Trademark law ppt

By A.S. Jaybhaye
B.A. LL.M. NET

Origin & development of TM
 During the British regime in India the big merchants
and businessmen who had established their mark in
the market in respect of certain goods under the
particular brand name, style or design felt they should
continue to be sold or traded under the same brand
name, style or design and no other person shall be
allowed to adopt that brand name, style or design.
 The Government earlier enacted the Indian Trademark
Act 1940 then Indian Trade & Merchandise Marks Act,
1958 and finally it was replaced by Indian Trademark
Act, 1999.

Origin & development of TM
 The Trade Marks Bill, 1999 was introduced in the Lok
Sabha which was passed by the Lok Sabha.
 It was introduced in Rajya Sabha and eventually
passed by both the Houses of Parliament.
 The Bill received the assent of the President on
30.12.1999 and became an Act.

Overview of TM Act 1999
 The Indian Trademark Act has repealed Indian
Merchandise Marks Act, 1958.
 This Act is divided into 13 chapters with 159 sections
 This Act provides for procedure of registration of
trademark.
 It also provides for remedies for infringement of
trademark.
 It consists of Appellate board, its powers and
functions.

Relevant Chapters:
 Chapter 1 - Preliminary.
 Chapter 2 - The Register and Conditions for
Registration
 Chapter 3 - Procedure for and Duration of
Registration
 Chapter 4 - Effect of Registration
 Chapter 5 – Assignment
 Chapter 11 - Appellate Board
 Chapter 12- Offences, Penalties and Procedure
 Chapter 13- Miscellaneous

Imp. Definitions
 Sec.2(1)(a) "Appellate Board" means the Appellate
Board established under section 83
 (f) "Chairperson" means the Chairperson of the
Appellate Board.
 (h) "deceptively similar", - A mark shall be deemed to
be deceptively similar to another mark if it so nearly
resembles that other mark as to be likely to deceive or
cause confusion.

Imp. Definitions
 Sec. 2(1)(m) "mark" includes a device, brand, heading,
label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging or combination of colours
or any combination thereof.
 Sec.2(1)(zb) "trademark" means a mark capable of
being represented graphically and which is capable of
distinguishing the goods or services of one person
from those of others and may include shape of goods,
their packaging and combination of colours.

Imp. Definitions
 (Ze) "tribunal" means the Registrar or, as the case may be,
the Appellate Board, before which the proceeding
concerned is pending.
 (zg) "well-known trade mark" in relation to any goods or
service, means a mark which has becomes so to the
substantial segment of the public which uses such goods or
receives such services that the use of such mark in relation
to other goods or services would be likely to be taken as
indicating a connection in the course of trade or rendering
of services between those goods or services and a person
using the mark in relation to the first mentioned goods or
services.
 (y) "Registrar" means the Registrar of Trade Mark referred
to in section 3

Imp. Definitions
 (e) "certification trade mark" means a mark capable of
distinguishing the goods or service in connection with
which it is used in the course of trade which are
certified by the proprietor of the mark in respect of
origin, material, mode of manufacture of goods or
performance of service.
 Examples: Agmark for all agricultural products, ISI
mark , For industrial product, BIS hallmark certifies
the purity of gold jewellery, SILK Mark, Wool Mark
etc.

Imp. Definitions
 (g) "collective mark" means a trade mark
distinguishing the goods or services of members of an
association of persons which is the proprietor of the
mark from those of others.
 Examples: CS, CA, TATA Sons

What is Service Mark?
 Sec.2(1) (z) "service“ means service of any description
which is made available to potential users and includes
the provisions of services in connection with business
of any industrial or commercial matters such as
banking, communication, education, financing,
insurance, chit funds, real estate, transport, storage,
material treatment, processing, supply of electrical or
other energy, boarding, lodging, entertainment,
amusement, construction, repair, conveying of news or
information and advertising.

Functions of a TM
 It identifies the product and its origin.
 It guarantees its quality
 It advertises the product
 It creates an image of the product in the mind of the
consumer.

Trademark Registry sec .5 & 6
 Established for the purpose of registration.
 Head office @ Mumbai and other branches @ Kolkata,
Delhi, Chennai, and Ahmadabad.
 Registry is under the charge of Registrar,
 Assisted by Joint Registrar/ Assistant Registrar.
 Registry maintains the indexes of:
1. Registered TM
2. Applications for registration
3. Names of proprietors
4. Name of registered users

Trademark Registry sec .5 & 6
 Register can be maintained in E-form.
 All the documents are accessible to the public on
payment of certain fee.
 Registrar is vested with same powers as civil court.

