TM 255: IPIS

Identify the incorrect statement

• A trademark is a sign capable of distinguishing the goods or services produced or provided by one enterprise from those of other enterprises

• Registration of a trademark is a compulsory requirement to protect its marks around the world.

• Registration of a trademark is generally valid for 10 years, and it may be renewed indefinitely provided renewal fees are paid in time

• A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment.

Answer explanation

Trademark protection can be obtained through registration or, in some countries, also through use. For example, trademark rights are initially created automatically by using the trademark in commerce in all common law countries, such as the U.S.A, UK, India, etc. Even though trademarks are protected through use, it is advisable to register a trademark, as registration provides much stronger protection and make it much easier for the trademark owner to prove its case in court.

Identify the incorrect statement:

• Designers should file an application before the national office in order to register a design.

• An industrial design provides its owner the exclusive right to prevent unauthorized copying or imitation by third parties. This includes the right to exclude all others from making, offering, putting on the market, importing, exporting, using, selling, or stocking for such purposes by others of product in which the design is incorporated or to which it is applied

• An industrial design may protect the structural of functional features of an article of manufacture.

• In most countries, registration is compulsory to protect a creative design. However, some countries protect an unregistered design for a short period.

Answer explanation

An industrial design protects the ornamental appearance of a goods, not its structural or functional features. An article protected under an industrial design law must be primarily ornamental and not primarily functional. Therefore, to obtain exclusivity over the functional improvements of a product, you may apply for a patent or utility model protection. However, in determining whether a design is primarily functional or primarily ornamental, the claimed design is viewed in its entirety, not on a feature-by-feature basis. It is often the case that a new product combines functional improvements with innovative aesthetic features. In such a case, it would be better to apply for the protection of both a patent and an industrial design

Identify the incorrect statement

• A proposed mark should be descriptive of the product or of one or more its key features so that customers are be able to easily associate the mark with the product

• A proposed word mark must be easy to read, spell, pronounce and remember.

• A proposed mark should not be identical or confusingly similar to existing marks in the relevant category of products.

• A proposed mark should not have any undesirable or negative connotations in any of the relevant languages in the domestic or export markets.

Answer explanation

A mark which is descriptive of the product to which it pertains cannot help in differentiating it from identical or similar products offered by competitors in the market place. Further, monopoly over descriptive terms constrains the legitimate desire of competitors to use ordinary works to describe the characteristics of the products while advertising the products. The strongest marks are those which are coined or "fanciful" words followed by marks that use words that have a meaning which has no relation to the product they advertise.

Trademarks are intangible rights and the use of such a right by one excludes use of the same by another

• TRUE

• FALSE

Answer explanation

The inherent advantage of intangible rights is that use of one does not prevent the use by another. A song heard by one can be heard and appreciated by another at the same time. Thus a trademark can be licensed for use by many at the same time.

Merchandising is to sell the rights in a trademark

• TRUE

• FALSE

Answer explanation

Merchandising is a form of licensing where trademarks, designs, artworks as well as fictional characters (protected by these rights) and real personalities are licensed beyond the core business of the company or the product to add appeal to other, usually, ordinary consumer products such as plates and mugs.

All items are correct except?

• An exclusive license provides the licensee with the right to use the trademark to the exclusion of all, including the licensor

• A licensee may have the right to grant sub licenses

• The renewal and maintenance of licensed trademarks is generally dealt with by the licensor

• Once an agreement has been terminated the licensee has no obligation to return any manuals or other confidential information

Answer explanation

Most license agreements require the continuation of certain obligations once the agreement is terminated. These usually relate to the maintenance of confidential information, the obligation to continue to pay royalties that were due and payable before the termination of the agreement, which have not been paid, or for the continued use of the mark in the phase out period after termination.