Jan 23

RKD NewsNet January 2023

From the desk of Dr. Mohan Dewan | Assisted by: Adv. Arjun Pradhan Adv. Shubham Borkar

International News

  • Iconic Santa
  • Miscellaneous

    Iconic Santa

    Santa Claus is a legendary character who brings gifts to children. St. Nicholas of Myra (now known as Demre, Turkey), was a bishop famous for his compassion for the poor and particularly, children. His philanthropy became so legendary that it inspired others all over the world at Christmas.

    A standardized visual image of Santa Claus started shaping up in the 1860s, when American political cartoonist, Thomas Nast, created sketches for a New York publication. Many of the early depictions displayed Santa Claus visiting the military troops during the Civil War. His illustrations were instrumental in establishing the present-day image of Santa Claus as a jolly, bearded man in a fur-laden hat.

    Source - Google

    However, in the earliest illustrations of Santa Claus, his suit was in green colour. These illustrations appeared in the 1863 edition in Harper’s Weekly, a political magazine, under the heading, “A Christmas Furlough.”

    Source - Google


    A Tree-mendous renewal

    Since the 1920s, Coca-Cola began placing its Christmas ads in popular magazines which depicted a department-store man dressed as Santa, relaxing with a bottle of Coke drawn by Fred Mizen. However, the advertising agency working with the company, wanted the campaign to have a version of Santa Claus which was realistic as well as symbolic.

    Thereafter in 1931, the company commissioned, Haddon Sundblom (Sundblom) a Dutch illustrator, to re-illustrate Santa Claus for its festive marketing campaigns. Sundblom took inspiration, from Clement Clark Moore's 1822 poem "A Visit from St. Nicholas" (which is often referred to as "The Night Before Christmas" after its famous first line) and came up with the present-day versions of Santa, with his signature red velvet vest and white beard (red and white being Coca-Cola’s signature colours.) This image of Santa gained popularity in the United States and Canada which was reinforced through songs, radio and television broadcasts, children's books, films and advertising.

    Source - Google

    In the U.S. alone, there are approximately 150+ records at the U.S. Patent & Trademark Office (USPTO) for active and inactive registrations/applications for “Santa" or a variation thereof. However, the use of the image of Santa has become so widespread that it is not sure that it functions as a source identifier or protectable under the US Trademark Laws in isolation. As a result, most trademark registrations in the U.S. include not only the image of Santa, but other elements such as words or other graphical elements which together might be distinctive or protectable as a trademark or service mark. Nevertheless, the US Copyright Law provides for the protection for artistic works of Santa Claus.

    Similarly in India, there are several registrations for ‘SANTA CLAUS’ and variations thereof being used for various goods. For example, “ ” and “ ” in respect of readymade garments, headgear and footwear; “SANTACLAUS” for liquor; “santa claus” for chewing tobacco and “Santa” for incense sticks.


    Creating a brand image: Lessons to learn

    While it is true that Coca Cola did not invent the concept of Santa Claus however, they cemented their version of Santa as the epitome of Christmas making him universal on cards, books, movies and TV shows.

    The idea of connecting Santa Claus with the brand's identity was a big risk for the company whose main product not exactly what people may prefer in winters.

    However, Santa Claus matched perfectly with Coca Cola’s sense of respect for the past and for family traditions and this is why the link between Christmas holidays and Coca-Cola was a great success.

    To create a successful brand, it is important to be aware of the long-term values and the reputation you would like to build with your target audience. Once this is clear, creators should allow the brand to speak for itself and be the ambassador of such values.

    In the digital era, companies often rely on social media to position their brand the way they want it to be seen. However, taken by the impulse to upload more content in less time, one should never forget about the centrality of IP protection which is valuable in conferring a better control over one’s brand and prevent infringement.

    Hence, knowledge of Intellectual Property is necessary for everyone in almost every sphere of life and that, nothing should be considered as cost-free; even Santa comes with a Clause!

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    Clever Words for Clever People

    - Provided by my good friend, Phil Furgang.


    It’s paradoxical that the idea of living a long life appeals to everyone,

    but the idea of getting old doesn’t appeal to anyone.

    — Andy Rooney

    My mother always used to say, “The older you get, the better you get.

    Unless you're a banana.”

    — Betty White

    I'm at an age when my back goes out more than I do.

    — Phyllis Diller

    Life is a moderately good play with a badly written third act.

    — Truman Capote

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    Cartoons for smarter people

    - Provided by my good friend, Phil Furgang.



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    Kapferer Brand Identity Prism

    Jean-Noël Kapferer is an Emiritus Professor of Marketing at HEC Paris and a Ph.D. from Kellogg Business School. He is known for his works on brand identity, strategic brand management, brand portfolios, brand architectures.

