Trade Mark Law in India & Its Violation – an Analytical Study

Trade Mark- A Fundamental Concept

A trademark or trade mark is one of the elements of Intellectual Property Right  and is represented by the symbol
™ or ® or mark is a distinctive sign or indicator of some kind which is used by an
individual, business organization or other legal entity to identify uniquely the source of its products and/or services
to consumers, and to distinguish its products or services from those of other entities. A trademark is a type of
intellectual property, and typically a name, word, phrase, logo, symbol, design, image, or a combination of these
elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these
standard categories.
The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily
identified, such as the well known characteristics of celebrities. When a trademark is used in relation to services
rather than products, it may sometimes be called a service mark, particularly in the United States.
Rights & Remedies of a Trade Mark Owner-
The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent
unauthorized use of that trademark. However, registration is not required. The owner of a common law trademark
may also file suit, but an unregistered mark may be protectable only within the geographical area within which it
has been used or in geographical areas into which it may be reasonably expected to expand.
Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its
imitation by a third party. These remedies are:

 an action for infringement' in case of a registered trademark; and

 an action for passing off' in the case of an unregistered trademark

While former is a statutory remedy, the latter is a common law remedy. In an action involving infringement or
passing off, a court may grant relief of injunction and/or monetary compensation for damages for loss of business
and/or confiscation/destruction of infringing labels and tags etc.  
Although registration of trademark is prima facie an evidence of validity of a trademark, yet the registration can
not upstage a prior consistent user of trademark, for the rule is ‘priority in adoption prevails over priority in
registration`.
Infringement of Trade Mark-
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of
the trademark owner or any licensees (provided that such authorization was within the scope of the license).
Infringement may occur when one party, the "infringer", uses a trademark which is identical or confusingly similar
to a trademark owned by another party, in relation to products or services which are identical or similar to the
products or services which the registration covers. An owner of a trademark may commence legal proceedings
against a party which infringes its registration.

Trade mark Law in India-

The Indian law of trademarks is enshrined the new Trade Marks Act, 1999 came into force with effect from
September 15, 2003. The old Trade and Merchandise Marks Act, 1958 was repealed at the same time. The new
Trademarks Act of 1999 is in line with the WTO recommendations and is in conformity with the TRIPS Agreement
to which India is a signatory.

India has declared certain countries as convention countries, which afford to citizens of India similar privileges as
granted to its own citizens. A person or company from a convention country, may within six months of making an
application in the home country, apply for registration of the trademark in India. If such a trademark is accepted
for registration, such foreign national will be deemed to have registered his or her trademark in India, from the
same date on which he or she made application in the home country.
 Scope of Foreign Investors With Regard to the Registration of Trade Mark in India-
Registration of trademarks is one of the important protections that businesses should avail in India. Many foreign
and domestic Applicants have been able to successfully register their marks in India. Indian courts have upheld
many of those registrations and granted favorable decisions to rights holders.

In addition to the registering of their trademarks in India, businesses need to adopt other strategies for protecting
their trademarks. Some of them are mentioned below:

 Get trademark searches conducted in the Indian Trade Marks Registry in the classes that are of interest to
you including the ancillary classes.

 Get common law searches (this includes the internet, market surveys, yellow pages and directories)
conducted to ascertain whether third parties are using your trademarks and if so, the extent of such use.

 Based on this information and after seeking the local counsel’s opinion decide if the trademark is available
for use or not.

 Should the trademark be available for use, immediately apply for the registration.

 The rights holder should also consider hiring a watching service to monitor the trademark journals in order
to alert them to any published, deceptively similar trademarks or descriptive trademarks that might be of
concern.

 Should the rights holder own a trademark that has been used and has acquired goodwill and reputation, it
is advisable that along with filing of the trademark application in India, they should also make press releases,
publish cautionary notices and advertise the mark to ensure that the relevant section of the public is aware that
they are entering the Indian market and are protecting their trademark from any kind of third party violation.

