Trademarks can be very confusing, especially if you aren’t familiar with them or haven’t had any experience filing a trademark application before. However, you can go through this process with trademark agencies, such as Trademark Engine, that can help you with your concerns about setting your trademark.

This article covers some common mistakes businesses make regarding trademarks so that you don’t make the same mistakes.

Not Filing A Trademark Application

You don’t want to lose control of your brand. However, you must file a trademark application to use the symbol next to your brand name in marketing materials and products to protect it. Not filing a trademark application means anyone can use your brand name. In turn, you cannot enforce your rights against others using it without your permission. 

By applying, however, you have the right to sue infringers in court and have them ordered not only to stop using the infringing mark but also to pay damages for using it in the past.

Not Selecting A Strong Mark

Several factors determine whether a mark will be strong or weak. First, the mark’s strength is defined by its distinctiveness, not by its literal meaning. For example, suppose you have a product with a name like ‘sassy and yummy’ and want to use it in your company logo. It would help if you considered changing it to something else because it’s too descriptive for trademarking.

A strong trademark should neither be generic nor descriptive nor confusingly similar to another existing mark. If possible, try searching through various databases before deciding what name will best represent your company to avoid future problems.

Using A Trademark Before It’s Registered

Using a trademark before registering is another common mistake that businesses make and can have dire consequences. For example, suppose you use a trademark before you register it. In that case, you may lose the right to use that mark or infringe on someone else’s trademark rights. 

You should also know that there’s no legal protection for your business name when not used in commerce (i.e., offering goods or services). This means that anyone could potentially use your business name without consequences and even go so far as registering your business name as their own.

Ignoring The Need For International Protection

If you’re a small business using your trademark in your country, that shouldn’t be an issue. However, suppose you plan on expanding internationally someday. If that’s the case, know that even if your mark is registered in your home country and has no direct competitors in others, a business from another country can still register a similar or identical mark.

In addition, there may be certain geographic limitations on your trademark rights. However, your rights depend on where you use it and how much market share you’ve gained outside your home country. For example, some companies have gained exclusive trademark rights for their marks. They’ve used these marks extensively throughout different continents instead of just one specific country.

This can lead businesses into trouble when attempting international expansion. Businesses from other countries might argue that their trademarks are too similar, especially in geographical areas outside North America but not within it (such as Europe).

The last thing any entrepreneur wants is for someone else’s trademarked name or logo to appear next door at their establishment, but this could happen if he doesn’t take steps now toward global protection before his business takes off

Failing to Police Your Mark And Prevent Infringers

Once you’ve established a trademark, it’s essential to be vigilant in protecting it. This means monitoring the market for potential infringers and, when necessary, taking action against them.

You should also protect your intellectual property (IP) rights, not just your trademarks. Sometimes, people may imitate your brand name or logo to confuse customers into buying their products instead of yours. This is called “trademark infringement.” 

In other cases, someone might create an entirely different product but give it a similar name or design as yours. These strategies will confuse the two companies’ products and services or customers can believe they’re getting something from one company when buying from another.

Either way, you must protect yourself against this kind of IP theft. You must ensure that anyone who wants access gets permission first and that they immediately cease any unauthorized use.

Not Understanding Your Rights

You should also know your rights. Knowing what you can do and how to protect yourself from others infringing on your trademarks can help you avoid potential problems. For example, you may be able to take legal action against someone who’s infringing on your trademark or even prevent them from using a similar trademark in the future.

Knowing about trademarks can also help you ensure that no one else infringes on yours by creating confusion among consumers. For instance, suppose someone else starts selling their product under a similar name to yours. The customer might buy it thinking it’s yours, or they might not buy either product because they’re confused about which one’s better.

Not Knowing Your Rights When Someone Infringes

If you have a trademark and someone is infringing on it, there are several things you can do. You can file a lawsuit against them. You can send them a cease and desist letter telling them to stop using your mark or face legal action. 

Suppose someone has already been granted rights over a trademark similar to yours. If those rights were granted by mistake, you might want to consider filing a cancellation action against their registration. This alternative can help you not start over from scratch by filing another application for trademark protection. Furthermore, starting from scratch can take longer than just having theirs canceled outright at this point.

Conclusion

The best way to avoid these mistakes is by seeking the advice of a qualified trademark attorney. They can help you ensure that your application meets all the requirements and addresses all the potential issues so that there won’t be any surprises (or objections) when it comes time for review.

The post 7 Trademark Mistakes Businesses Should Avoid appeared first on Legal Desire Media and Insights.

There are 2 main parts of the trademark registration process. The first part relates to the preparation of the application, including similarity screening, selection of goods & services, application drafting and filing. With a reliable partner, this part of the process can take as little as 3 days.

The second part of the process is however carried out by the Intellectual Property Office in the form of examining and approving the trademark application. This process starts with a formal assessment of the application, and continues with the publication of the trademark application for oppositions from existing owners of registered trademarks, leading towards the consequent registration and issuing a trademark certificate should no objections be raised. The analysis carried out by Trama has revealed significant differences in the length of this process across individual jurisdictions, ranging from 76 days in Benelux to 583 days on average in Canada.

While the sheer length of the administrative process can be rather off putting, it needs to be acknowledged that it is the date of filing the trademark application that defines the start of brand protection. In practical terms, although the owner of a trademark needs to wait until the trademark registration process is completed, they can effectively use the trademark to challenge any infringement attempts that occurred after the trademark application was filed. Alternatively, if two companies applied for a similar trademark, it is the date of filing that decides which of the applicants has the priority right.