Advantages of Trademark Registration
1. Protects your hard earned goodwill in the business
2. Protects your Name / Brand Name from being used in a same
or similar fashion.
3. Gives your products a status of Branded Goods.
4. Gives an impression to your customers that the company is
selling some standard Products or Services.
5. The exclusive right to the use of the trade mark in relation to
the goods or services in respect of which the trade mark is
registered.
6. To obtain relief in respect of infringement (misuse by others)
of the trade mark.
7. Power to assign (transfer) the trade mark to others for
consideration.

Registration of TM necessary?
 Remedies for registered TM.
 Remedies for unregistered TM. – prohibited by “Passing off”
action
 Duration of TM- 10 years from the date of registration.
 Renewable from time to time
 Registration of TM in another countries is possible by Madrid
Agreement i.e. Madrid system for the international registration
of marks, Initiated By WIPO.
 The Madrid System is a convenient and cost-effective solution
for registering and managing trademarks worldwide.

Marks not registerable:
 The use of which would be likely to deceive or cause
confusion.
 A mark comprising or containing scandalous or
obscene matter
 A mark comprising or containing any matter likely to
hurt the religious sentiments of any class or section etc
etc.
 its use is prohibited under the Emblems and Names
(Prevention of Improper Use) Act, 1950.
 Examples: Indian National Flag, names of national
leaders, satymev jayate etc.

 its identity with an earlier trade mark and similarity of
goods services covered by the trade mark;
 a likelihood of confusion on the part of the public,
which includes the likelihood of association with the
earlier trade mark
 use of the applicants mark without due cause would
take undue advantage of the earlier TM.

use of the applicants mark would be detrimental to the
distinctive character or repute of the earlier TM.
If Trademarks use is liable to be prevented by passing
off action.

AMUL-IMUL trademark controversy
case 2013
 Facts:
 Ichhamati Co-operative Milk Producers’ Union Limited filed an
application for registration of the mark ‘IMUL’ (depicted in
a triangular shape) (Application No. 1281174) under class 29 (milk
goods and other dairy products) of the Trademarks Act, 1999.
 Kaira District Co-Operative Milk Producers’ Union Limited (appellant)
opposed registration of the trademark.
 Contentions by Amul -Carrying on business since 1955, deceptive
similarity is there.
 The registrar, however, found that the respondent’s adoption of the
mark IMUL was honest and was not deceptively similar.

 The decision was based on the fact that the
respondent had been using this mark since 2001 and
its turnover had increased continuously since then.
According to the registrar, refusal of registration would
cause unnecessary inconvenience and damage to the
respondents.
 the Appellant appealed to the IPAB (Circuit Bench,
Kolkata). Despite notice, the respondents did not
appear before the IPAB nor did they file counter
statements. The IPAB decided the matter in favour of
AMUL ex parte.

 the IPAB held that a statement showing increase in sales
turnover (by way of affidavit) was no ground to grant
registration of a trademark that was deceptively similar to
AMUL’s trademark. It was held that the mark (IMUL) was
phonetically similar to AMUL, except for the first letter ‘A’
and ‘I’.
 Also, since the respondents did not appear before the IPAB
to prove the use of the mark IMUL since 2001 and give
reasons for adopting the same, the IPAB held that AMUL
was a well known mark and the registration of a deceptively
similar mark ought not to have been allowed. Therefore,
the order was set aside.

Amritdhara Pharmacy vs Satyadeo Gupta
 AIR 1963 SC 449
 The respondent applied for registration of the trade name
"Lakshmandhara" in relation to the medicinal preparation
manufactured by him at Kanpur since 1923.
 It was admitted that the respondent's product was mainly
sold in the State of Uttar Pradesh.
 The appellant opposed the registration on the ground that
it had an exclusive proprietary interest in the trade mark
"Amritdhara" in relation to a similar medicinal preparation
which had acquired considerable reputation since 1903 and
that the respondent's trade name "Lakshmandhara" was
likely to deceive and cause confusion.
 Appeal Allowed.