    In 1966, Kapferer invented The Kapferer Brand Identity Prism through which any brand owner can analyse the identity of his/her brand with the six elements from the prism.

    In this article, we will understand this brilliant branding/marketing tool in simpler terms.


    Source- Researchgate.net


    A broad idea is that, these six aspects are detrimental to brand building and if they are aligned correctly, these aspects work together to strengthen a brand’s identity. A brand owner needs to pay attention to all these six aspects and cannot neglect even one as they are crucial for projecting a brand as the brand owner wishes/or wants to it to be, which in turn results in customer associating with the brand.



    Brands like humans have humanistic traits and hence have archetypes, understating the relevant consumer/client base and projecting appropriate personality helps a brand to connect with the consumer at a personal level. Determining the appropriate Brand personality helps in setting the tone and manner in which your brand will visually and verbally advertise or communicate with the consumers



    Brands are a reflection of the people behind it, therefore keeping an appropriate brand culture is important. How the brand owner treats its employees results in how the employees treat the consumers/clients. In this era of social networking, brand culture is very apparent to everyone.

    Hence, the work environment and work culture of the brand owner needs to be taken care of us, it will affect the sync the team has with each other and also how they interact or deal with the customers.



    The Self-Image aspect relates to the manner in which how target customers visualise their ideal selves and how the brand projects its self to match that of its customers. Customers associate/ connect more with a brand which is like them. An outlaw will relate more to outlaw an archetype brand like the Harley Davidson and an explorer will relate more to explorer archetype Jeep or Land Rover. These brands strengthen their archetype via verbal visual advertisements to attract more customers and also to resonate with their existing customers effectively. Hence, it is important to understand how the target consumer views himself/herself and also what he/she feels will bring him/her more close to his/her ideal self. If purchases and interactions with a brand bring them closer to their ideal selves, they are going to buy the product.



    Reflection aspects deals with understanding what the brand’s target audience, or who is the ideal buyer? To understand this we need to first understand that the ideal buyer is one who buys the brand’s product and also promotes/becomes an ambassador of the product, and refers to it to others.

    Therefore, a brand owner needs to determine its target audience as although the brand’s advertisements will be for all, it should specifically target the ideal buyer, by using slogans, messages, celebs and endorsers that match the archetype of the ideal buyer. What his/her target audience look like.



    Next in line is relationship. It is important for the brand owner to work towards development of a relationship between his/her brand and its consumers. The key is to not to sell the product or service once, but to ensure that the Customers come back and buy the products and services again from your brand. The brand owner needs to understand that customers return back more often if they have the impression they’re involved with the brand in a manner that’s more important than merely purchasing.

    A Brand owner needs to make honest efforts to build a meaningful relationship between the brand and its consumers, in this way his/her brand will last longer in the market and will also be a respected brand. It is not a quick process and needs time and determination for the brand owner. Brand owners use, round the clock customer service, guaranteed quality, and sometimes a lifetime warranty to strengthen the brand consumer relationship. However these are not the only options, there could be a variety of other things that a brand can do for its consumers.



    This brings us to the last yet one of the most important aspects of a brand’s personality that is its physique. Physique refers to the tangible characteristics of the brand like product design, colour, shape, logos and the like. These are characteristics that differentiate one brands product from those of others. These characteristics are strongly engraved in the minds of consumers if he/she is happy/satisfied with one product of a particular brand, he /she is likely to buy another product of the same brand if they show the same characteristics.

    This the reason why Tech Companies design their products in a manner that they look sleek , whereas car companies design their products in a manner that they look fast or muscular depending upon the segment of car that they are selling. These physical attributes sublimely convey the brands identity to its target consumers.

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    Claim’s - Do’s, Don’ts & Must-Haves (An Indian Context)

    Conversations with Dr. Dewan

    Ashima: Good morning Dewan Sir! I have several questions about claims drafting for you.

    Dr. Dewan: Good morning Ashima.

    Ashima: Are subjects like "a computer readable medium/a computer program/a program product" in claims allowable? If not, is there any development at the Indian Patent Office to accept merely part of the subjects?

    Dr. Dewan: In India, it is possible that claims directed to "a computer readable medium or a program product", if they provide a technical solution to a technical problem in relation to the medium or in relation to the product will be allowed. However, “a computer program", by itself (per se) will not be allowed.

    The application of the computer program to solve a technical problem by providing a technical solution will be allowed.

    Ashima: Sir, is it required to include reference signs of drawings in claims? If not, is there any binding of claim scope if reference signs are included in claims?

    Dr. Dewan: Yes, reference numerals (signs of drawings) are required to be included in the claims. These reference numerals do not in general restrict or bind the scope of the claims and are included for the purposes of identification only.