Length of trademark registration process in the US

The average length of the trademark registration process in the United States is 391 days. As a result, United States Patent and Trademark Office (USPTO) is one of the three Intellectual Property Offices included in this evaluation that fails to process a trademark application within a period of one year. The standard deviation of 115 days also points towards a considerable level of variability in the process. The gradual increase in the length of this process over the recent years can be attributed to the growing number of trademark applications filed with the USPTO, highlighting apparent gap in its administrative capabilities.

Length of trademark registration process in the EU

On average, it takes 150 days to register a trademark in the European Union. The standard deviation of 89 days implies that the whole process may in fact exceed 8 months. In comparison to the registration in the US, the conduct of the European Union Intellectual Property Office (EUIPO) can be however still viewed as highly efficient, limiting the waiting period for trademark applications.

Length of trademark registration process in the UK

Average time to register a trademark in the United Kingdom is 141 days. With a standard deviation of 30 days, United Kingdom Intellectual Property Office (UKIPO) stands out as one of the most consistent and most efficient Intellectual Property Offices included in this analysis.

Length of trademark registration process in Canada

On the contrary to the UKIPO discussed above, trademark registration process in Canada takes 583 days (on average). This is by far the longest period. Furthermore, the standard deviation of 136 days highlights a considerable volatility in the length of the process, revealing that it may easily take over 2 years to complete the process of trademark registration in Canada.

Length of trademark registration process in China

The average length of the trademark registration process in China is 289 days. The length of the registration process may however exceed one year due to a moderate level of variation in the process duration (standard deviation of 74 days).

Full details of the analysis have been published by Trama and can be access on the website of this trademark one-stop-shop.

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When evaluating potential candidates, there are several factors to be considered. After all, you’re going to that person with a high level of responsibility, so you might as well ensure that the trademark attorney is one of the best, if not the best. 

Choosing a trademark attorney isn’t easy, but if you know the right questions to ask, you should be able to hire a highly skilled and competent one. With that said, here are the top 4 questions to ask before you hire a trademark lawyer.

• How Much Experience Do You Have Working In Trademark Law?

You realize the importance of trademarks for your company or business, but you don’t have the knowledge to do it on your own, which is why you need to hire a trademark lawyer who specializes in this particular field. 

With that said, your top priority is to find a lawyer who’s equipped with knowledge and experience in trademark law. Make sure to question and assess their experience in major international markets such as the United States. To do that, you should ask a prospective candidate directly about their experience level when it comes to trademark law, how many years of experience do they have, and if they specialize in it? 

Once they answer those questions, you should follow up with another question asking about examples of previous clients that they’ve worked together with and were they successful with registering previous trademarks for these previous clients in the past? 

These questions should be able to provide you with helpful information on who are you going to hire. 

• How Does The Trademark Registration Process Work?

This is another important question to ask a trademark attorney. A trademark lawyer should be able to explain to you the whole trademark registration process before you hire them. You should know how they will handle your registration process. They should be able to show what type of databases to assess the availability of your trademark and the risks associated with your chosen trademark symbol.  

Aside from that, your attorney should be able to inform you how much it costs to register a trademark as well as other fees. Your trademark lawyer should explain to you the different filing fees that depend on the type of application.  

Also, your trademark lawyer’s job doesn’t end after registering your trademark. Your lawyer will help you protect your trademark by teaching you how to file maintenance documents or represent you against infringers.

• What Databases Do You Use?

A reputable trademark lawyer should never use free databases when it comes to searching trademarks. Free databases lack functionality when it comes to making comprehensive searches and assessments. 

Government databases can help you find out if a trademark is already in use, if they lack the functionality which is needed to evaluate phonetics, or if there are visual similarities between other trademarks. 

There are also trademark attorneys that are willing to expand their scope of the search for an additional fee. 

• How Much Do You Know About Different Marketing Strategies & The Internet?

A trademark attorney should have in-depth knowledge about different Internet marketing strategies and advertising-related problems. Before you hire a trademark lawyer, you should ensure that he is well aware of the relationship between marketing domains and trademarks. 

Your trademark lawyer should also offer honest advice when it comes to selecting and protecting the brand names of a company. Most of the time, a trademark attorney will suggest clients to choose a new trademark and start from the beginning, especially if you’re looking to trademark a phrase. Your attorney will offer help on whatever things you need to file and ensure that all procedures are observed properly and efficiently.

Final Thoughts

Of course, there are still plenty of other questions that you need to ask a trademark lawyer before hiring them. As with anything else, it’s crucial that you ensure that the attorney you’re going to hire is up to the task and can deliver the help you need from them. Your trademark lawyer should be able to support you through all the “ifs and buts” that your business is going to face when it comes to trademarks. The questions that we discussed above should be asked during the first meeting as they will help guide in finding a trademark lawyer that’s competent and trustworthy. 

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Patent is one of the pillars of IPR and it gives its owners exclusionary rights over the invention.

The word patent is derived from the Latin word ‘Patere’ which means ‘to open’ or ‘lying open’.

Patent is defined as a constitutional privilege granted by the government to inventors, and to other persons deriving their rights from the inventor.