Concept of distinctiveness:
 One TM has to be distinctive from another TM.
 Test of similarity or distinctiveness arises in the
following cases:
At the time of registration of TM.
At the time of opposition.
Infringement by another.
In case of passing off action.

 Factors to be taken into consideration:
 Sec 2 (1)(h) "deceptively similar", - A mark shall be deemed
to be deceptively similar to another mark if it so nearly
resembles that other mark as to be likely to deceive or cause
confusion.
 The degree of resemblance between the marks i.e.
phonetic, visual and similarity in idea.
 Nature of goods in respect of which similarity is used.
 The class of the persons who are likely to buy the goods.
Note: Deceptive similarity includes not only confusion but
also deception.

 Written
 Looks
 Sounding
 Conceptual Star/Staar
Cool/Kool
Basket / Buskit
For You/ 4 U

 Illustrations:
 Kodak registered for cycle was denied when opposed
by owners of the same mark for cameras.
 Nuvol for illuminating, heating was refused in view of
the opponents well known mark i.e. Nujol for some
petroleum, mineral product used as a medicine for
human consumption.
 Black magic for laxatives refused in view of the
opponents well known mark i.e. Black magic for
chocolates.

 Illustrations:
 Caltex for watches refused registration in view of the
reputation of the same mark for petroleum products.
 Lotus for honey refused registration in view of the
reputation of the same mark for other branded
products of lotus.
 “Gluvita and Glucovita held similar. AIR 1960 SC 142

 Words conveying the same meaning or suggesting the
same idea are in general likely to cause confusion
( ‘Water- Matic’ and ‘Aquamatic’ held similar, 1958 RPC
387.)
 Words in one language and its equivalents in other
languages may cause confusion if the both languages
are known to the customer. (‘Suryan’ and ‘Sun’ held
similar AIR 1967 Mad. 148.

Features of a good TM
It must be distinctive
It must be easy to spell, pronounce, write legibly and
remember.
It must be short & must appeal to the eye as well as the
ears.
It should be short
It must satisfy the registration requirement.

Registration of a TM
 Who can apply:
 Any person who claims to be a proprietor of a
trademark and is desirous of registration of the mark
can apply.
 The application may be made in the name of an
individual, partners of a firm, a Corporation, any
Government Department, a trust or joint applicants.

Procedure for registration:
 Submission of application.
 Publication/ advertisement of application.
 Opposition for registration by any interested party.
 Grant or refusal of Trademark with reasons.

Case laws
 Shoppers Stop Ltd. v. Vinod’s Shoppers Stop
CS(OS) No. 458 of 2015 Delhi HC
The Plaintiff was the proprietor of the mark
‘SHOPPERS STOP’ in all Classes and was using the
same since 1991 as a trade mark and as part of trade
name
In January, 2015, the Plaintiff came to know that the
Defendant is using the mark ‘Vinod’s Shoppers Stop’
for identical goods and services.

Shoppers Stop Ltd. v. Vinod’s Shoppers Stop
 suit for permanent injunction seeking to restrain the
Defendant from infringing its trade mark , passing off,
dilution etc.
 As the Defendant chose not to appear after the first
date of return of summons, the matter was directed to
be proceeded ex-parte by the Hon’ble Court.
 Plaintiff has 81 stores across 38 cities also has foreign
registrations in the territory of USA, UAE and the
European Union.

Shoppers Stop Ltd. v. Vinod’s Shoppers
Stop
 The Plaintiff has an e-commerce website bearing the
domain name http://www.shoppersstop.com
 Court’s Observations:
 The Defendant is thus trying to exploit the reputation and
goodwill of the Plaintiff in order to reap profits and gain
unlawful advantage.
 Confusion- that the Defendant is associated with the
Plaintiff or that there is a trade connection between
them.
 Providing same services i.e. multi-brand retail outlets.

Shoppers Stop Ltd. v. Vinod’s Shoppers
Stop
 Shoppers stop- has the status of a well known mark as
defined under Section 2 (zg) of the Trade Marks Act
1999.
 The suit was decreed in favour of the Plaintiff and the
Defendant was restrained from infringement of
Plaintiff’s trade mark, passing off and unfair
competition.

Pandit kulfi and Cafe v. Pandit Kulfi
 2016 (65) PTC 414 (Rajasthan) HC
 Appellant was proprietor of the mark ‘PANDIT’ for
Kulfi, Ice Creams and other milk products. Appellant
came to know that the Respondent is also using the
mark ‘PANDIT’ for Kulfi.
 suit for Permanent injunction - Before DC- Dismissed.
 filed an appeal before the Hon’ble High Court of
Rajasthan.

