Professional Documents
Culture Documents
IPR Project 8th Sem
IPR Project 8th Sem
BY : SAMANTHA NORONHA
MARGAO GOA
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PROJECT TOPIC : INFRINGMENT OF TRADEMARK AND REMEDY
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INDEX
1. INTRODUCTION 4
2. HISTORY 5
3 RELEVANT LAW 6
4. CASELAWS 8
5 REMEDY: CIVIL 10
6 REMEDY: CRIMINAL 12
7 PERIOD OF 18
LIMITATION
8 PASSING OFF 18
9 RELIEFS 20
10 CONCLUSION 22
11 BIBLIOGRAPHY 23
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INTRODUCTION
Act, 1999 and also under the common law remedy of passing off. Statutory
the Department of Industrial Policy and Promotion (DIPP), under the Ministry
trademark and prevention of fraudulent trademark. The law also provides for the
1
http://en.wikipedia.org/wiki/Indian_trademark_law, as visited on 27/11/2013
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HISTORY
The law of trademark in India before 1940 was based on the common
law principles of passing off and equity as followed in England before the
enactment of the first Registration Act, 1875. The first statutory law related to
trademark in India was the Trade Marks Act, 1940 which had similar provision
like the UK Trade Marks Act, 1938. In 1958, the Trade and Merchandise Marks
Act, 1958 was enacted which consolidated the provisions related to trademarks
contained in other statutes like, the Indian Penal Code, Criminal Procedure
Code and the Sea Customs Act. The Trade and Merchandise Marks Act, 1958
was repealed by the Trade Marks Act, 1999 and is the current governing law
related to registered trademarks. The 1999 Act was enacted to comply with the
marks have been enacted into the 1999 Act, but they are primarily governed by
the common law rules based on the principles evolved out of the judgments of
the Courts. Where the law is ambiguous, the principles evolved and
interpretation made by the Courts in England have been applied in India taking
into consideration the context of our legal procedure, laws and realities of
India. 2
2
http://en.wikipedia.org/wiki/Indian_trademark_law, as visited on 26/11/2013
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Law relating to trade marks
The trade marks and merchandise Act was passed in the year 1958.since then it
has been amended several times. Moreover in view of the development of trade
encourage investment flows and the need to simplify and harmonise trade mark
independence of India was given to trade marks through the trade mark Act of
1940 .this in turn was repealed by the present statute , the Trade marks Act of
1999, which came into force with effect from 15th of September, 2003.3
licensees (provided that such authorization was within the scope of the license).
Infringement may occur when the infringer (i.e. the person doing the infringing
are identical or similar to the products or services which the registration covers.
3 th
Law relating to intellectual property , by Dr. B.L.Wadehra , 5 edition , pg no. 129
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against the infringer.
trademark owner cannot bring infringement proceedings. Instead, the owner can
being the proprietor nor permitted user of the registered trade mark uses a trade
mark which is identical with or deceptively similar to the registered trade mark
.” 5
4
http://www.nipo.in/trademarkmn2.htm#Trademarks, pg no. 1 , as visited on 26/11/2013
5
Intellectual property laws, by : Meenu Paul , third edition , pg no. 400
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Essential of infringement
1. The taking of any essential feature of the mark or taking of the whole
of the mark and then making a few editions and alterations would
constitute infringement .
2. The infringing mark must be used in the course of the trade , i.e. in a
4. Any or all of the above acts would constitute infringement if the same
1. The plaintiff was the registered user of the trade mark , “DOLAREN”,
6 th
Law relating to intellectual property , by Dr. B.L.Wadehra , 5 edition , pg no. 166
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laboratories ltd. V. Nabros pharma pvt ltd., AIR 2009
(NOC)1815(Guj)
2. The suit was initiated by the broadcaster of T.V. channel owning the
with word “Zee”. It was held that it would be appropriate for the
PTC 470.
4. The suit was filed for declaration that the expression “insta power” is
held that the expression is a generic word and therefore it colus not be
a monopoly. It was further held that the suit for injunction against the
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maintained . the suit was decreed restraining the defendant from
32 PTC 126 7
be filed. It may be noted that under the Provisions of the Trade Marks Act,
1999, the offences under the Act are Cognizable, meaning there by that police
can register an FIR (First Information Report) and prosecute the offenders
directly.