It is a domination right approved by the Government to exclude others from exploiting or using a particular invention. This exclusive monopoly granted by way of patent is a cartel right, which offers exclusivity to the patentee to exploit the invention for 20 years after which it falls to the public domain.

A Patent granted under the provisions of the Patents Act, 1970[1] enables the patentee exclusive right to make, use, exercise, sell or distribute the patented article or substance, and to use or exercise the patented process. The act seeks to provide for legal protection of inventions. It even helps in identifying emerging technologies and further emerging areas.

The objective of the patent law is to provide a right to owner of the patent for a certain period of time for disclosing its invention, to use it and to practice that invention and make it work; therefore encouraging scientific research, new technology, stimulate new inventions of commercial utility and pass invention into public domain after the expiry of the fixed period of the monopoly.

If the grant of the patent is for a product, then the inventor has a right to prevent others from making, using, offering for sale, selling or importing the patented product in India.

If the patent is for a process, then the inventor has the right to prevent others from using the process, using the product directly obtained by the process, offering for sale, selling or importing the product in India directly obtained by the process.

WHO CAN APPLY FOR PATENTS?

1. True and first inventor of the invention;
2. Assignee of the true and first inventor of the invention;
3. Legal representative of the deceased person who was entitled to immediately make such application before his death.

An application can be made by any of the above persons either alone or jointly with any other person(s).

CONDITIONS OF PATENTABILITY

An invention must meet several standards if it needs to be eligible for patent protection. These includes:-

• Most expressively, that the invention must consist of a patentable subject matter,
• The invention must be industrially useful,
• It must be novel (new),
• It must unveil a sufficient “inventive step”, and
• The complete revelation of the invention in the patent application must meet assured standards.

The three main patent eligibility criteria are described as below:

1. Novelty

Novelty is a basic requirement in any examination and is an undisputed condition of patentability. An invention is new if it is not anticipated by the prior art.

1. Inventive Step (Non-Obviousness)

In relation to the requirement of inventive step, one needs to seek answer to the question as to “whether the invention would have been obvious to a person having ordinary skill in the art or not” in order to determine in the examination as to substance.

1. Industrial application

In order to be patented, an invention must have an industrial application.

Section 2(1)(ac) of The Patents Act, 1970, states about “capable of industrial application” if any invention can be made or used in any kind of industry, then it is known to be a subject matter with industrial capability.

In today’s scenario, the aggressive and targeted patenting is the need of the hour; in order to encourage more innovations and research and development and to attain monopoly right over their intellectual work. The traditional patent search technologies were so complex, and patent databases have had become so large, that comprehensive patent searches could take days to execute and the need was felt to optimize both the search process and the ability to deliver actionable observation by getting advanced analysis tools; and hence in India, there was adoption of a specified procedure set to file Patent.

The very first recommendable step in patent registration procedure is to perform a detailed search to determine the chances of getting a patent on the basis of eligibility criteria set.

The next step is to prepare an application for registration.

There are two different types of patent registration application: Provisional and Complete.

Provisional Application– It is often the first or transitory application filed in respect of an invention which is still in the experiment stage but have a clear thought behind the innovation, and usually contains only a brief description of the invention.

As the word ‘provisional’ suggests, it is not a final legal documentation with respect to patency and is suggested to file only if the inventor has incomplete information or just an idea and have an intention to get some time period to develop the product or gain complete information of the invention.

And once this application is filled and accepted, then the applicant can put the tag of “patent pending” on the product desired to be patented and due to this, he enjoys all the patent rights on that invention.

It must be noted that within twelve months from the date filing of the provisional specification, original or complete specification must be filed and it implies that the inventor needs to conclude the innovation and to assess its marketability potential within such period.

Original or Complete Application– It consists of full description and disclosure of the invention; stating its title, field of invention, the background of the invention, the description of the related art, drawbacks of the prior art, the summary of the invention, the brief description of the figures, the detailed description of the preferred embodiments, claims and abstract.

In case where the product or process invented is already completed, there is no necessity of temporary application. The inventor can directly file by way of original or complete application with all the requirements at once.

Next, Filing and Prosecuting Patent Applications-

The procedure for the grant of a patent starts with filing of the patent application and paying off the prescribed fee at the patent office or online, and then after the publication of the application, filing of request for examination, in the prescribed form.

The applications are examined significantly and a first examination report stating the objections, if any, is communicated to the applicant. Application may be amended in order to meet these objections.

If there is failure of complying with the objections, the application will be left there and then.

After complying off the requirements, the application is published in the Official Journal. Patent will be granted if the application is found to be in order. Then, the application and other related documents will be open for public inspection. Thereafter, at any time between granting and before expiration of period of one year from the date of publication, there is availability of provision regarding opposition on substantive grounds. And after the expiration of the said period and in case of non- objection, final patent is issued.

COMPLETE LICENSING

Compulsory License is an important part of the Patent system. The 1970 Act by way of several amendments explored the phenomenon of compulsory licensing and the grant of compulsory license that are contained in the section 84 to 92 of the Act.

The compulsory license can be granted in India at any time after the expiration of three years from the date of the sealing of a patent, any person interested can make an application to the Controller for grant of compulsory license on patent on any of the below mentioned grounds as per section 84(1)of the Act[2]:

1. If reasonable requirements of the public have not been satisfied;
2. If the patent invention is not available to the public at an affordable price; and

iii. If the patent invention is not worked in the territory of India.