 Respondent’s Case:
 The mark used by the Respondent is not ‘PANDIT’ but ‘SHRI
BALAJI PANDIT’ which is not similar to the mark of the
Plaintiff.
 The Defendant is using the said mark for the past 20 years.
 The expression ‘PANDIT’ is a generic term.

 Court’s Observations:
 The Respondent has written the words ‘Shri Balaji’ in a very
small fonts and highlighted the words ‘PANDIT KULFI’ in
bigger fonts, the customers may be mislead that it must be
the Appellant.
 Such name being deceptively similar to the registered mark
of the Appellant, the Respondent prima facie is guilty of
infringement of trade mark of the Appellant and passing off
its goods as those of the Appellant.
 The Appeal was allowed and the Respondent was prevented
from using the word ‘PANDIT’.

Yahoo!, Inc. v Akash Arora & Anr [1999
(19) PTC 201 (Del)] :-
 The first decision on the protection of IP rights on the Inter
net.
 The Delhi High Court held that a domain name served the
same function as a trademark and was therefore entitled to
equal protection.
 plaintiff ‘Yahoo!’ and defendant ‘Yahoo India!’, were nearly
identical and phonetically similar.
 possibility that internet users would be confused and
deceived.
 The name had acquired uniqueness and distinctiveness and
was associated with the plaintiff.

Cadila Healthcare Limited vs Cadila
Pharmaceuticals Limited
 [2001 PTC (SC) 561]:
 The Supreme Court held that It is immaterial whether
the plaintiff and defendant trade in the same field or
in the same or similar products.
 It identified the following criteria in order to decide an
action of passing off on the basis of unregistered
trademark :

Cadila Healthcare Limited vs Cadila
Pharmaceuticals Limited
 The nature of the marks (i.e. whether they are word,
label or symbol);
 The degree of resemblance between the marks;
 The nature of the goods for which they are used as
trademarks;
 Similarities in the nature, character and performance
of goods of rival traders;
 The class of purchasers who are likely to buy goods
bearing the marks;
 The method of purchasing the goods or placing orders;

N.R. Dongre and Ors. vs. Whirlpool Corpn.
and Anr.
 1996 PTC (16) 583 (SC)
 The Whirlpool Corporation, i.e. the Plaintiff No. 1 is a
multinational corporation incorporated in U.S.A. and had
an established business in the manufacture, sale,
distribution and servicing of washing machines of all kinds.
 successor of a trade mark ‘WHIRLPOOL’ since 1937.
 In 1987, Plaintiff No. 1 entered into joint venture with the
Plaintiff No. 2, i.e. TVS Whirlpool Ltd. (a limited Company
incorporated in India) and the machines were sold by
Plaintiffs under the TVS brand using the phrase ‘in
collaboration with Whirlpool Corporation’.
 The Plaintiff No. 2 was licensed by the Plaintiff No. 1 to use
the trade mark and trade name ‘WHIRLPOOL’.

N.R. Dongre and Ors. vs. Whirlpool
Corpn. and Anr.
 in August, 1986 the Defendants filed applications for
registration of the Trade Mark ‘WHIRLPOOL’. When
the said application was published, the Plaintiffs
opposed registration of the same.
 opposition of the Plaintiff was dismissed by the
Assistant Registrar on grounds of non-use and non-
reputation of Plaintiffs’ mark ‘WHIRLPOOL’ in India
and thus, no likelihood of confusion arises if the
Defendants were permitted to use the same.

N.R. Dongre and Ors. vs.
Whirlpool Corpn. and Anr.
 Plaintiffs instituted a suit against the Defendants
bearing CS(OS) No. 1705 of 1994 in the Hon’ble High
Court seeking permanent injunction on the
Defendants from using the mark ‘WHIRLPOOL’.
 ISSUES:
1. the Plaintiffs has no sales in India can it be said, that
the Plaintiff had acquired a Trans-Border Reputation
and as a corollary to that Trans-Border Reputation
can an action by Plaintiffs for passing off be
maintainable or should their goodwill/reputation be
confined to territories of their actual use?

