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TNNLU ACTL Syllabus

The document provides an overview and syllabus for an advanced course on trademark law. It discusses the history and evolution of trademark systems globally and in India. It outlines the objectives and structure of the course, which aims to help students understand trademark laws and evaluate trademarks in different jurisdictions, and covers topics like acquisition, infringement, and new developments in the field.

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209 views

TNNLU ACTL Syllabus

The document provides an overview and syllabus for an advanced course on trademark law. It discusses the history and evolution of trademark systems globally and in India. It outlines the objectives and structure of the course, which aims to help students understand trademark laws and evaluate trademarks in different jurisdictions, and covers topics like acquisition, infringement, and new developments in the field.

Uploaded by

gowtham
Copyright
© © All Rights Reserved
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TAMIL NADU NATIONAL LAW UNIVERSITY

(A University established under the Tamil Nadu Act No. 9 of 2012)


Dindigul Main Road, Navalur Kuttapattu
Tiruchirappalli 620 027
Tamil Nadu, India

BA LLB & BCOM LLB (H)


Semester X
COURSE SYLLABUS

ADVANCE COURSE ON TRADEMARK LAW

The international history of trademark traces its origin to Greek or Roman times, and whereas the
accounts of the Indian history locate the origins of the trademark in Harappan civilization. The
archaeological survey which has been carried out on Harappan Civilization cemeteries has shown
that the marks of trade with foreign countries such as Mesopotamia and Babylon were found
embossed on articles. But the statutory recognition for trademarks was developed only from 13th
century onwards. It can be divided into two phases roughly i.e. old and modern trademark law.
One of the earliest known law of trademarks is Bakers marking law, 1266. The development of
international arrangements for the protection of marks in foreign territories shaped modern
trademark laws. Under modern trademark law, there exists a dual system of protection. One based
on registration, and the other based on use in the marketplace.

At present, every business needs an identity in the market and trademarks are meant to serve that
purpose. In the era of globalization, business houses identify themselves as ‘brand’ and they
develop a brand strategy to maintain their presence in the market place. A trademark is a specific
aspect of a brand which has legal protection as it is a unique identifier for the business. It means a
mark used in trade to distinguish one product from others. Trademarks can be seen as serving two
main purposes: first, reflecting the fact that it is a type of intellectual property, to protect business
reputation and good-will; and, second, to protect consumers from deception, that is to prevent the
buying public from purchasing inferior goods or services in the mistaken belief that they originate
from or are provided by another trader. Thus the fundamental principle is that there is a
connection between a trader and the goods or services in question, and there can be no such
connection if the mark is not being used, even though it might have been so used in the past.

In this background, this course aims to study the brief history of trademarks, its global
development, acquisition, maintenance, infringement and passing off action etc. The course is
structured in such a manner to help the students to understand and evaluate trademark laws in
different jurisdictions especially in India, the United Kingdom, the European Union and the
United States. Also, it focused on the development of new frontiers in trademark law i.e. domain
name disputes, character merchandising, publicity rights, unfair competition, comparative
advertising and product disparagement

Course Objectives:
 To define the nature, scope and subject matter of trademark protection at global, regional and
national basis.

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 To explain the statutory requirements for the protection of a trademark in India and to evaluate
whether a chosen mark, as applied to a particular good or service in the trade, is a protectable
trademark or service mark.
 To describe the national and international filing procedure of trademarks and to analyse the
acquisition & enforcement of trademarks rights in India.
 To critically analyse the graphical representation criteria and to evaluate registrability of
different types of non-traditional marks in the U.S.A., U.K., E.U. and India.
 To comment upon ‘Trademark Due Diligence’ and to critically analyse the acquisition and
post-acquisition issues and compliances under the Indian trademark law perspective.
 To develop an understanding as to trademark litigation involving registration, opposition,
infringement, groundless threat of infringement, passing-off action, defences and remedies.
Learning Outcomes

At the end of the course, students will be able to


 Understand the basics of trademark law and its fundamental legal principles under various
international agreements and statutory law.
 Understand the emerging trends of trademark law at the global, regional and state level.
 Identify, apply and assess principles of law, ownership rights, commercial exploitation and
marketing protection relating to trademark law.
 Understand the transborder reputation and conflicts in trademark litigation.
 To formulate a strategy for creating, protecting a strong trademark and how to prevent a
trademark from losing it distinctiveness.
 To draft trademark license agreements and assignments.
 To generate, articulate, and evaluate arguments in support of or against a claim that a trademark
infringes another trademark.

Teaching Methods
It is mostly student-centred teaching and learning by adopting different methods based on subject
content. Following methods are preferred by the course instructor for effective dissemination of
knowledge.
 Brainstorming  Quiz
 Group Discussion  Debate
 Case Study  Lecture
Teaching Tools: PPTs, Video, Whiteboard and Marker

MODULE 1

1.1 History and Evolution of Trade Mark System


1.2 Importance of Trade Mark in Business
1.2.1 Good Will and Reputation of Trade Mark
1.2.2 Brand Culture: Trade Marks, Marketing and Consumption
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1.2.3 Difference between Product/Brand Name and House Name
1.3 Justification for protection of Trade Mark
1.4 Functions of Trade Mark
1.5 Trade Mark as a Property Right
1.5.1 Difference between Trade Mark and Property Mark
1.6 International Treaties on Trade Marks
1.7 Protection of Trade Marks in India: An Overview
1.7.1 Impact of TRIPS Agreement on Indian Trade Marks Act, 1999
1.7.2 Service Marks: Recognition and Protection