 The rights holder should also take immediate steps to register their domain names including country
coded top level domain names in India, as there have been many instances of third parties registering domains
for certain well known marks with the intention of extracting money by selling these domain names to the rights
holders.

 Should the rights holder discover that their trademark is being infringed, they should take immediate
steps to protect their trademark, either by the means of filing oppositions, cancellations, conducting
investigations, sending cease and notices or initiating appropriate civil and criminal actions.

Cases of Trade Mark Violation in India-

Trade mark infringement especially among the corporate classes in India is rising on an alarming rate. Few of the
notable cases have been described in brief.

  1.  Pantaloon dragged to court by Shoppers’ Stop and Lifestyle; Westside also contemplates similar
action, (July 14th, 2008).
 Shoppers’ Stop and Lifestyle have dragged their rival Pantaloon to court as they were miffed with an
advertisement issued by the flagship company of Kishore Biyani owned Future Group that offered 10% extra
discount to their loyal customers vide an advertisement issued in The Times of India, New Delhi, dated 28th
June, 2008. The complainant retailers have accused Pantaloon of trademark violations and unfair business
practices, says a Live Mint report. All the three parties operate department store format store chains in lifestyle
segment.

Even Westside has taken objection to the ad saying, “We have sent a notice to them to which they have not
responded,” said Smeeta Neogi, Head (Marketing) Westside.

Pantaloon’s ‘Central’ mall at Gurgaon had offered 30% discounts to its customers over the weekend. Loyalty card
holders of competing retailers like Shopper’s Stop, Lifestyle and Westside, were lured by Pantaloon by offering an
additional 10% discount on select brands of apparel. The advertisement asked such customers to: ”Present your
membership card to avail this offer.”

Loyalty cardholders are mainstay of business for most retailers. Shoppers’ Stop has a highly popular loyalty card
programme branded “First Citizen.” According to analysts, more than two-thirds of Shoppers’ Stop’s apparel
business is accounted for by its loyal customers.

“They (Pantaloon) are luring my customers by using my name in an unfair manner,” said Sandeep Mittal, the
lawyer representing for both the petitioners.

The Honourable Delhi high court has issued an injunction restraining Pantaloon from using names of its rivals in
the ads until the next hearing in the matter fixed for 31st July.

Taking potshots at these competitors is not new for Pantaloon. Last year, its Big Bazaar chain had put
up hoardings, asking customers to “Keep West-aSide,” “Shoppers! Stop” and “Change Your Lifestyle. Make a Smart
Choice.”

2.    Amul wins trade mark case in Gujarat High Court, (Sep 24, 2007)
Amul has won the trade mark case in Gujarat High Court and no one else can use it.

The Kaira District Co-operative Milk Producers? Union Ltd. and GCMMF had filed trade mark infringement cases,
against two local shop owners ? Amul Chasmaghar and its partners and Amul Cut Piece Stores in the District Court,
Anand.

The District Court, Anand passed an order dated 25 April 2007, ruling that it was a clear case of infringement and
restrained the two from using the Amul trademark.
 Amul Chasmaghar had challenged this interim injunction in the Gujarat High Court. The Gujarat High Court
ruled the decision in favor of Amul, terming the order passed by the trial court as true, correct, legal and in
consonance with the facts of the case, as well as in accordance with the provisions of the Trade Marks Act 1999.

3. Trade Marks Disputes Involving Pharmaceuticals Industry in India-

A.  Beecham Group Plc. vs. S.R.K. Pharmaceuticals 2004 (28) PTC391 (IPAB)
The appellant was using the mark 'AMOXIL' in India since 1990. This mark was registered in India in 1972 in Class
5 in respect of Pharmaceutical goods. The respondent started using the mark 'LYMOXYL' in India from 1985. The
respondent filed the application for registration of the mark in 1987 in India in the same class with respect to
similar goods.

The appellant brought an action against the respondent stating that the mark is deceptively similar. The only
difference between the two marks is in the prefix 'LY' and 'M'. The rival marks are phonetically and deceptively
similar and the goods are pharmaceutical goods under Sec. 12(1) of the Act.