Corpn. and Anr.
 Whether the Plaintiffs who are not registered
proprietors of trade mark ‘WHIRLPOOL’ in respect of
washing machines, can maintain an action for passing
off against the Defendant, who is a registered
proprietor of the same mark for same goods?

 HELD:
 SINGLE JUDGE BENCH
 held the issue in favour of the Plaintiffs and relied on
the following:
 Plaintiff No. 1’s sales in India to US Embassy and documents
pertaining to it’s prior use, registrations, etc. Globally.
 International magazines having circulation in India
containing advertisements of the products of the Plaintiffs
bearing the mark ‘WHIRLPOOL’.

Corpn. and Anr.
 The learned Single Judge (Delhi HC) granted a
temporary injunction in favour of the plaintiffs.
 (i) Prior registration of the mark ‘WHIRLPOOL’ in
India by the Plaintiffs in 1956 and continuous till 1977
which is prior to earliest claim by Defendant from 1986.
 (ii) No reliable evidence of defendants of the
Defendants having marketed their washing machines
for any considerable length of time prior to date of
grant of injunction.
 (iii) Balance of convenience in favour of the Plaintiff as
the machines of the Defendant were of inferior quality.

 DIVISION BENCH (FAO(OS) No. 262 of 1994)
 On Appeal, the Division Bench of the High Court
came to the conclusion that there was no reason to
interfere with the discretion exercised by the learned
Single Judge in granting the temporary injunction.
 Accordingly, the defendants’ appeal was dismissed.
The Division Bench also, additionally noted in
dismissing the appeal that there was no plausible &
convincing explanation by the appellants as to how
they came to adopt the mark ‘WHIRLPOOL’.

Corpn. and Anr.
 SUPREME COURT (Civil Appeal No. 10703 of 1996)
 In the Special Leave Petition the Supreme Court
finally upheld the decision of the Learned Single
Judge as well as the Division Bench affirming the
decision of the single judge and dismissed the appeal
of the Defendants with costs.

Procedure for registration
 Submission of application.
 Publication/ advertisement of application.
 Opposition to registration by any interested party.
 Grant or refusal of Trademark with reasons.

Opposition to registration Sec.21
 Any person may take objection within 4 months from
the date of advertisement.
 The registrar shall serve copy of notice of opposition to
the original applicant of TM.
 The Applicant has to file counter reply within 2
months. If fails to file, his application shall be
considered as abandoned.
 On the filing of Counter statement- Notice by
Registrar to the opponent.

Opposition to registration
Sec.21
 Opportunity of hearing and collection of evidence by
the registrar.
 Final decision by the Registrar.

 GLENMARK PHARMACEUTICALS LTD. Vs Bal Pharma
Ltd. 2009 (IPAB)
 Appeal arises out of the order dated 17.11.2008 dismissing
opposition No. BOM-167475.
 The respondent No. 1 herein filed an application for registration
of the trade mark CORORANGE in respect of pharmaceutical and
medicinal preparation.
 The said application was advertised in the trade marks Journal .
 The appellant herein filed the notice of opposition on the ground
that they are leading and established manufacturers and dealers
of pharmaceutical products for the last several years.

GLENMARK PHARMACEUTICALS LTD. Vs Bal Pharma Ltd.
2009 (IPAB)
 In the year 1971, appellant bonafidely and honestly adopted
the trade mark DEXORANGE.
 The appellants trade mark has acquired a tremendous
goodwill and reputation among the public by virtue of
extensive and continuous use.
 The registration of the impugned trade mark CORORANGE
would be contrary to the provisions of the Act. The
application, therefore, be refused and opposition be allowed
with costs.

GLENMARK PHARMACEUTICALS LTD. Vs Bal Pharma Ltd.
2009 (IPAB)
 The respondent No. 1 herein filed their counter-statement to
the notice of opposition.
 rival marks CORORANGE and DEXORANGE are not
deceptively similar and are distinct and different in sound
and vision.
 The mark DEXORANGE when split the prefix DEX does not
bar others from using the word ORANGE with any other
prefix or suffix. The suffix ORANGE is either a fruit or a
colour.

