Infringement of registered trade marks (s. 29)
•A person other than the proprietor or the registered user uses a mark
–Identical with, or
–Deceptively similar to the regd trade mark
•Mark
–Identical and goods/services similar
–Mark similar and goods/services identical/similar
–Mark identical and goods/services also identical
Likely to cause confusion to the public
•Mark identical/similar to a registered mark
–And used in goods/services which are different than for which the regd TM is used and
–Regd TM has reputation in India and
–Mark takes unfair advantage or is detrimental to
–The distinctive character or repute of the regd TM
•Person using a regd mark as
–Trade name
–Name of business
–Dealing in goods/services of the regd TM
•Applying a regd TM
–On the label or the package
–As a business paper
–Or for advertisement
–If he knew or believed that such application was not duly authorised by the proprietor or a licensee
•Any advertising of a regd TM
–If it takes unfair advantage and is contrary to honest practices in industrial or commercial matter
–Is detrimental to its distinctive character
–Is against the reputation of any TM
•Where distinctive elements of a TM are words, then TM may be infringed by the
–Spoken use of their words as well as by
–Their visual representation
•Meaning of ‘use’ of a regd TM
–affixes it to goods or the packaging thereof
–offers or exposes goods for sale
–puts them on the market
–or stocks them for those purposes
–imports or exports goods under the mark
–uses the registered trade mark on business papers or in advertising
•Deceptively similar
–‘Ambal’ and ‘Andal’
–‘Pakeeza Super Liquid Blue’ and ‘New Pakeeza Liquid Neel’, ‘Golden Pakeeza Super Liquid Blue’
–‘Colgate’ and ‘Fringate’ same style
–‘Superstar’ and ‘MOONSTAR’ same figure
–‘Eyetex’ and ‘Eyelex’
•Trade mark dilution
–Subsequent user adopts a similar or near similar mark in respect of the same goods, then
–It decreases the value of the mark and weakens the mark
Rights conferred by registration (s. 28)
•Exclusive right to use the trade mark and
–Obtain relief in respect of infringement of the mark
•Such right is subject to any conditions or limitations under the Act
Limits on effect of registered trade mark (S. 30)
•Certain acts not to constitute infringement
•Use of a mark for the purposes of identifying goods/services as those of proprietor provided
–It is in accordance with honest practices in industrial or commercial matters
–Is not an unfair advantage or detrimental to the distinctive character or repute
•Use indicating kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods
•Where a trade mark is registered
–Subject to any limitations/conditions then
–Any use beyond the scope of such conditions
–E.g. beyond a particular territory
–However, it may attract passing-off
•Use of a mark where it has been lawfully applied, or where the proprietor consents (acquiscence)
–E.g. goods purchased in bulk and sold in retail applying the mark
•Use in relation to parts or accessories
–Machinery, automobiles etc where parts and accessories are manufactured by different manufacturers
•Independent registration
–E.g. Honest concurrent use
•Acquiescence – one of the defences
•Effect of acquiescence (s. 33)
–Earlier proprietor consented for a period of 5 years for such use then
–He can’t apply for a declaration that trade mark is invalid
–Can’t oppose the use of such mark
–Unless the registration was not applied in good faith
•Registration to be prima facie evidence of validity (s. 31)
•Duration of registration (s. 25): ten years, renewal from time to time for a further period of 10 years
•Conditions as laid down in Indian Shaving Prod Ltd v. Gift Pack & Another
–Misrepresentation by the defendant which causes confusion in public
–Such representation likely to cause damage to the reputation, goodwill and fair name of plaintiff
–Reputation made during the course of trade
–Plaintiff must be prior user
–Registration is not necessary
–There must be some actual loss and damage
•ACL Education Centre Pvt Ltd v. Americans’ Centre for Languages, (2008) 36 PTC 113 (Del)
–Defendant earlier working with plaintiff
–Now job left, started his own business, but in same line and similar trade name, mark etc.
–Contention – ‘Anshu Sir’s’ is the distinct feature; acquired tremendous reputation in Gurgaon as teacher for English
Passing Off Action when trade mark is Geographically Descriptive
•Nilgiri Dairy Farm v. SA Rathnasabhapthy (1975)
–‘Nilgiri Dairy Farm’ and ‘Nilgiris’
–Milk used in manufacture of dairy products came from Coimbatore and not from Nilgiris
–But it had become a trade name to the extent necessary to maintain an action for passing off
–Plaintiff had acquired reputation
•M/s Bikanervala v. M/s New Bikanerwala (2005)
–‘Bikanervala’ conveyed a distinct and specific meaning in common parlance because plaintiff has used it over 100 years
•Mere fact that plaintiff has adopted a geographically descriptive trade mark
–Not a defence to the defendant
–‘Bharat’, ‘Hindustan’, ‘Himalaya’, ‘Himachal’, ‘Sunder Nagar’, ‘Landra’, ‘Chambal’, ‘Gujrat’
Passing Off where the same mark is registered in the name of third parties
•Century Traders v. Roshan Lal Dugger & Co. (1978)
–Plaintiff using ‘RAJARANI’ since 1973
–Defendant started using it in 1976
–Two others had already got this mark registered earlier to 1973
–Held: Mere entry in the register won’t prove that mark has been used; Plaintiff using it prior to defendant is sufficient
–hence injunction granted
•Prior use
–First user of the mark is senior user
What may constitute prior use
•Bona fide test of marketing
•promotional gifts
•experimental sales in small volume
•Advertisements
•Invoices and letters of dealers
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