Civilremedies:
7 th
Law relating to intellectual property , by Dr. B.L.Wadehra , 5 edition , pg no. 170 -175
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Appointment of local commissioner by the court for custody/ sealing of
Application under order 39 rule 1 & 2 of the CPC for grant of temporary / ad
The Courts can grant injunction and direct the custom authorities to withhold
the infringing material / its shipment or prevent its disposal in any other manner,
to protect the interest of the owners of intellectual property rights. This legal
Administrative remedies
Apart from the civil remedies aforementioned the act also vests certain powers
8
http://www.nipo.in/trademarkmn2.htm#Trademarks, pg no. 1 , as visited on 26/11/2013
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(v) Renewal , removal and restoration of registration
Other aspects relating to trade marks. It may be noted that it is the registrar who
mostly exercises these powers under the guidance of the Central Government. 9
Criminal Remedies:
The Act also provides for offences relating to a trademark, whether registered or
9 rd
Intellectual property rights and the law, by : Dr. G.B.Reddy, 3 edition
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Tampering with an indication of origin already applied to goods
Office
imprisonment for a term, which may extend to 2 years, or with fine, or with
both.
However, if the offence is pertaining to drugs [as defined under Drugs &
Cosmetics Act] or food [as defined under Prevention of Food Adulteration Act]
the offender shall be punishable with imprisonment for 3 years or fine or both.
Offence No. 8 is punishable with a fine. Offence Nos. 9 & 10 are punishable
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Why you should not infringe others rights
If you infringe the trademark of others then you run the risk of being sued for
trademark infringement and losing the right to use your new business name,
product name, domain name or slogan which will be a waste of your effort and
Act. Any police officer (not below the rank of deputy superintendent of police
labels without a warrant. Further, the Trademarks Act has increased the
punishment for these offences to a term of not less than six months up to a
On February 19, 2009, the plaintiff applied for registration of its series trade
1999 -Class 21 (glass bottles) and Class 32 (beers etc.). It also obtained
10
http://www.nipo.in/trademarkmn2.htm#Trademarks, pg no. 2 , as visited on 26/11/2013
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registration for a design to be applied on its beer bottles under the Design Act,
2000 on 15th January 2010. Subsequently, the plaintiff introduced in India its
beer bottles (bearing the registered design and also bearing SABMILLER
INDIA). It is pertinent to note that the defendant used to sell and distribute beer
by filling beer into recycled bottles and not into new bottles. The practice of
Prior to its series trademarks being successfully registered, the plaintiff found
that the defendant was manufacturing, selling and distributing beer in bottles
SABMILLER INDIA. This lead the plaintiff to sue the defendant for design
infringement and passing off. The suit was initiated before the District Court of
MP and reached the High Court of MP as an appeal by the plaintiff. The High
Court of MP, after extensively hearing the case, dismissed the plaintiff’s appeal.
filed a suit before the Bombay High Court for infringement of registered
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Issues before the Bombay High Court
1. Whether the present suit was barred by res judicata since the MP High Court
2. If the suit was not barred, then was infringement by the defendant satisfied
under Section 29(2)(c) of the Trademarks Act (‘the Act’) and could this lead to
3. Could the defendant’s contention that its inadvertent or accidental use of the
plaintiff’s mark due to the practice of using recycled bottles, save the
defendant? And could the fact that the defendant used other bottles which had
labels bearing the defendant’s own name and mark, help the defendant?
4. Was the plaintiff guilty of suppression of facts in relation to its having used
5.Would the exceptions under Section 30(1) and Section 30(2) of the Trademark
Decision
1. Res judicata- The court held that res judicata will not apply because the
present case was in pursuance of a new cause of action. This was because after
registration of its trademark, the plaintiff was entitled to sue for infringement
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and did not have to rely on passing off. Since infringement creates a new cause
of action which is different from the cause of action before the MP High Court
point and was of the view that given the identity of the two marks and the
presume that the defendant’s use of the impugned mark is likely to cause
confusion on part of the public (Section 29(3)). The court also relied on the
case Ruston & Hornsby Ltd. vs. Zamindara Engg. Co. to establish that in such
cases no further inquiry was required to find out whether there was in fact any
confusion.