GLENMARK PHARMACEUTICALS LTD. Vs Bal
Pharma Ltd. 2009 (IPAB)
 the Assistant Registrar of Trade Marks passed the
impugned order on the finding that the objection under
section 9(2) was rejected as the trade mark
CORORANGE of the respondent No. 1 was distinctive
and different from the appellants trade mark
DEXORANGE by sound and vision and was not
deceptively similar;

 Aggrieved by the said order, the appellant herein filed
the appeal before IPAB. Circuit Bench Mumbai
 The learned counsel for the appellant contended that
the appellants adopted the trade mark DEXORANGE as
early as in 1971 and are the registered proprietors of the
trade mark.
 They had been carrying on business under the said
trade mark DEXORANGE continuously and extensively
without any interruption.

 respondent failed to give any explanation for the adoption
of the trade mark CORORANGE in the counter-statement
before the Registrar of Trade Marks in the opposition
proceedings.
 Observation by Court:
 A trade mark qualifies for registration by acquiring
distinctiveness among the public. The mark may be
distinctive or may be capable of acquiring distinctiveness by
use.
 It is well known that the question whether the two marks
are likely to give rise to confusion or not is a question of
first impression. It is for the court to decide that question.

 When the marks are identical the possibility of
confusion and deception is certain.
 It is also the settled principle that in an opposition
proceedings the onus is on the applicant (respondent
No. 1) to prove that by registration of the impugned
mark no confusion or deception will arise.
 In this case, the respondent No. 1 has not satisfied the
same.

 The trade mark CORORANGE of the respondent No. 1
does not qualify to be registered. The trade mark
DEXORANGE of the appellant which has been in use
since 1997, if not since 1971 as claimed by the appellant,
has to be protected.
 opposition allowed. The appeal is, therefore, allowed
and order of the Assistant Registrar is set aside with no
order as to costs.

 M/S Bal Pharma filed C.R.P.(PD)No.3765 of 2008 before
Madras HC.
 A bare perusal of the order of the IPA Board would
exemplify and display that it is a balanced order.
 if the revision petitioner is allowed to obtain the
registration certificate, certainly it would lead to
complications.
 C.R.P. dismissed.

 Sec. 22 Correction and Amendment
 The registrar may permit to correct any
error/amendment in the TM application.
 Sec. 23 Registration:
 The Registrar shall register the TM within 18 months
from filing of application.
 If not filed within time- considered as abandoned.
 Registration may be accepted/ refused after
considering opposition if any.

 Sec. 23 Registration:
 Issuance of certificate of registration by Registrar to
the Applicant, sealed with the TM registry.
 Register and certification of registration can be
amended for any clerical mistake.
 Sec. 24 jointly owned TMs:
 Tm can be owned Jointly by 2 or more persons in relation
to an article or service.
 These persons may be registered as joint proprietors.

Sec. 25 duration, renewal, removal and
restoration of Tm
 Duration – 1o years.
 Notice in advance from Registrar to Owner for
renewal.
 Subject to renewal after 10 years.
 The Registrar has power to remove TM in case renewal
is not done.
 However, after paying prescribed fees and surcharge
fees, TM can be renewed.

 Sec. 25 duration, renewal, removal and restoration of
Tm
 Removed TM can be restored back again subject to
conditions and limitations.
 Sec. 26 Effect of removal from register:
 Failure to pay renewal fee results into removal of TM.
 However TM shall be deemed to be a TM on the register
unless there is no bonafide use for 2 yrs from date of
removal or no deception or confusion is likely to arise due
to use of this TM.

 Sec. 27 No action for infringement of unregistered TM:
 No person can file a suit for infringement of
unregistered TM and to recover damages.
 However, unregistered TM can be protected if it is
subject to passing off action by any person.
 Sec. 28 Rights conferred by registration:
Exclusive right to the use of the TM
Right to obtain relief in respect of infringement.
Right to obtain financial/monetary benefits.

Sec. 29 infringement of registered TM:
A mark which is identical with, or deceptively similar to
the registered TM or
 its identity with the registered trade mark or
its similarly to the registered trade mark or
If it is likely to cause confusion on the part of the
public, or
which is likely to have an association with the
registered trade mark.

Sec. 29 infringement of registered TM:
 takes unfair advantage of or is detrimental to, the
registered trade mark or
 Use of TM for labeling or packaging goods, as a
business paper, or for advertising goods or services or
 the trade mark may be infringed by the spoken use of
those words as well as by their visual representation.
 Offers or exposes goods for sale
 Imports or exports goods under the same TM.