Types of patent licenses

There are two types of patent licenses as mentioned below:

Exclusive license: A patent owner transfers all aspects of ownership to the licensee only retaining the title to the patent. The patent owner surrenders all rights under the patent (including the right to sue for infringement and the right to license) to the licensee.

The licensee obtains the right to sub-license the patent and sue for patent infringement. However, the exclusivity can be limited by a field of use as per the contractual obligations (written or oral), like, the patent owner promised the licensee that for the specified filed of use, nobody else will be licensed.

Non-exclusive license: By granting a non-exclusive license, the patent owner principally promises not to sue the licensee for patent infringement. It is assumed that acquiring this type of license, the licensee acquires the freedom to operate in the space protected by the licensed patent, but this may depend on whether the licensee’s products infringe other patents or not.

[1] http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf

[2] https://indiankanoon.org/doc/799603/

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Consequences of a vaccine without IP rights

IP is an enabler and without IP and its incentives, the world not is able to see the COVID-19 vaccine in such a large number and in such a small period of time. It is IP that encourages the pharmaceutical industry to invest in R&D related to the COVID-19 virus.        

Roche Group’s CEO Schwan who is also IFPMA Vice-President said that selling such an expensive technology without IP will not give much profit and will not sustainable in the long-term.[ii] After the landing of the vaccine in the market, there is a need to provide the vaccine in a large number, through cooperation with other producers and sharing IP related to vaccine and without the IP it will not be possible.

History of waiver of IP in case of drugs

In the past, many countries have tried to dilute the IP right of some drugs related to some serious diseases. In Many cases, the countries were gone through legal battles against giant pharmaceutical companies. In the case of Novartis Ag vs Union Of India & Ors, it took around 8 years to protect section 3(d) of the Indian Patent Act, which was challenged by the Company Novartis to monopolize the drug Glivec, a drug that treats Leukemia. It was April 1, 2013, when the Supreme Court rejected the argument of Novartis to struck down section 3(d) as it is unconstitutional. Novartis tried to patent the drug whose patent is about to end in another chemical form (Crystalline form) whose patent was about to end. And such patents are restricted under section 3(d) of the Act.

During 1996 a new drug of AIDS treatment was dropped in the African market whose cost was around $10000 for a year, which was too high to afford.[iii] It took almost 10 years to break the monopoly of the company by the governments and to bring down the cost of the drug. As the death rate was at its peak during this period a lot of deaths were happened just because of the high rate of the drug.

There is more likely that in the case of COVID-19 vaccine, to make revenue the companies may try to monopolize the market and it would take a lot of time to make the drug available to the poor Nations.

According to the vaccine producing capacity ( for the year 2021) of the companies, 82 percent of the vaccine in the case of Moderna and 82 percent in the case of Pfizer have been already sold to the rich countries like U.S., E.U., Japan, and Canada.[iv] Canada has pre-ordered vaccines in such a large number that it is equal to 10 doses per capita. It is totally up to the opposing countries to pressurize their companies to give up their IP as in many cases the governments have provided money from the public fund for the development of a vaccine. In the case of Astrazen, a sum of $2 billion and $2.5 billion in the case of Moderna was provided by US govt. German Government also provided $455 million to Pfizer for vaccine production.

What law says?

Article 31 of TRIPS allows the state party to use the patented drug without authorization in case of extreme urgency or national emergency shows that the Intention of the TRIPS agreement is to protect the right of the producers but in case of urgency like COVID-19 such right can be waived off by the state governments. COVID-19 is an extraordinary situation and almost all the countries have been affected by it.[v]

As the right to health is a fundamental right under Article 25(1) of the Universal Declaration of Human Rights (UDHR), Article 2(1) International Covenant on Economic, Social, and Cultural Rights (ICESCR), and under Article 6 (1) of International Covenant of Civil and Political Rights (ICCPR), these provisions make an obligation on the states to provide access to the drug to its citizens, which would be possible only after lowering the rates of the vaccine.[vi] Paragraph 4 of the Doha Declaration on the TRIPS Agreement and Public Health, 200,  says that the TRIPS agreement does not hinder the state to take steps to promote public health. Goal 3 of the Sustainable Development Goals (SDG) adopted in 2015 commits to ensuring the healthy life and promotes well beings. All these international laws promote the waiving of the IP rights from the essential life-saving drugs as without which these goals are hard to achieve.

The way ahead

While taking any step on this matter the WTO should also take care of the arguments made by the opposing parties that if Patent is waived off the big pharmaceutical companies would not further invest in the research because there would be no returns after the product is ready which would halt the progress of vaccine production.

Going through the procedure to invoke these provisions by individual countries would take a lot of time and by that time there would be a number of deaths and other economic losses to the countries. WTO should take appropriate steps to give access to the COVID-19 vaccine equally to all the countries.

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1. It Is Difficult to Correctly Register a Trademark

Many startups put off registering a trademark because they think it is a difficult process. But the longer you leave trademarking your intellectual property, the more you leave your business’s name, logo, and designs open to being ripped off by competitors. The best time to trademark things like your business name and logo is before you even launch your business. Anyway, registering a trademark is not as challenging as it may first appear. However, you do need to ensure you register trademarks correctly. So, the best option is to hire a trademark registration company in which experienced trademark attorneys do a search report on your trademark possibilities and then process your application with the Trademark Office for you, handling all of the necessary formalities along the way.