The Intellectual Property Appellate Board (IPAB) held that the respondent dishonestly adopted the mark by copying
it from the appellant who had got the mark registered long ago. Hence the respondent cannot claim honest
concurrent use, by virtue of earlier use. The Appellate Board delivered a judgment prohibiting registration of the
Trade Mark 'LYMOXYL'.
B.  Ranbaxy Laboratories Limited vs. Anand Prasad & 4 Others 2004 (28) PTC 438 (IPAB)
The appellant was the registered proprietor of the mark 'FORTWIN' and had been using the mark since 1975. The
respondent applied for registration of the mark 'OSTWIN'. Both the marks related to pharmaceutical compositions
in respect of treatment of bones.

The appellant brought an action against the respondent stating that the mark is deceptively similar. The IPAB held
that the prefixes are 'FORT' and 'OST' while both the marks end with the suffix 'WIN'. It was further held that since
the rival goods are also pharmaceutical goods it might lead to serious consequences due to deception or confusion
in the minds of the public. Hence on the possibility of harm being caused to common person the appeal was
allowed.

C.  Wyeth Holdings Corp. & Anr. vs. Sun Pharmaceuticals Industries Ltd. 2004 (28) PTC 423 (Bom)
In this case the plaintiff whose former name was American Cynamid Company and who was the proprietor of the
trademark 'PACITANE' registered the mark in Class 5 of Pharma goods. The respondent was using the mark
'PARKITANE' with respect to similar goods. The plaintiffs filed a suit for infringement and passing off and sought
various reliefs including interim injunction against the defendant for using the mark 'PARKITANE'.

The Court held that in both the cases the goods are similar, being pharmaceutical preparations for treatment of
Parkinson's disease, the customers buying these goods are the same and the trade channels are the same. Since
the defendants did not show any search of the Register before adopting the impugned mark, prima facie adoption
of the mark was not honest. Further, the Court held that despite protests, if the defendants have chosen to
continue to sell the products, it cannot be said to be acquiescence by the plaintiff. Therefore the Court held that
injunction is to be granted in favour of the plaintiff.

The Court further held that in case of pharmaceutical products, the test is of possibility of confusion and not
probability of confusion. The plaintiffs have been in the field since 1950 and as such the balance of convenience is
in their favour. The Court granted injunction in favour of the plaintiffs.

D.  Hoechst Aktiengesellschaft vs. Artee Minerals & Anr. 2004 (28) PTC 470 (IPAB)
The appellant was the registered proprietor of trademark 'ARELON'. This mark was registered in class 5 with
respect to pharmaceutical goods relating to preparation for killing weeds and destroying vermin. The respondent
filed an application for registration of the mark 'ARTEELON' in the same class with respect to pharmaceutical goods.

The appellant opposed the application for registration of trade mark filed by the respondents on the ground that
the registration of the impugned mark would be contrary to provisions of Sections 9, 11, 12(1) and 18 of the Trade
and Merchandise Marks Act, 1958.

The IPAB held that the rival goods were same and the only difference was the letters 'TE'. The Appellate Board
further held that the possibility of confusion and deception is not ruled out and hence affirmed the order rejecting
the application for registration filed by the respondent.

The IPAB further held that the benefit of use under Section 54 is given only in case of rectification proceedings
when use of an associated trademark is deemed to be use of the registered trademark against which rectification
proceedings are initiated for non-use of the mark.

Conclusion-
In conclusion it can be drawn that Indian Trade Mark Law must me updated on frequently keeping in pace with the
dynamic and new methods of Trade Mark infringement. Both Courts and Enforcement authorities must be well
equipped and be trained for efficient disposal of cases relating to Intellectual Property.
Trademark Case Law and Precedent

There are numerous precedents that have been established through extensive

adjudication of court cases involving trademarks. Some of these cases have served to
establish the guidelines which govern the parameters and the scope of trademark
protection.

In Zatarains, Inc. v. Oak Grove Smokehouse, Inc., the Fifth Circuit Court of Appeals
dealt with the issue of whether potential confusion preempted the application of the fair
use defense in trademark infringement.