3. Use of own labels – The court rejected the defendant’s contention on use of
their own labels and held that this was no defense in an action of infringement.
The only question was whether the defendant was using a mark which was the
mark. This question being confirmed in the present case, the court said that the
allegation of suppression of facts, the plaintiff had denied suppressing any facts.
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the deception to make it appear as if the plaintiff was using Kingfisher’s bottles.
Interestingly, the plaintiff submitted that there might have been accidental use
too used recycled bottles. The Court accepted the plaintiff’s explanation and the
court also accepted the argument that it was not honest trade practice(required
for the exception in Section 30(1)(a) to stand) to use recycled bottles bearing
brands of different manufacturers- which was what the defendant was doing and
5. Defense - With regard to the defense under Sections 30 (1) the court held that
such a defense would apply when the registered mark is used by a person only
for identifying the goods of the registered proprietor (the court gives an example
court observes, the defendant is using the mark for its own products and is
identifying its own goods with that of the mark. Therefore this defense does not
apply. With regard to Section 30(2), the court says the exception is not
applicable as the defendant is using the registered trademark as his own mark
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Ultimately the court held the defendant guilty of infringing the plaintiff’s
Period of limitation
Under the limitation Act, 1963 the period of limitation for filing a suit of
where the infringement is a continuing one , a new course of action arises every
articles sale of each article would give rise to a fresh cause of action.
Passing off
common law has remained substantially the same for more than a century
The Supreme Court has defined passing off in Cadilla health care ltd v. Cadila
11
http://spicyip.com/2013/03/bombay-high-court-decision-on-trademark.html, asvisited on 28/11/2013
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the other has established for himself in a particular trade or business. The action
The crux of passing off action lies in actual possible or probable deception . the
plaintiffs necessarily have to establish reputation and good will . some of the
1) In Aktiebolaget Volvo vs. Volvo steels ltd (1998 PTC (18) Bom at p. 47
The Bombay High Court found that the Defendants were using the trade
mark “Volvo” which was deceptively similar to the trade mark of the
plaintiffs fast growing group and the defendants were restrained from
defendant from using the domain name “ radiff” which was sought to be
3) In mars incorporated vs. Chanda sofy ice cream ( AIR 2001 Mad 237)
the Madras High Court confirmed the grant of injunction against the
defendants who were selling their ice creams under the name milky way
12 th
Law relating to intellectual property , by Dr. B.L.Wadehra , 5 edition , pg no 179
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selling chocolates and biscuits with registered trade marks “milky way “
and “ galaxy”. 13
According to sec. 135 of the Act, the relief in any action for passing off
includes injunction (subject to such terms if any , as the court thinks fit )
together with or without any order for the delivery up of the infringing
labels and marks for the destruction or erasure. It is thus the same as in
Injunction
Where the acts of infringement are of such a nature that they are not
arise.
premises . a court may grant such an order to the plaintiff where there
13 rd
Intellectual property rights and the law, by: Dr.G.B.Reddy , 3 edition , pg no. 338-339
14 st
Intellectual property rights and law , by S.K.Singh, 1 edition, pg no. 271
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is a possibility of the defendant destroying or disposing off the
incriminating material.
further infringement.
time to come from doing any act which infringes the rights of the
15 th
Law relating to intellectual property , by Dr. B.L.Wadehra , 5 edition , pg no.. 184
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Conclusion
As the above analysis has indicated trade marks are valuable corporate assets
and in cases where they are correctly exploited, they provide their trade mark
proprietors with more fame, distinctiveness and benefits. Thus the respective
owners of trade mark rights by contemplating their value and significance and
by devoting material efforts into their future evolution, they invest significant
amounts for their protection. The Trade Marks Act provides, inter alia, for
concept of well-known marks, etc. The Indian judiciary has been proactive in
the protection of trademarks. India, being a common law country, follows not
only the codified law, but also common law principles, and as such provides for
Section 135 of the Trade Marks Act recognises both infringement as well as
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Bibliography
2. Intellectual property rights and the law , by Dr. G.B.Reddy,, 3rd edition
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