2. You Can Never Use a Competitor’s Trademarks

It is dangerous to use other businesses’ trademarks in your marketing materials because you do not want to end up infringing on those trademarks and facing a lawsuit. However, it is just as damaging to not fully understand how and when you are able to use competitor’s trademarked names, logos, and slogans. There are certain times when you can indeed use those in your marketing content without infringing on your competitor’s intellectual property. The key is to know the precise legal rules. Typically, you can use competitors’ trademarks to fairly and accurately describe or compare their products or services with your own and others. That can be an effective marketing tool because you get to highlight your brand’s attributes in comparison with your competitors. Approach comparative advertising with caution, though. Always make sure you know what you are legally allowed to do and not do. It is a good idea to consult with a trademark attorney to ensure you do not make any dangerous mistakes.

3. You Do Not Have to Stick to Registered Classes

When your trademark is registered it will fall into certain categories. For example, you could file a trademark, for a word or logo, to be used in the class that covers clothing items like hats, shorts, T-shirts, and pants. But if you do not use your trademark in the way it was registered, your trademark could face full or partial cancellation. So, if you only use your trademark on hats but not the other items under which the mark is registered, you could run into problems. You should always use the trademark precisely as it is registered for all goods or services listed in your original trademark registration.

4. You Do Not Need to Do Anything After Your Trademark Is Registered

A common misconception is that once you have registered a trademark, you never need to keep an eye on competitors potentially using your names and designs because the Trademark Office will prevent others from using similar trademarks. The truth is, just because you have trademarked things like your business name and logo, it does not mean competitors will not use them. They are less likely to use them because they are trademarked but rip-offs are still rife. It is up to you to search for similar designs. If you find any that are infringing on your trademark, you will be able to file a lawsuit.

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So, here’s why you need a trademark attorneys.

1. For Trademark search analysis

This is often the first and one of the most important steps in the establishment of a brand. Once you have established that you have a great product and unique name to match, you need to conduct a trademark search to determine if the name is already in use or seems closer to another name on the market. With the help of a trademark attorney, you can search and analyze the results together before you decide to proceed. If there’s another one already, you may have to pick another name.

2. For brand protection

Trademarks are considered the cornerstone of a business or company and the pillars that support the brand. They distinguish you from the rest of the competition and people can easily tell you apart. For this reason, some individuals and businesses can take advantage of your trusted brand and sell counterfeit goods and services posing as you or your company. You can lose so much money in the process because of people posing as you. Also, you can face lawsuits for damages people suffer because of the counterfeit. A trademark attorney helps by ensuring your brand remains strong by analyzing the company name and logo, establishes their strengths and weaknesses, and develops a solid long-term protection plan of that trademark so that you can reap the benefits of your strong and established brand.

3. For registration deadlines

Searching to ascertain that you’re the only owner of a brand name is only half the battle; you also need to register it and adhere to registration requirements. In the U.S., for instance, a trademark owner is required to renew the brand registration within 6 years and every decade thereafter. As a trademark or brand owner, you may not be able to keep up with the registration deadlines. However, a trademark attorney will help you ensure your registration is always valid. It is easy to overlook such details, but this can quickly become a big deal if missed.

4. To avoid unnecessary rebranding

Another major benefit of hiring a trademark attorney is that it helps to avoid unnecessary rebranding in the future, as this could be potentially costly. Choosing the wrong brand now carries the potential cost of rebranding in the future, and you don’t want that considering the price you may have to pay for a mistake you made in the past. Considering you may have to pay a lot of money for a logo designer and new registration in the future, you may want to avoid this double cost by hiring a trademark attorney to help you make the right decision at the beginning.

5. It is cost-saving in the long run

Every organization wants to save money by minimizing costs and maximizing profits. This not only ensures that the company can meet its financial obligations as they fall due but also provides an opportunity for growth and development to expand the company. With a trademark attorney, you can know the aspects of your trademark that require protection and those that don’t. He or she will also ensure the trademark application is properly filed right from the start so that you can avoid forfeiting filing fees, and adequately respond to preliminary refusals.

So, the importance of a trademark attorney cannot be overemphasized. Trademarks can be complicated if you lack the right legal experience. Not only will you do things right the first time but you’ll also save money in the long run.

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Have you come across the famous F.R.I.E.N.D.S graphic tees and the show’s famous dialogues merchandise which are available at various top notch ecommerce websites like Amazon.com, H&M, Bewakoof.com, Ajio.com, Forever21? The major question which arises is that are these websites and sellers registered under these websites authorized to use such graphics and obtain profits in lieu of the show’s popularity. And have you ever come across some headlines in the past decade like “There’s actually a Central Perk Cafe right here in our very own Delhi! One visit here and you’d be able to imagine yourself sitting in the same ambiance, the same quirky and eye-catching interiors, the same kind of furniture – eating, chilling and having a good time – just what you used to fancy while watching the sitcom!” or “Cafe Friends- Did the name itself bring a smile to your face? We know it! This cafe, located in Gurugram, doesn’t all-out incorporate the F.R.I.E.N.D.S. theme”

It has become increasingly common and popular for cafes around the world to adopt a particular theme from a fictional character, a book, or a sitcom for that matter for creating overhype in the fans’ heart– but how genuine are they? What is the law that surrounds the foundation of such cafes and are they infringing any copyright? And is it okay if your cafe is just merely inspired by such shows?

