Q 1- defines trade mark and also mentioned one example?

·         U/s 2 of trade mark ordinance 2001.

‘’ Trade mark is the mark of distinctive character which have the capability to distinguish the goods and services of one enterpriser to the goods and services of other enterpriser ‘’

·         Example.

1.       service

2.       Bata

3.       J.

4.       Gucci

5.       Whatsapp etc.

Q2- write down essentials of trade mark? /what constitute the Registerable trade mark?

1.       It must be a mark

2.       That mark should be of Distinctive character

3.       Mark should be capable to distinguish the goods and services of one enterpriser to other enterpriser goods and services.

Q3- which things can be used as mark? /subject matter of Mark?

U/S 2 of trade mark ordinance 2001

The

1.       Words

2.       Letter

3.       Devices

4.       Design

5.       Color

6.       Sound

7.       Numbers

8.       Signatures

9.       And the combination of any of above mentioned items

Can be used as mark.

Q4- defines distinctive sign?

‘’A sign is distinctive for the goods to which it is to be applied when it is recognized by those to whom it is addressed as identified goods for the particular trade source or is capable of being recognized ,or is capable being sold recognized ‘’

Or

‘’ a sign is count as distinctive sign  when its distinctive character have the capability to distinguish the goods and services of one enterpriser to the goods and services of other enterpriser and help the consumer /customer in identification of goods and services via help of distinctive  mark ‘’

Q5- subject matter of Trade Mark?

U/s 12 of trade mark ordinance 2001

The trade mark can be registered for

1.       Goods

2.       Services

3.       Or for both goods and services. 

Q6- distinguishes between trade mark and brand name?

Trade mark

Brand name

1.       Definition

‘’ every registered brand name is trade mark ‘’

1.       Definition

That is the specific name for goods and services set by owner of product and services for help of consumer for identification purposes

Or

‘’ that is the positive association with product and services ‘’

2.       Purpose

To provide legal protection to the product and services of owner in case of infringement

2 – purpose

1.       To end confusion of customer

2.       To help in identification

3.       Legally registered.

Every trade mark is legally registered so these are more secure.

3 legally registered

Brand name are not legally registered so these are not secure

 

4.       Tenure

Trade mark are registered for 10 years and can be renewed after every 10 years

4- tenure –

There is not any specified tenure in case of brand name.

5.       Example

1-coca cola

2-nestle

5 example

1-      Fatan

2-      Anwar dhuda etc

NOTE –EVERY Trade mark is brand but every brand is not trade mark.

Q7- distinguishes between trade mark and service mark?

Trade mark

Service mark

1.       Subject matter

Both

1.       Product

2.       Services

1.       Subject matter

Just

1.       Services

2.       Significance

That distinguish the goods and services of one enterpriser of other enterpriser goods and service s

2.significance

That distinguish the services of one enterpriser from the services of other enterpriser

3.       Example.

1.       Diamond foam –product matrix

2.       Asim jofa –product cloth

3.       Cadbury –product chocolate

3.Example

1. Facebook –service chat

2. PIA-service travel

3. TCS –service delivery of goods

4.Leopard –service delivery of goods

5.Mcdonlads –service food

6.Fri-chicks –service food

Note –service mark is the sub-category of trade mark.

Q8-Types of trade Mark /kinds of trade mark?

1.     Service mark.

1.       Definition.

‘’ Service mark is a mark of distinctive character that is registered for services for the purpose of distinguish from other merchant services and help of consumer for identification ‘’

2.       Example

1.       Whatsapp

2.       Leopard

Note –here the mark can be sign, logo, shape, design and color etc. . . .

2. Product mark.

1. Definition

‘’ Product mark is a mark of distinctive character that is registered for products for the purpose of distinguish from other merchants products and help of consumer for identification ‘’

2. Example.

1. Molty foam

2. Diamond foam

3. Shape mark /three dimensional marks.

1. Definition.

‘’ That is a mark of distinctive shape which is registered for products and services for the purpose of distinguish from other merchants products and help of consumer for identification ‘’

2. Example

1. Coca cola

2. Pepsi

4. Color mark.

1. Definition

‘’ that is a mark of distinctive specified color and combination of color which is registered for products and services for the purpose of distinguish from other merchants products and help of consumer for identification ‘’

 

2. Example

1. Cadbury

2. Nescafe

5. Sound mark /audible mark.

1. Definition

‘’ That is a mark of distinctive audio, sound and slogan which is registered for products and services for the purpose of distinguish from other merchants products and help of consumer for identification ‘’

2. Example.

1. Nestle Every Day –tum may hay Koch khas

2. Kit Kat –Have a break Have a Kit Kat

3. MGM Production-Lion Roar

4. Nokia bell

6. Olfactory mark /smell mark.

1. Definition.

‘’ that is the mark of disinvite smell and fragrance which is registered for products and services for the purpose of distinguish from other merchants products and help of consumer for identification ‘’

2. Example

1. Medora

2. L’Oreal

3. Black Beauty

4. Grendene –Bubble gum scent olfactory mark for sandels of Brazilian foot Wear Company.

5. Hisamitsu –mint smell trademark for pain relief patches of Japanese company.

Note –that trade mark is registered for beauty products and significant for disable consumer because they can identify products by distinctive smell.

