingly similar to a consumer, whereas Design patents provide a limited term of protection for the visual, non-functional characteristics of a product. Design patents can cover a shape, color, and pattern of an entire product or only a portion of a product.
To obtain a design patent, the design must be an article of manufacture, ornamental, novel, and non-obvious over existing designs. Although the object can provide functionality, the segment of the design to be protected cannot be purely functional. If the design is the only way to uphold the functionality of the object, the design is not qualified for design patent protection.
A design patent may not be available if an object embodying the design was publicly disclosed prior to filing the design application. Design patents can be applied before even commencement of manufacturing. Therefore, ideally, an application should be filed as soon as possible, prior to sales or other revelation.
To acquire trade dress rights, the design must be non-functional, and must have acquired “secondary meaning” such that the design is identifiable with the source. If the design entails product packaging, trade dress rights may take place from “inherent distinctiveness.” Trade dress protection can only be acquired for non-functional designs. For example, a “pink” colored bandage was not protectable because the color served the purpose of blending well with skin.
The shape of a musical instrument such as guitar was deemed too functional because it was advertised to have acoustical advantages. Demonstrating that a design has acquired secondary meaning can be difficult and requires evidence which may include testimony/surveys, or extensive marketing and/or sales of the product.
Trade dress rights do not run out as long as the design is used in commerce as a source identifier. Once a design obtains secondary meaning, future products can also benefit if they use the same protected design feature. Furthermore, a competing product infringes when it is deemed close enough to confuse a consumer regarding its source.
In contrast, infringing a design patent requires an ordinary observer to find the accused design substantially similar to the protected design, in context of prior designs in the field – generally a more difficult bar. Although not compulsory, registering a trade dress conveys a number of advantages that may serve as deterrents against copying; for example, a registered trade dress is presumed valid such that the burden of establishing invalidity falls on a copying party, whereas the owner of an unregistered mark must establish its validity.
A company by name Neeraj food products launched a food product similar to ‘Gems’, a popular chocolate product by Cadbury. The product was called ‘James Bond’. The colour schemes and nature of the foods were alike. This was opposed by Cadbury in whose favour there was a decree that restrained Neeraj Food Products from using trademarks and packaging similar to Cadbury.
The defendants propelled a brand of biscuits similar to Parle G. Both the packs looked almost the same, with the same colour scheme, similar design and size. The Supreme Court said that in order to determine misleading similarity, both packages need not be placed side by side and compared, but a general similarity would suffice, and action was taken against the defendants.
The Plaintiff is one of the finest brands of Vodka in the world. Its bottles have a unique round shape inspired by Russian Architecture. Whereas, the defendant, an Indian company propelled a product called Salute Vodka with a likewise shaped bottle, but a different trademark and colour of label. Though, the defendant argued that the consumers of Gorbatschow Vodka are well-off and can never get confused by an economic brand like Salute. The Bombay High Court decreed that the figure of the bottle is misleadingly similar and that it will tarnish the image of the plaintiff if the defendant is permitted to sell the same. Thus, the defendant was prohibited from using the shape of the bottle for selling their products.
Patent attorneys with broader scope of expertise provide legal advice and consulting on issues related to intellectual property rights and technology laws. Core practice areas include trademark filing, domestic and international trademark prosecution, trademark enforcement and trademark litigation, researching relevant trademark case laws, trademark portfolio management, trademark clearance searching, trademark valuations, brand valuations, trademark due diligence, and trademark licensing.
Law Office of Patent Attorney Rahul Dev offers high value software patent drafting and patent due diligence services to clients by using proprietary and efficiently proven process along with a fixed fee costs, for performing comprehensive patent investigations and providing clients with strong patent reports for decision making.
We provide comprehensive Patent and Trademark legal services via our global network to create valuable patent portfolios and resolve complex patent disputes by providing patent litigation support services.
Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain Patents, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).
Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.