Can a theme of the restaurant be possibly copyrighted? The theme here essentially implies the concept or idea that defines the general ambience of the restaurant. The Copyright Act, 1957 does not rigidly mention whether the ideas are protected under the law. But it has been observed that ideas are not copyrightable, only expressions are. Even the TRIPS Agreement grants protection to expression and not ideas, methods, concepts. WIPO, in consonance with TRIPS Agreement, even specifies that it is the expression which is protected under Copyright laws and not ideas or concepts.

The idea-expression dichotomy has also been discussed in various judicial pronouncements and in case R.G. Anand v. Deluxe Films (AIR 1978 SC 1613), the Supreme Court has laid down propositions in consonance with idea-expression dichotomy that:

1. There can be no copyright in an idea, subject matter, themes, plots or historical or legendary facts.
2. Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur. In such a case the courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work.
3. One of the surest and the safest test to determine whether or not there has been a violation of copyright is to seeing the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original.
4. Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises.
5. As a violation of copyright amounts to an act of piracy it must be proved by clear and cogent evidence after applying various relevant tests.
6. Even though the work appears to be similar and the intention to copy the original is quite evident, the coincidences appears that the two works are clearly incidental so no question of infringement of the copyright comes into existence.
7. The perspective plays a major role. Where however the question is of the violation of the copyright of stage play by a film producer or a director the task of the plaintiff becomes more difficult to prove piracy. It is manifest that unlike a stage play a film has a much broader perspective, a wider field and a bigger background where the defendants can by introducing a variety of incidents give a color and complexion different from the manner in which the copyrighted work has expressed the idea. Even so, if the viewer after seeing the film gets a totality of impression that the film is by and large a copy of the original play, violation of the copyright may be said to be proved.

Also, to put it simply, this also comes under the concept which is known as Adaptation. Adaptation usually means a modification of the original work in order to produce a new work or the process of recasting.

Sec. 2(a) of Copyrights Act, 1957 says that Adaptation means, i) conversion of the dramatic work into a non-dramatic work; ii) the conversion of the work into a dramatic work by way of performance in public or otherwise in respect of a literary work or an artistic activity; iii) in relation to a literary or dramatic work, any abridgement of the work or any version of the work in which the story or action is expressed solely or mainly by means of images in a form appropriate for reproduction in a novel, or in a newspaper, magazine or the like periodical and any arrangement; iv) transcription of a work relating to a musical work.

Adaptation is one of the exclusive rights which the Author has in wherein, he can himself recreate or give permission in the form of licenses to others to recreate his creation in different forms.

Copyright, however, is both a positive and a negative right as it allows its owners to exploit it on the one hand, and prevents others from exploiting it on the other which empowers the original creator.

It is pertinent to note that Adaptation would infringe the original work under the basis in the absence of a license from the copyright owner of the original work that means one needs the permission of the Author to use hosh work; however, the adaptation author has its own copyright in derivative work which fulfills the protective conditions. Adaptation is very common and can be done by anyone with due diligence. Whereas in the US, the subject-matter of copyright as set out in section 102 [17 USC], Copyright Law of the United State includes compilations and derivative works, but protection for works using pre-existing material in which copyright does not extend to any part of the work in which such material has been unlawfully used and Copyright in a compilation or derivative work is limited to the material contributed by the author of such work, as distinguished from the pre-existing material used in the work, and does not imply any exclusive right in the pre-existing material.

Hence, for instance, if inspired by the FRIENDS series, somebody started a bistro that had a such themed set up, they wouldn’t be liable for infringing Warner Media copyright just because the ideas behind the two were striking similar – however, if they used distinctive visual specifics (like a direct six main characters- Chandler, Joey, Monica, Phoebe, Rachel and Ross reference) from the series, it would necessarily constitute an infringement.

What has happened in such cafes is that the cafes do not merely bear some sort of vague resemblance to the Central Perk coffee shop and the characters in the TV show – both basically duplicate them, and rather explicitly, in the utmost manner; the famed orange couch, umbrellas from the show’s theme song. Taking into consideration the aspect of trademark, there can be a situation that such cafes and brands selling merch could be able to set aside from copyright issues but the trademark violation is a bigger concern.

Like, in 2009, a UK food blogger who ran an underground restaurant decided to launch a Harry Potter themed dinner. Within days of announcing it, Warner Bros’ legal department sent a letter stating that the dinner would infringe Warner’s rights and that while they had no objection to a generic wizard night theme, the mention of Harry Potter was an infringement.

While it has not been substantially observed that the FRIENDS mark is registered, the authority might take into consideration the aspect of well-known mark and trans-border goodwill and reputation and even after the show went off-air its usage in merchandise in ample quantity has further strengthened it as a distinctive mark.

It is though valuable to note that as the word ‘FRIENDS’ is in itself a common dictionary term, but it is the use of the word as a ‘logo’ in the specific style that it appears on the show that would render it really worthwhile to pursue the claim as the business is trying the fame of the show to profitise its business. Even though they might have just an intention to offer F.R.I.E.N.D.S ardent fan an opportunity to live life in the coffee shop like the characters of the series but in the absence of a legitimate license from the authority, these definitely represent individual instances of intellectual property infringement and hence, it is liable to action by the production house.