Suit for infringement Sec. 134
 A suit to be filed in a Dist. Court having jurisdiction.
 The jurisdiction is governed by C.P.C. 1908.
 The infringement must have taken place within the
territorial jurisdiction of the court.
 Suit may be filed where plaintiff/defendant resides or
carries on business.
 Suit for passing off action can also be challenged
before Dist. Court.

Who may file suit?
I. The registered proprietor or his legal heirs.
II. A registered user
III. Assignee of the registered TM
Contents of the Plaint:
I. Clear and concise statement with material facts.
II. Allegations against the defendant.
III. Reliefs sought.
IV. Proof of the registration of TM

Sec. 135
 Reliefs in suits for infringement/ passing off:
1. Injunction i.e. Interlocutory/ Interim
2. Damages/ accounts of profits.
3. Delivery of the infringing copies/labels/marks.
4. Marks for destruction or erasure
Note: The suit for infringement may be stayed if
defendant files an application for rectification of
register under Sec. 124.

Doctrine of Honest concurrent user
 Sec. 12 Ingredients:
a. The adoption and use of the mark must be honest.
b. The degree of confusion likely to cause should be minimal.
c. The relative hardship which would be caused to the
applicant, if registration is not granted should be great.
d. Inconvenience/ confusion on the part of the public should
be minimal.
e. directions can be issued to ensure that the consumers do
not get confused

Assignment of TM
 Trademarks like any asset can be transferred from one
owner to another.
 The transfers could be temporary through licensing or
permanent through an assignment.
 Assignment of trademarks is a process in which the
owner of the trademark transfers the ownership of the
mark either with or without the goodwill of the
business.

Assignment
 Definition of Assignment under TM Act 1999:
 Sec 2 (1) (b) "assignment" means an assignment in
writing by act of the parties concerned.
 A mark may be assigned or transferred to another
entity in any of the following manners:
I. Complete Assignment
II. Partial Assignment
III. Assignment with goodwill
IV. Assignment without goodwill

Assignment
 Complete Assignment to another entity
 The owner transfers all its rights with respect to a mark
to another entity, including the transfer of the rights
such as right to further transfer, to earn royalties, etc.
 (E.g. X, the proprietor of a brand, sells his mark
completely through an agreement to Y. After this X
does not retain any rights with respect to the brand)

Assignment
 Partial Assignment
 The transfer of ownership is restricted to specific
product or service only. The owner may retain the right
to further transfer, to earn royalties etc.
Ex. A, owner of a tea and a biscuit brand, transfers
proprietary rights only with respect to the tea brand
and retains the rights over the biscuit brand, this is
said to be a partial assignment.

Assignment
 Assignment with goodwill
 This is an assignment where the owner transfers the
rights and value of the trademark as associated with
the product it sells;
 Example, A, owner of “Titan” trademark for
manufacturing and selling of watches, can assign the
trademark along with giving the assignee the right to
use the said trademark for the same product.

Assignment
 Assignment without goodwill
 This is an assignment where the owner restricts the
assignee to use trademark for the products he uses it for.
 This means that assignor & assignee both can use the same
trademark but in dissimilar goods or services.
 For example, if the owner of the trademark “Titan” uses it
for manufacturing and selling of watches and decides to
assign it without goodwill, it means that the assignee can
use the trademark “Titan” for any other product other than
watches.

Assignment of TM
 Secs. 38,39
 Care to be taken while assigning a TM:
 Application to the Registrar
 Assignment of TM must be in writing.
 Advertisement of assignment is mandatory in the local
newspaper as prescribed by the Registrar.
 Purpose of advertisement – notice to the public.
 Rights can be assigned by executing Deed of
Assignment.

Assignment of TM
 the territorial extent of the assignment is clearly laid
down.
 the mark/marks that the proprietor wants to assign
must be mentioned clearly.
 consideration that the assignee needs to pay should be
mentioned as well.
 effective date of the assignment
 if the assignment is along with the goodwill or not.
 Entry in the register by Registrar

Trademark licensing/Registered Users
 Trademark licensing is when a trademark owner allows
others to use the mark without transferring of
ownership.
 The TM Act 1999 does not use any word i.e. licensing
but it uses the word Registered users.
 Sections 48 to 54 deals with the provisions of
registered users/ licensing of TM.
 Two parties are involved i.e. licensor and licensee

Need of licensing
 Economically beneficial both for licensor and licensee
 It helps in expanding business.
 It increases geographical reach.
 It increases the reputation of the goods/ services.
 Ownership remains with the TM owner etc.