Oak Grove and Zatarain’s both sold similar fish seasoning products. Zatarain’s product
was called, “Fish Fri” while Oak Groves product was named, “fish fry.” Zatarain had
registered their product name in 1962, and it was a well known common name in the
New Orleans community.

Oak Grove claimed the fair use defense, asserting that their application of the term “fish
fry” was merely functional. On appeal, the Fifth Circuit ruled that indeed Oak Grove
could use the term “fish fry” in the descriptive sense as long as they purposely did not
intend to confuse customers as to the source of the goods.

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PASSING OFF UNDER INDIAN TRADEMARKS ACT 1999: “A
BIRD’S EYE VIEW”
ATIN KUMAR DAS, LL.M III SEMESTER, NATIONAL LAW
INSTITUTE UNIVERSTY BHOPAL.
INTRODUCTION
The passing off action depends upon the principle that nobody has a right
to represent his goods as the goods of somebody. In other words a man is
not to sell his goods or services under the pretence that they are those of
another person.
Passing off is not defined in the Act. It is referred to in section 27(2), 134(1)
(c) and 135.Section 27(2) states that the rights of action against any person
for passing off goods as the goods of another person or the remedies in
respect thereof. Section 134(1) (c) refers to injunction of courts to try suits
for passing off arising out of the use of any trade mark. Section 135
specifies the remedies available in respect of passing off arising from the
use of a trademark.[1]
Now the question is arise that why passing off is necessary because
already trademark given the protection to goods and services?
The Trademark is providing protection to registered goods and services,
but the passing off action is providing a protection to unregistered goods
and services. The most important point is that the remedy is same in both
the cases but the Trademark is available to only the registered goods and
services and passing off is available to unregistered goods and services.
To more knowledge of this context we can summaries the case of Durga
Dutt vs. Navaratna Pharmaceutical[2]; in this case the Supreme Court is
set out the distinction between infringement and passing off. The action for
infringement is a statutory remedy conferred on the registered owner of a
registered Trade mark and has an exclusive right to the use of the trade
mark in relation to those goods. And the passing off is available to the
unregistered goods and services.
The second most important point is that the use by the defendant of the
trade mark of the plaintiff is not essential in an action for passing off, but in
the case of an action for infringement this will not applicable.
The third important distinction between these two is that  if the essential
features of the trade mark of the plaintiff have been adopted by the
defendant, the fact that the get up, packing and other writing or marks on
the goods or on the packets in which he offers his goods for sale marked
 differences or indicate clearly a trade origin different from that of the
registered owner of the mark would be immaterial; but in case of passing
off the defendant may escape liability if he can show that the added matter
is sufficiently to distinguish his goods from those of the plaintiff.[3]
In the cases of infringement the burden is always lies to the plaintiff. In the
case of S.M. Dyechem Ltd. v. Cadbury (India) Ltd.[4] In this case an
infringement action is fail where plaintiff cannot prove registration or that its
registration extends to the goods or to all the goods in question or because
the registration is invalid and yet the plaintiff may show that by imitating the
mark otherwise, the defendant has done what is calculated to pass off his
goods as those plaintiff.
What the plaintiff must establish in a passing off action?
It is essential for success in a passing off action based on the use of a
mark or get up that the plaintiff should show that the disputed mark or get
up has become by user distinctive of the plaintiff’s goods so that the use in
relation to any goods of the kind dealt in by the plaintiff of that mark or get
up will be understood by the trade and the public as indicating the plaintiff’s
goods.[5]
When the passing off arise?
The passing off action is arise when there is misrepresentation, when it is
harm the existence plaintiff’s goodwill, when it is made by a trader in the
course of trade, which is injure the business of another trader and which
cause actual damage to the business or goodwill of the trader by the whom
action is brought.[6]
But these requirements were reduced to three in Reckitt & Colman
Products Ltd. V. Borden Inc.[7]now there are three essential
requirements for the passing off action:
v  The Claimant’s Goodwill: Although damage is the gist of an action for
passing off, but the plaintiff must show that there is a reasonable reason of
his being injured by the defendant’s action, even if the conduct of the
defendant might be calculated to deceive the public. A private individual
cannot institute a suit for passing off even if the defendant practices
deception upon the public, unless it is proved that the defendant’s action is
likely to cause damage to the individual.
v  Misrepresentation:  Misrepresentation in the simplest form of passing off.
If A says falsely these goods I am selling are B’s goods. It is a clear case of
passing off. In simple way we can say that misrepresentation should lead.
Or be likely to lead confusion on the part of consumers. In case ofKhemraj
v. Garg[8], in this case the defendants had copied the get up, layout,
design and colour scheme, etc. and the name “manavpanchang,mani ram
 panchang” and “shri vallabh Mani Ram panchang” of the plaintiff’s
panchang.The court held that it is similar to the plaintiff’s product and
Interim injunction was granted.
In the case of Rupa & Co. Ltd v. Dawn Mills Co. Ltd.[9] In this case the
defendant manufacture an underwear which named dawn as similar to the
plaintiff’s manufactured underwear don, which is creating confusion in the
minds of people because the layout, get up and colour combination is same
to the plaintiff’s product.
v  Damage: Damages are available in a passing off action. And remedy is
available in both cases whether the infringement suit or passing off action
in both the cases remedy is given.
 