Author: Mannat Sardana
Executive Assistant (Research)

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There are several things that are obvious to the eye that you can check for with counterfeit money. However, the subtler traces of fakery can require deep scrutiny in order to tell if a bill is counterfeit.

Ultraviolet Checks

When you run a bill under ultraviolet (UV) light, you should see different hues emitted from each type of bill. There is a glow that shows only when the security thread is hit by UV light. When a $100 dollar bill is lit up with UV light, it glows red or pink. A $50 bill will glow yellow, a $20 bill green, a $10 bill orange, and a $5 bill blue.

Red and Blue Weaving

In a true and authentic banknote, you will notice that there are red and blue threads that are literally woven into the material that makes up the bill. Fake money often has this pattern printed on the surface of the bill, but it is not woven in like a real bill.

Serial Number Check

The serial number on a bill has to correspond to the specific year that is printed on the bill. If it doesn’t, it is definitely a fake. For example, for E  the serial number is 2004, G is 2004A, I is 2006, J is 2009, and L is 2009A. These serial numbers help businesses tell the difference between real and counterfeit money.

Raised Printing

In every real bill, you will notice that the banknote has raised printing. This can be felt with your fingertips or fingernails as you rub the bill. The raised printing should allow you to feel vibrations across the textured ridges of the raised surface. This is really hard for counterfeiters to recreate properly.

Microprinting Ink Print Signs

All authentic banknotes are made with a die-cut printing plate. They have high levels of detail and very intricate lines. If they are blurred at all, this means that it is fake. All over the bill, you can check if the microprinting is legible with a magnifying glass. If it is blurry or hard to read, you  will know it is definitely a counterfeit bill

Watermark Check

The easiest way to check if a bill is genuine is by holding it up to a light to see the watermark. It typically is a replica of the face found on the front of the bill. On some bills, it’s simply an oval mark. It should be on the right side of the bill. If it’s a face, it should look like the face on the front of the bill.

Ink Color Changes

The ink on every genuine bill should shift color when you tilt it back and forth as of 1996. This ink should shift between gold and green, or green and black. If it’s just plain black ink, it likely is not a real one.

Learn More About Counterfeit Money Tests

If you need help checking if your money is counterfeit, you can check accubanker.com. There is a lot of additional information and tools to help you.

8 Ways to Spot Counterfeit Money

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An agreement can be defined as a meeting of the mind with the understanding and recognition of shared legal rights and responsibilities as to the precise acts or obligations which the parties agree to exchange; a mutual consent to do or refrain from doing anything; a deal. The arrangement is not necessarily compatible with the contract, since it can neglect the basic aspect of the contract, such as concern. Under Section 2(e) of the Indian Contract Act, 1872, the word “Agreement” is specified as every promise and every set of promises to be considered for each other is an agreement.” And an agreement enforceable by statute is a contract. The term “lease” is defined in accordance with Section 52 of the Indian Easement Act, 1882 as “Where a person grants to another person, or to a certain number of other persons, the right to do or to continue to do, in or on the immovable property of the grantor, anything which in the absence of that right, would be unlawful and that right does not amount to servitude or interest in the property, right i. Thus a Licensing Arrangement is a formal document between two parties, the Licensor and the Licensee, where one party (the Licensor) grants permission or authorization to use its property/intellectual property/brand name or trademark/patent technology to another party (the Licensee) under a specified set of terms and conditions.

Licensing Agreements

A licence arrangement is a written agreement between two parties in which the owner of the land allows another party to use the property in compliance with a particular set of conditions. Licensing arrangements or licensing agreements normally include the licensor and the licensee. Licensing agreements set out the conditions by which one party can use land owned by another party. Although the assets in question which include a variety of products, including land interests and personal belongings, licence arrangements are most commonly used for intellectual property purposes, such as patents and trademarks, as well as copyrights for printed materials and graphic arts. For eg, Nestle and Starbucks entered into a $7.15 billion coffee licencing agreement in May 2018. Nestle (the licensee) agreed to pay $7.15 billion in cash to Starbucks (the licensor) for exclusive rights to market Starbucks products (single-serve coffee, teas, bagged beans, etc.) around the world through Nestle’s worldwide distribution network. In addition, Starbucks can earn revenue from bottled coffees and teas offered by Nestle. The licence arrangement provided Starbucks with the opportunity to push brand awareness beyond its North American operations via Nestle’s distribution networks. For Nestle, the company acquired access to Starbucks products and a good brand reputation.

Types of Licensing Agreements

1. Exclusive Licensing Agreement – This form of arrangement establishes a special partnership between the licensor and the licensor. In such arrangements, no one except the designated licensee is entitled to exploit or use the licensed property within the duration of the agreement. The special characteristic of this form of arrangement is that even the licensor is exempt from the use or misuse of the approved property within the duration of the agreement. Copyright, patents and patent licences are the best examples of an exclusive licensing arrangement.

2. Non- Exclusive Licensing Agreement  – In this form of arrangement, the licensor may issue a licence for the licensed property to any number of licensees and may also use the licensed property within the duration of the agreement.

3. Co- Exclusive Licensing Agreement – This form of arrangement requires more than one licensee to use and manage the licensed property, except this time the number of licensees is limited and their number is set at the time of entering into the agreement.