 

 

7. Invisible mark.

1. Definition.

‘’ that is the mark of distinctive invisible sign which become visible after some action which is registered for products and services for the purpose of distinguish from other merchants products and help of consumer for identification ‘’

8. Certificate mark.

1. Definition.

U/s 83 of TMO 2001

‘’ that is the mark of disinvite character that demonstrate the origin ,quality ,material and other specific details of products and services for the purpose to demonstrate the standard of product and services in front of customers ‘’

2. Example

1. Basmati Rice

2. Rem Rice

3. Kolson

4. Nestle

5. Energy star –for electronic appliances

Note –that trade mark is registered for packed food items, toys and electronics.

9.  Collective mark.

1.  Definition

U/s 82 of TMO 2001

‘’Collective mark is the mark of distinctive character that is register by association, organization and members for their products and services to distinguish from the products and services of other association ‘’

2. Example

1. Mc Donald’s

                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                               

Q9- different degree of trade mark /distinctiveness?

1. fanciful/coined trade mark.

1. Concept

‘’These are the mark which have no relationship with the goods and services to which they represent ‘’

·         For Fanciful mark the such words are used which have no meaning in common language

·         Here the more advertisement is requiring promoting the trademark products and service to customer.

·         These are the strongest mark

2. Example.

1. Google

2. Adidas

3. Haier

4. Dawlance

2. Inventive trade mark.

1. Definition

‘’ these are the such mark where the proprietor use the initials of their name to made the distinctive mark for their products and services to distinguish them form other merchants products and services ‘’

·         These are forever mark

·         Here, also more advertisement is requiring.

2. Example.

1. HSY

2. J.

3. Maria B

4. Sana safina

5. Afzal electronics

3. Common words /arbitrary trade mark.

1. Definition.

‘’ these are the such mark where common words are used but these common words have no relationship with the products and services to whom they represent ‘’

·         These are strongest mark

2. Example.

1. Camel

2. Apple

3. Piano

4. Deer

5. Dollar

4. Suggestive mark.

1. Definition.

‘’ These are the mark which represent the particular quality of the products and services but not describe them completely ‘’

·         These are neutral mark

·         And can be registerabale

2. Example.

1. IPhone

2. Aquaphina

3. Surf excel

5. Descriptive mark.

1. Definition.

‘’ These are the mark which represent the attribute, purpose and nature [description] of the products and services ‘’

·         These are weak mark

·         And can be not registered unless not attain distinctiveness.

Example.

1.       If the mark “Car Wash” were used to represent a car washing business, it would not be registerable.

6. Generic Mark.

1. Definition.

‘’These marks are the actual names of the products or services they represent. ‘’

·         They are not eligible for registration under any circumstance.

·         Example

The mark “Phone” for a phone would be ineligible for registration.

7. Brand name.

1. Definition.

‘’These are the positive association set by the proprietor to their product and services ‘’

2.       Example

1. Service

2. Gucci

3. Bata 

Q10-principles of trade mark?

·         There are two common principle of trade mark.

1.     Principle of exhaustion.

1.      Meaning

Exhaustion means end

2.      Concept

‘’ This principle exhausts the right of proprietor of trademark to restrain the purchaser from resale of trademark product and services after sale of trademark product and services by the proprietor ‘’

Or

‘’ Owner can’t object the further resale of product ‘’

3.      Logic of exhaustion.

1. Because his monopoly right of price control exhaust after sale.

2. And new owner has right to further sale of his product due to ownership.

4.      Consequences of principle of exhaustion.

This principle become the cause of the situation of

·         parallel importation of goods

‘’ that is the such situation where the purchaser buy the product from some locality in low price and then further resale these same product in other locality in high prices ‘’

·         Example

1.      One person buys Toyota cars from japan and now further resale these cars in developing countries like Pakistan and India on high prices.

2.      One person buys HIV medicine from America and now further resale these medicines in developing countries like Pakistan and India on high prices.

5.      Is principle of exhaustion count as infringement of trademark rights?

·         No, principle of exhaustion is not count as the infringement of trade mark rights because the new owner sale the trademark products on registered trademark name of proprietor.