Now the question of how the passing off action arises?
The question of how the passing off action established. I just referred the
two cases first case is relating to passing off action in domain name in this
regard I just refer the case ofAkash Arora vs. Yahoo Inc[10], in this case
the court held that the yahooindia is creating a confusion in the mind of the
people. And the defendant yahooindia is same as the plaintiff’s yahoo. But
as a student of law I am not go with the case decision because my views
regarding to the case is that his site may be better than his competitors.
And second important thing is that those who access the Internet they are
capable to distinguish which site is yahoo. in and which one is
yahooindia.So the question of confusion is not create when the people are
able to distinguish between the sites then there will be no question of
passing off arise.
The second case In Reckitt & Colman of India Ltd. vs. M.P.
Ramachandran & Anr[11],Hon’ble Calcutta High Court (Barin Ghosh, J.)
laid down five principles for granting an injunction in case of comparative
advertising:
i. A tradesman is entitled to declare his goods to be best in the world even
though the declaration is untrue;
ii. He can also say that his goods are better than his competitors, even
though such statement is untrue;
iii. For the purpose of saying that his goods are the best in the world or his
goods are better than his competitors he can even compare the
advantages of his goods over the goods of others;
iv. He however, cannot, while saying that his goods are better than his
competitors, say that his competitor’s goods are bad. If he says so, he
really slanders the goods of his competitors and their goods, which is not
permissible.
v. If there is no defamation to the goods or to the manufacturer of such
goods no action lies, but if there is such defamation an action lies and if an
action lies for recovery of damages for defamation, then the court is also
competent to grant an order of injunction restraining repetition of such
defamation.
The Hon’ble court also observed in this case that “One can boast about
technological superiority of his product and while doing so can also
compare the advantages of his product with those which are available in
the market. He can also say that the technology of the products available in
the market has become old or obsolete. He can further add that the new
technology available to him is far more superior to the known technology,
but he cannot say that the known technology is bad and harmful or that the
product made with the known technology is bad and harmful. What he can
claim is only that his product and his technology is superior. While
comparing the technology and the products manufactured on the basis
thereof, he can say that by reason of the new superior technology available
to him, his product is much superior to others. He cannot, however while so
comparing say that the available technology and the products made in
accordance therewith are bad and harmful.”
CONCLUSION
In the conclusion the researcher concludes that the passing off action is
applied in unregistered goods and services, and in infringement of suit and
passing off in both the cases the remedy will be same. Then the passing off
is arise in three cases first when it is injured the claimants good will,
secondly in misrepresentation and thirdly in damages, where the position is
same like in infringement suit. And lastly when the concept of passing off is
reading with domain name and technological changes then the concept of
passing off is in different dimension.