4. Sole Licensing Agreement – This form of the arrangement is somewhat similar to an exclusive licensing agreement, but the only exception is that the licensor retains the right to use the licensed property for the duration of the agreement.

Assignment Agreements

Contract assignment means that the contract and the property rights or responsibilities within the contract can be delegated to another party. As a general concept, a contract assignment may be included in a business contract. This form of provision is typical in negotiations with manufacturers or suppliers and in deals on intellectual property. Contract assignment is also used in contracts that give either side the option to pass its share of the contract to someone else in the future. Many assignment clauses enable all sides to commit to the assignment. An assignment can be made to anyone but is normally made to a subsidiary or a successor. A division is a company that is purchased by another business, while a descendant is a business that accompanies a transaction, takeover or merger.

Specifications in IP Assignment Agreement

1. Identification of the Parties -identifies the contract as an arrangement for the assignment of intellectual property and identifies the Assignor and the Assignor. The party transferring (‘assigning’) ownership interest shall be referred to as the Assignor, while the party obtaining it shall be referred to as the Delegated.

2. Obligations of the Parties -It is necessary to explicitly specify the obligations of the Parties in order to prevent any subsequent dispute as to the nature of those obligations; the precise meaning and extent of the obligations of the Parties depends on the form of intellectual property transferred; however, the principal duty of the Assignor is to transfer the rights of intellectual property.

3. Liability and warranty provisions-refers to the right of the assignor and the authority to enter into such an agreement; for example, to promise that he is the sole owner of all rights, title and equity in the IP and that the IP is legitimate and valid; that the transferred IP does not infringe the rights of third parties.

4. Compensation-A summary of the potential duties of each party if intellectual property is found to infringe the interests of a third party.

5. Applicable law and jurisdiction-The national law may prevail in the case of a conflict; it is also necessary to specify the appropriate court or the arbitration/mediation process to which the issue can be referred.

Licensing and Assignment Agreements

1.  Interest Vested: One can licence the IP to another person or business to use as the owner of the IP. One and the other party negotiate on the terms of this usage. This is known as a licensing arrangement, and in this case, one is the licensor and the other party is the licensor. The terms of usage outlined in this Document should be agreed between oneself and the other party in order to protect the best interests. These terms govern the arrangement which includes: the limitation of the licensee’s usage to a single geographical location; and the payment of rights in the form of royalty.

In relation to a licence, an assignment agreement is a permanent transition of the IP. This transition is irrevocable and usually takes place as a sale or transfer from the owner (assignor) to the purchaser (assignee). If one is trying to pass control of the IP, he can ensure that this transfer is made in writing by means of an act or other formal agreement. These documents can pass current or potential IP rights in exchange for a lump-sum payment.

2. Method of  Assignment: There is no requirement to do so in writing in licencing IP. Involved licences can often be invoked by the application of the rule. Example commissioned to produce patent content, and no formal arrangement is in effect. In this case, it is generally presumed that a tacit licence has been issued to the person who commissioned the material to be produced. There is a tacit licence on the payment that the commissioned party has an implicit licence for the copyrighted piece. It would then be implied that they will use it for the purposes of an unwritten arrangement.

The designation to an IP shall be permanent and irrevocable in the assignment agreement. Therefore in order to do this correctly, the task must be in writing.

3. Notification: There is no notification mechanism for one IP licence. It is actually a private arrangement between the licensor and the licensee.

When the IP owner transfers an IP to the assignee, the assignee would have to file an application for transfer of ownership. If the Registrar collects the form with the assignment information, the assignee is legally the owner of the IP. Once this phase has been finished. The Registrar is then obligated to inform any other person involved.

4. Cost: Although the assignment gives the assignee sole ownership of the piece of land, the purchase of the assignment would normally cost more than the acquisition of the licence.

5. Enforceability –  Another significant difference between the two of them is in the requirement to make them enforceable. It is a signatory that the assignment agreement is required to be recorded and filed in The United States Patent and trademark office assignment recordation branch. It is observed that the license is less stringent and thus it can be granted orally. The best-suited method is to have a negotiated and signed licensed, unlike assignment a record of the agreement is not mandatory.

References

1. Ashley Duggar, study: Contract Agreement, study.com, available at https://study.com/academy/lesson/assignment-of-rights-definition-and-involved-parties.html

2. Richard Sim, study: What is the assignment of Contracts, Nolo, available at https://www.nolo.com/legal-encyclopedia/assignment-of-contract-basics-32643.html

3. Gene Pierson, study: the difference between assignment and a license, Pierson Intellectual Property, available at http://piersonpatentlaw.com/what-is-the-difference-between-assignment-and-a-license/

4. Study: Assignment Agreement, Thrive IP, (31^st October 2017), available at https://thrive-ip.com/assignment-agreement-vs-license-agreement-ip-tool-box-series/

5. Gordon Haris, study: Basics of Patent Law, Lexology, (19^th April 2017), available at https://www.lexology.com/library/detail.aspx?g=c4f8c628-3d98-4bb9-966c-c9cf96679957

6. David Szostek, study: Difference between Assignments and licenses, Edward Allen Attorney of law, (8^th April , 2015), available at https://www.edwardallenlaw.com/difference-between-copyright-assignments-and-licenses/

7. Andrew Bloomenthal, study: Licensing Agreements, Investopedia,(3^rd September 2019), available at https://www.investopedia.com/terms/l/licensing-agreement.asp

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