MODULE 2

2.1 Concept of Distinctiveness


2.1.1 The Spectrum of Distinctiveness: Generic Mark, Descriptive Mark, Suggestive Mark,
Arbitrary Mark, Fanciful or Invented Mark.
2.1.2 Inherent Distinctiveness
2.1.3 Proof of Secondary Character and Acquired Distinctiveness
2.2 The Case of Trade Mark Genericization
2.3 Doctrine of Functionality
2.4 Doctrine of Dilution
2.4.1 Difference between Dilution and Likelihood of Confusion

MODULE 3

3.1 Registrable and Non-Registrable Trade Marks


3.1.1 The requirement of Graphical Representation
3.1.2 Well-known and Famous Trade Mark
3.1.3 Associated Trade Mark
3.1.4 Trademark in Series
3.1.5 Certification Trade Mark
3.1.6 Collective Trade Mark
3.2 Non-Conventional Trade Marks
3.3 National Registration of Trade Marks
3.3.1 Grounds for Refusal
3.3.1.1 Absolute Grounds of Refusal
3.3.1.2 Relative Grounds of Refusal
3.3.2 Procedure for Registration
3.3.3 Opposition and Rectification Proceedings
3.3.4 Powers and Functions of IPAB
3.4 International Registration of Trade Marks
3.5 Honest and Concurrent Use
3.6 Trafficking of Trade Marks

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MODULE 4

4.1 Rights of the Registered Proprietor


4.2 Assignment, Licensing and Transmission of Trade Marks
4.2.1 Trade Marks and Franchising
4.2.2 Registered User and Permitted User
4.3 Infringement of Trade Marks
4.3.1 Test of Deceptive Similarity
4.3.2 Test of likelihood of confusion
4.4 Remedies for Trade Mark Infringement
4.5 Defences against Trademark Infringement
4.6 Groundless Threat of Trademark Infringement
4.7 Unregistered Trade Marks: Passing Off Remedy
4.7.1 Scope of Passing-Off
4.7.2 Principles and Ingredients of Passing-Off
4.7.3 Difference between Infringement and Passing Off

MODULE 5

5.1 Trade Marks and Domain Name Disputes


5.2 Comparative Advertising and Disparaging of Trade Marks
5.3 Character Merchandising and Publicity Rights
5.4 Ambush Marketing
5.5 Parallel Imports and Exhaustion of Trade Mark Rights
5.6 Trade Marks and Unfair Competition
References:

1. D. LLEWELYN ET AL., INTELLECTUAL PROPERTY: PATENTS, COPYRIGHT, TRADE MARKS AND


ALLIED RIGHTS (Classics series, Sweet and Maxwell 2019).
2. David Bainbridge, Intellectual Property, Pearson, United Kingdom, 9th Ed., (2012).
3. Graeme B. Dinwoodie and Mark D. Janis, Trademarks and Unfair Competition: Law and Policy,
Wolters Kluwer Law & Business (2014).
4. I. CALBOLI & E. LEE, TRADEMARK PROTECTION AND TERRITORIALITY CHALLENGES IN A
GLOBAL ECONOMY (Elgar Intellectual Property and Global Development Series, Edward
Elgar Publishing 2014).
5. I. CALBOLI & J. DE WERRA, THE LAW AND PRACTICE OF TRADEMARK TRANSACTIONS: A
GLOBAL AND LOCAL OUTLOOK (Elgar Intellectual Property Law and Practice series, Edward
Elgar Publishing Limited 2016).
6. Ilanah Simon Fhima, Trade Mark Dilution in Europe and the United States, Oxford University Press
(2011).
7. Kerly’s Law of Trademarks and Trade Names, Sweet & Maxwell (2014).
8. Lionel Bently & Brad Sherman, Intellectual Property, Oxford University Press, United Kingdom,
4th Ed., (2014).
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9. N.S. Gopalakrishnan & T.G. Agitha, Principles of Intellectual Property, Eastern Book Company,
Lucknow (2014).
10. Peter J Groves, Source Book on Intellectual Property Law, Cavendish Publishing Limited, London
(1997).
11. Prof. Ashwani Kumar Bhansal, Law of Trade Marks in India, Thomson Reuters, New Delhi, 3rd
Ed., 2014.
12. Torsten Bettinger (ed.), Domain Names Law and Practice: An International Handbook, Oxford
University Press (2015)
13. V. VON BOMHARD & A. VON MÜHLENDAHL, CONCISE EUROPEAN TRADE MARK LAW
(Wolters Kluwer 2018).
14. V.J. Taraporevala, Law of Intellectual Property, Thomson Reuters, New Delhi, 2013.
15. Wadlow, C., 2011. The law of passing-off: Unfair competition by misrepresentation. Sweet & Maxwell.
16. Jacoby, J., 2001. The psychological foundations of trademark law: secondary meaning, genericism, fame,
confusion and dilution. Trademark Rep., 91, p.1013.
17. Lukose, L.P., 2015. Non-Traditional Trademarks: A critique. Journal of the Indian Law Institute,
pp.197-215.
18. Nair, L.R., 2011. Tracking the Protection of Well-Known Marks in India: A Befuddled Path to
Nirvana. Trademark Rep., 101, p.1419.
19. Rolston, G., 1960. Trafficking in a Trademark. Trademark Rep., 50, p.1166.
20. Schechter, F.I., 1927. The rational basis of trademark protection. Harvard Law Review, 40(6),
pp.813-833.

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