·         But that count is infringement if purchaser sale the product of the propriter but change its name so now due to counterfeits reason that count as infringement.

6. Rationality of principle of exhaustion.

Nobody can take the advantage of same product twice.

2. Principle of territoriality of rights.

1. Concept.

‘’This principle limitized the purchaser to resale of trademark products just into the particular territory where he purchase the product but can’t sale these product outside of the territory without the consent of actual trademark owner ‘’

2. Logic.

·         Because here the monopoly of trademark owner just exhaust on national level after sale not on international level.

3. Exception.

·         Exception of principle of exhaustion because in exhaustion principle after sale the monopoly exhaust on both national and international level while here the monopoly exhaust just to the particular territory .

4. Applicability.

·         Applicable in UK and Germany.

5. Example.

1. A person purchase basmati rice in Pakistan now he can further resale that trade mark rice just In Pakistan territory not outside of Pakistan jurisdiction under this principle.

Note –both above mentioned principle are not practicable in Pakistan. 

Q11-Rights of trade mark owner?

·         The trademark holder has following right.

1.      he has right of exclusion for his trade mark product and services .u/s 39 of TMO 2001

2.      He has right to use his TM product and services.

3.      He has right of advertisement via trade mark.

4.      He has right to relief in case of infringement. U/s 39 of TMO 2001.

5.      he can renew his registration for 10 years by payment .u/s 35 of TMO 2001

6.      He can assign his trademark to other person by sale, license, assignment etc. . . . . U/s 69, 75, 76 of TMO 2001.

7.      he can surrender his trademark either whole or part .u/s 79 of TMO 2001

Q12- Remedies for the infringement of trade mark?

·         in case of infringement of registered trademark the

Following remedies are awarded to trademark holder.

1.      by compensation of damages and loss .u/s 46 of TMO 2001

2.      by prohibition of further use of similar trade mark .U/S 46 and 53 of TMO 2001

3.      by confiscation of products involving in the TM infringement  .u/s 56 of TMO 2001

4.      by erase, removed  and destruction of offending mark from those  products which involving the TM infringement  .u/s 47 of TMO 2001

5.      By delivery of such products to TM holder which involving in the TM infringement .u/s 48 of TMO 2001.

Q13-when an Infringement of trademark constitute?

In following situation that is consider that the TM infringe.

1. When the confusion create for public u/s 40 of TMO 2001

2. When the similar trade mark used for the same products for which already trademark registered .u/s 40 of TMO 2001?

3. When close relation create with other registered product to use good will of that registered product to earn profit by deception to public .u/s 40 of TMO 2001

4. by breach of restrictions in respect of registered TM products which are set up by the TM proprietor and license .u/s 41 of TMO 2001

 

Q14–when does a ‘’ Mark’’ loses its distinctiveness?

·        When the distinctiveness  character of trade mark instead to differentiate among the competitor products of other undertaken ,become the descriptive symbol of the Trademark products for which it is registered so as the result of failure of highlight difference and prominent of description of Trademark products and services the mark loss its distinctiveness .

Q15-how the ownership of trademark change, and what would be the legal effects of change of ownership?

A-change of ownership of TM.

·        Trade mark is intellectual property so like other formed of property here also the ownership can be shift from person to person.

·        In case of trade mark the ownership can be changed by following modes.

1.      1.By absolute ownership .-sec 69

·        Here absolute rights of ownership are shift

·        That can be in the form of sale and will

 

2.      2.By assignment of rights .sec 69

Here the absolute rights of ownership are not shift to assignee just few rights like some interest in TM products and services are assign to transferee

3.      3.By licensing .sec 75 and 76

‘’ here the TM holder in writing give the authority to licensee to use the registered trade mark in respect of particular goods and services and also mentioned the manner and locality to use that trade mark’’

·        That license must be in writing form

·        Must mentioned the manner to excursive It

·        Must mentioned the locality where exercised

·        Must mention the goods and services for which it is granted.

·        Must have the sign of granter or the person who sign on behalf of grantor.

·        That license can be limited or exclusive.

B- Legal effect of change of ownership.

·         U/S 70 of TMO 2001.

·         When THE ownership of trademark change either by any form of assignment then the person to whom the ownership shift claim to have interest in registered trade mark on the base of that assignment transaction.

·         And show to registrar that instrument then the registrar enter his name as assignee, license, owner etc. in Trade mark Register for TM registered products and services.

·         And after registration the new owner hold the status of recorded owner and after the feed of his name in record he on the base of ‘’ Locus standi ‘’ position exercise the trademark rights so can sue in case of infringement .