    Ashima: Sir what about restriction on "one independent claim for one category" in claims, like in EP? Why does a controller sometimes ask the applicant to limit the number of independent claims considering all claims fulfil the requirement of Unity?

    Dr. Dewan: Yes, the Controllers in India generally insist on one independent claim for one category. If there is a requirement of more than one independent claim, Controllers generally raise a unity objection or ask that the second and following independent claims be made dependent on the first independent claim.

    Ashima: Ok Sir! In India is it allowed to include the wording of "A and/or B" in claims, which is not likely to be accepted in US?

    Dr. Dewan: No. Wordings such as "A and/or B" in claims will not be allowed in India either this will result in a unity objection or the Controller will ask to delete the “and/or” part or there will be a clarity objection of lack of precision. In such cases, it will be better to make three separate claims “A” and “B”, only “A” and only “B”.

    Ashima: Sir why is it required to not use phrases like "further" in the phases of "further comprising/comprises/configured to"?

    Dr. Dewan: Some Controllers are averse to the use of the word “further comprising” or “further comprises” or “further configured to”. According to these Controllers, the word “further” makes the claim non-definitive. If the portion of the element after “further” gives an additional technical advantage, it could be useful in dividing this “further” portion out. It would be preferable to merely state the additional embodiment feature separately without addition of the term “further”.

    Ashima: Is that why we also avoid using of "specifically" in the phases of "specifically comprising/comprises/configured to"?

    Dr. Dewan: Yes! The term "specifically" or "specifically comprising/comprises/configured to" is best avoided as it is considered vague on the one hand and restrictive on the other.

    Ashima: Sir, do we have to pay additional fees if number of claims exceeds certain number?

    Dr. Dewan: Of course! If the claims exceed 10, the excess claim fee is Rs. 1600 per claim in excess.

    Ashima: Thanks Sir! That’s a breather!! I was wondering how to reduce/minimize office objection while writing claims for an Indian client. This would help…a lot!!

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    Class 99: A Multifaceted issue

    In India, it is possible to file a multi-class application as well as individual applications for the registration of a trademark in different classes. However, it is recommended that one must file separate applications in each class. Unlike in other jurisdictions, such as Europe, there is no advantage in terms of official fees. Irrespective of the type of application, the government fee is calculated on a per mark per class basis.

    When a mark filed in a multiclass mode is accepted for publication in the Indian Trademark Journal and subsequently for registration when a certificate is issued for an application filed in the multi-class mode, the publication as well as the certificate shows that the mark has been accepted and the Certificate has been issued in class 99.

    This method was adopted by the Trade Marks Registry in India for the digital process because when the original IT module of the Trade Marks Registry was created and designed, it was designed when the multi-class application filing mode did not exist in India.

    The software module would have required considerable overhauling to accommodate this mode and this device of using class 99 for multiclass application at the time of publication and at the time of issuance of certificate was used as a compromise. However, the actual classes in which the application was filed and ultimately the mark is registered appear both in the publication as well as in the Certificate of Registration. Therefore, for all practical purposes the class 99 noting may be ignored.

    However, when it comes to litigation, it becomes difficult to explain to the Court what is the meaning of the application registered in Class 99.

    Lastly, in the software module of several clients’ companies, which do not have any provisions for accommodating in Class 99, changes are required to be made to accommodate this variation and the actual class details need to be physically and manually entered.

    In India, we recommend to our clients that instead of filing a multi-class application individual application should be filed in each class, particularly because there is no cost benefit either in respect of official fees or in professional fees.

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    Hidden Meanings in Trade Marks

    *We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only.

    The Guild of Food Writers, is an organisation dedicated towards culinary writing and education. They are committed to high standards and as such have an exclusive membership, with famous faces such as Hugh Fearnley-Whittingstall and Nigella Lawson counted among its members.

    The Guild is involved in lobbying, campaigning, writing and publishing content for better food awareness.

    Their logo marries together the two aspects of the organisation – A pen for writing, and a spoon for food.

    Did you see it?

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    Hidden gems of India

    Floating Chapel - Shettihalli, Karnataka

    Source - Google

    *We do not claim any copyright in the photograph. It has been used for academic and representational purposes only

    Built by French missionaries in the late 19th century, the Floating Chapel on the banks of the Hemavathi River in the town of Shettihalli in southern Karnataka remained intact until the construction of the Gorur Dam in the 1960s. The village folk were relocated however, the church stayed, braving the wrath of the monsoons decade after decade.

    Although the roof has collapsed the pointed arches which is a characteristic of the Gothic style of architecture stand still.

    Every year, visitors are left awestruck by its beauty when the water in the dam rises, submerging parts of the chapel.

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