 Sec. 2 (1)(x) "registered user" means a person who is
for the time being registered as such under section 49.
 Registration as registered user:
 A person other than TM owner may be registered as
registered user.
 Application to the Registrar jointly by licensor and
licensee.
 Copy of the agreement between by licensor and
licensee need to be attached.

 The grant clause that includes the trademarks
licensed, geographical territory, term of the agreement
etc. should be clearly laid down.
 Any other restrictions/conditions imposed by the
proprietor.
 Consideration in form of royalty and the percentage to
be paid.
 Grounds on which the licensor can terminate the
agreement.

 Power of the Registrar to cancel the registration of
registered users: Sec. 50
1. On Application made by the registered users
2. If the TM is not registered
3. Proprietor or registered users failed to disclose
material facts/ misrepresented the Registrar.
4. Notice shall be issued by the Registrar.
5. Opportunity of hearing shall be given.

 Imp points.
 The registered user has a right to file a suit of
infringement.
 However registered user doesn’t have right of further
assignment or licence.
 Permitted user don’t have right to file a suit of
infringement.

Concept of “Passing off”
 “No man can have any right to represent his goods as
the goods of another person.”
 False representation is usually used under this.
 unfair competition destroys honest businesses and
should not be allowed.
 The object of the this law is to protect the goodwill and
reputation of a business.
Note: passing off not defined under TM Act, 1999, however
refer to sec. 27.

SC On Passing off
 The Hon’ble SC has defined passing off in Cadila
Healthcare Ltd v. Cadila Pharmaceuticals Ltd
As unfair trade competition
A person attempts to obtain an economic benefit of
the reputation.
which the other has established for himself in a
particular trade or business.
criteria in order to decide an action of passing off was
laid down in this case.

Ervin Warnik B. V. v. J. Townend & Sons
Ltd.
 Characteristics which must be present in order to bring
action of passing off:
 Lord Diplock:
1. Misrepresentation,
2. the act must be made by the defendant in course of
trade,
3. the prospective or ultimate customers of the plaintiff’s
goods and services have been misrepresented,
4. such an act of misrepresentation is calculated to injure
the business or goodwill of the plaintiff, and
5. such act causes actual damage to the business or goodwill
of the plaintiff.

Reckitt & Colman Products Ltd. v.
Bordan Incorporation
 The plaintiff has to pass the Classical Trinity test.
 Goodwill, confusion and damage.
1. that the plaintiff had acquired a reputation or
goodwill in his goods, name or mark,
2. there was a misrepresentation, whether intentional
or unintentional, were associated with the plaintiff’s
goods and services ,
3. that the plaintiff has already suffered damage or is
likely to suffer damage due to such
misrepresentation.

Sec.135
 Reliefs in suits for infringement/ passing off:
1. Injunction i.e. Interlocutory/ Interim
2. Damages/ accounts of profits.
3. Delivery of the infringing copies/labels/marks.
4. Marks for destruction or erasure

Means adopted for passing off
1) Direct false representation
2) Adoption of similar TM/ a colourable imitation of
the TM.
3) Copying the get-up/trade dress/ colour scheme of
the label.
4) Imitating the design or shape of the goods
5) Adoption of an essential part of a rival traders' name
etc.

Distinction
Infringement Passing off
 Registration of TM is
required.
 If the marks are identical or
deceptively similar no further
proof is required.
 Statutory remedy is
available.
 Can institute the suit for
infringement.
 Registration of TM is not
required.
 The use of the mark or
symbol must be likely to
deceive or cause confusion.
 Remedy under common law.
 Can institute the suit for
passing off.

Distinction
Infringement Passing off
 Applies only to goods.
 prosecution under criminal
law is easier.
 Applies to any business
whether trading or non-
trading, profit making or
non-profit.
 prosecution under criminal
law is difficult.

Cases:
 Sunil Mittal & Anr. v. Darzi on Call CS(Comm) No.
1381/2016
 Britannia Industries Ltd. v. ITC Ltd. FAO(OS) (Comm)
No. 77 of 2016 Division Bench (Delhi High Court)
 Nirma Limited v. Nimma International and Anr.
2010 (42) PTC 307 (Del)
 Colgate Palmolive Company And ... vs Anchor Health
And Beauty Care Pvt

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