unit 2

• Trade secret


  Information that provides a competitive advantage and is kept confidential, such as a formula, pattern, idea, process, physical device or compilation of information
• Trade secret


  • Not available to others (public or competitors) unless obtained by theft or improper acquisition
  • Owner has a considerable interest in keeping the information secret
  • Specific measures are taken to maintain the secrecy
• The Paris Convention does not mention trade secrets as such, but Article 10bis on unfair competition requires protection against any act of competition contrary to honest practices in industrial or commercial matters
• Trade secrets


  • Recipe of Coca-Cola
  • Recipes of local bakery items
  • Traditional family recipes
• Trade secret (from subjective point of view)

  Trader must have a considerable interest in keeping the information secret<|>Trader must show intention to have the information treated as a secret
• Trade secret (from objective point of view)

  Information must be known to a limited group of persons only, not generally known to experts or competitors<|>Absolute secrecy is not required, as information might be discovered independently by others
• A trade secret can be any formula, pattern, idea, process, physical device or a compilation of information which provides its owner a competitive advantage in the market
• Why protect a trade secret

  Other forms of IPR protection cannot be used, e.g. an idea cannot be patented or copyrighted<|>Protects information that cannot be disclosed without revealing it, e.g. progress of developing a new product, customer list with critical comments, negative know-how
• Trade secret vs patent

  • Patent protection guarantees exclusive rights for a limited period, but discloses the invention publicly
  • Trade secret can be held indefinitely, but is more difficult to enforce and can be reverse engineered
• Circumstances where trade secret protection is advisable

  • When the secret is not patentable
  • When the secret can be kept confidential for over 20 years (patent term)
  • When the secret is not considered worth a patent
  • When the secret relates to a manufacturing process rather than a product
  • When waiting for a patent to be granted
• Conditions for trade secret protection

  • Information must be secret (not generally known or readily accessible)
  • Information must have commercial value because it is a secret
  • Reasonable steps must be taken by the rightful holder to keep it secret
• Tools to protect a trade secret

  • Trade secret policy - limiting knowledge to a few people
  • Employee agreements - confidentiality clauses
  • Non-disclosure agreements
  • Adequate documentation of confidentiality duties
  • Security systems to protect the information
• Trademarks have been used to simplify the identification by consumers of goods or services, as well as their quality and value
• Trademark


  A mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from the goods and services of competitors
• Types of trademarks


  • Logo
  • Letter
  • Numeral
  • Symbol
  • Brand
• Trademark


  A mark used by a person to distinguish the goods or services of one person from the goods and services of the competitors
• Requirements for a trademark to be registered

  • Distinctive
  • Capable of graphical representation
• Different kinds of trademarks

  • Logo
  • Letter
  • Numerals
  • Symbol
  • Brand
  • Label or ticket
  • Name
  • Colour
  • Sound
  • Smell
• Collective mark


  Distinguishes the goods or services of members of the Association which owns the mark from those of others
• Certification mark


  Certifies goods in respect of origin, material, mode of manufacture, quality, accuracy or some other characteristics of the goods
• Certification marks


  • Do not need to be distinctive for registration
  • Provision denying registration to a mark if it consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade is not applicable
• Well-known mark


  A trademark or service mark that has become widely recognized and associated with a particular company or product
• Characteristics of a good trademark

  • Distinctive (inherently or acquired)
  • Short and easy to spell, pronounce and remember
  • Preferably an invented word
• Requirements for a trademark to be registrable

  • The name of a company, individual, or firm represented in a particular or special manner
  • The signature of the applicant for registration
  • One or more invented words
  • One or more words having no direct reference to the character or quality of the goods except the exceptions listed
  • Any other distinctive trademark
  • A trademark that has acquired distinctiveness by use over a prolonged period
• Grounds for refusal of trademark registration


  • Not distinctive
  • Consists exclusively of marks or indications which have become customary in the current language and practice
  • Consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin, or the time of production of the goods or rendering of the service or other characteristics of the goods or service
  • Identical with or deceptively similar to a trademark already registered
  • Use would be contrary to any law or would be disentitled for protection in a court of law
  • Comprises or contains scandalous or obscene matter
  • Comprises or contains any matter likely to hurt the religious susceptibilities of any class or section
  • A word which is declared by the World Health Organisation (WHO) as an international non-proprietary name, or a word which is deceptively similar to such name
• A mark cannot be registered as a trademark if it consists exclusively of goods which result from the nature of the goods themselves, which is necessary to obtain a technical result, or which gives substantial value to the goods
• A trademark shall not be registered if it is identical with an earlier trademark, or if it is similar to an earlier trademark and covers identical goods and services so as to cause confusion in the mind of the public
• A trademark that violates any law, in particular the law of passing off protecting an unregistered trademark, or the law of copyright, is not registered
• A word which is the commonly used and accepted name of any single chemical element or single chemical compound, and a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India are not registrable
• The Act provides for registration of same or similar trademark by more than one proprietor in case of honest, concurrent use, if in the opinion of the Registrar it is proper to do so in the special circumstances
• Where the proprietor of the trademark claims to be entitled to the exclusive use of any part of the trademark, he may apply to register the whole and the part as separate trademarks
• In India an office of the Registrar of Trademarks has been established for the registration of trademarks
• If a trademark violates any law, in particular the law of passing off protecting an unregistered trademark, or the law of copyright, it is not registered
• Categories of marks not registrable


  • A word which is the commonly used and accepted name of any single chemical element or single chemical compound
  • A geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India
• Honest, concurrent use


  When the Registrar can register the same or similar trademark by more than one proprietor
• Procedure for registration of trademarks

  1. Application

  2. Advertisement

  3. Time period
• Registration is prima facie evidence of validity of the trademark
• Deceptively similar trademarks


  A trademark that so nearly resembles another mark as to be likely to deceive or cause confusion
• Factors considered when deciding similarity of trademarks

  • The nature of the marks
  • The degree of resemblance
  • The nature of goods in which they are likely to be used as trademarks
  • The similarity in nature, character, and nature of goods in which it is used
  • The nature of the potential class of consumers
  • The visual and phonetic similarity
• Rights of the owner of a registered trademark

  • Exclusive right to use the trademark for the specified goods & services
  • Ability to obtain relief in case of infringement
  • Ability to forbid others from using the registered trademark or a confusingly similar mark
  • Ability to prevent registration of the same or confusingly similar mark
  • Ability to restrict unauthorized use in business papers and advertising
  • Ability to restrict import of goods bearing a similar mark
  • Ability to restrain use of the trademark as a trade name or part of a trade name
  • Ability to assign or transmit the trademark to another person