(..5..)

Trade Mark[1]

Table of Contents

QUESTION BANK

Explain the provision relating to registration of Trademark. What are the effects of registration of trade mark?
What is trademark? Explain importance of trade mark as intellectual property?
Define Trade mark. Discuss in detail the procedure for registration of trade mark.
What is Trade mark? Explain procedure to obtain trademarks?
Infringement and passing off action in Trade mark.
Explain the concept of trade mark and what are the legal remedies available against infringement of trademark?

Short Notes

Rights of trademark holder.
Authorities under Trade mark.

TABLE OF CONTENT

Introduction-
History of Trade Mark law in India-

III. Definition and meaning of Trade Mark-

i) Mark-
ii) Capable of being represented graphically-

iii) Capable of distinguishing-

iv) Goods and services-

III. Registration of trade mark-

(A) Conditions and Grounds for registration (Ss. 6 to 17)-

Registrar of trade mark-
Classification of goods (S. 7 and 8)-
Relevant factors to be considered by Registrar-
a) Absolute grounds for refusal of registration (S. 9)-
Mark devoid of any distinctive character-
Marks indicative of kinds, quality etc.-

iii. Customary Marks-

Deceiving or confusing marks-
Mark hurting religious susceptibilities-
Mark containing scandalous or obscene matter-

vii. Marks the use of which is prohibited-

viii. Marks related with following shapes-

b) Relative grounds for refusal of registration (S. 11)-
Likelihood of confusion with earlier trade mark-
To take unfair advantage of well-known trade mark-

iii. Its use is liable to be Prevented-

Registration on the basis of consent (Proviso to S. 11)-

Limitation as to colour (S. 10)-
Honest and Concurrent use (S. 12)-
Names of chemical elements or international non-proprietary names not registrable (S. 13)-
Names and representations of living person or persons recently died. (S. 14)-
Registration of parts of trade mark (S. 15 (1) and (2) and S. 17)-
Registration of trade mark as a series (S. 15 (3)-
Registration of trade mark as ‘associated trade mark’ (S. 16)-

Difference between “Associated trade marks” and Regular trade mark-

(B). Procedure for registration (S. 18 to 26)-

Application for registration (S. 18)-
a) Who may apply?
b) Single application-
c) Place of application-
d) Acceptance or refusal of application-
e) Withdrawal the acceptance of application (S. 19)-
f) Correction and amendment (S. 22)-
Advertisement of application (S. 20)-
Opposition of application (S. 21)-
Registration (S. 23)-
Jointly owned trade marks (S. 24)—
Duration, renewal, removal and restoration of registration (S. 25)—
Duration and renewal of registration-
Notice for renewal-
Removal of Trade mark from register-
Restoration of removed trade mark –
Effect of removal from register for failure to pay fee for renewal (S. 26).—
Rights of trade mark holder-
Rights of registered trade mark holders (S. 28)-
Right to Exclusive Use (S. 28 (1))-
Right to Seek Statutory Remedy against an Infringement (S. 28 (1))-
Right of Registered Trademark holder of Identical Trademark- (S. 28 (3))-
Right to Assign (S. 37)-
Right to Seek Correction of Register-
Right to Alter Registered Trademark–
Rights of Unregistered Trademark Holder-
Limitation on Rights-
Limitations on use at the time of registration (S. 28 (2))-
Already registered proprietor-
Bona fide use of Owen’s own name-
Infringement of registered trade mark (S. 29)-
a) Acts which constitute infringement of trade mark-
Use of identical or deceptively similar trade mark-
Use of confusing trade mark-
Use to take unfair advantage of reputed trade mark-
Use of trade mark as trade name-
Use of trade mark on packing paper etc.-
Use of trade mark in advertisement-
Spoken use of trade mark-
b) Acts which does not constitute infringement (S. 30)-
Use of mark to indicate the kind, quality, quantity, etc.-
Use of trade mark outside the scope and limits of registration-
Implied consent of use-
Use in relation to accessories and parts-
User of identical trade marks-
Remedies for infringement of trade mark-
A) Civil Remedies (S. 134 and 135)-
Jurisdiction-
Nature of remedy-
Injunction-

(a). Temporary or interim injunction-

(b). Permanent Injunction-

Ex- parte injunction or Interlocutory order (S. 135 (2))[2]–

Suit for Damages and for profits-
B) Criminal Remedies (S. 102 to 120)-
C) Administrative remedies-

VII. Authorities under trade mark Act-

Introduction-

Registrar-
Powers of Registrar-
Full powers of Civil Court-
Orders as to costs-

iii. Review his own decisions-

Functions of Registrar of trade mark-
Appellate Board-
Establishment (S. 83)-
Functions of the Chairman (S. 84)-
Powers of the Appellate Board-

***

NOTES

1). Marks protected under the Trade Mark Act.-

(a). Service Mark[3]–

(b). Collective Mark[4]–

(c). Certification trade mark-

(d). Well known trade mark-

(e). Internet Domain Name-

2) Passing Off-

(a) Meaning of Passing- Off (S. 27 (2))-

(b) Essential features of Passing-Off Action-

Misrepresentation by the defendant.
Injury to plaintiff’s business-

iii. Damage to plaintiff-

(c). Modes adopted for passing off-

(d). Nature of Passing-Off Relief (S. 135)-

I. Introduction-

The Industrial Revolution started the large-scale production and distribution of industrial products. Due to the large-scale production of the same types of products by different competitors, some manufacturers have started to mark or symbolise their products specifically. This specific mark or symbol was useful to separate their product from other manufacturers’ products, protect their goodwill, and advertise their product. Day by day, the products of some producers that were specifically marked started gaining popularity, i.e., goodwill.

However, some competitive producers started to deceive consumers by affixing popular marks or symbols of other manufacturers to get market. Such duplication started to cause popular products to lose goodwill and market share. Therefore, to avoid this chaos (i) to protect the public from confusion and deception, and (ii) to protect goodwill trade and manufacturers’ business, the Trade Mark Act was passed in 1999, replacing the earlier Act of 1958.

Presently, we find several trademarks which distinguish their products from other products and which are popular, e.g. Jio, Samsung, TATA, BATA, Patanjali, Sri Sri Tattva, BSNL, Lux, etc.

II. History of Trade Mark law in India-

The first legislation in India concerning trade mark protection was the Indian Merchandise Mark Act 1889. This Act was followed by the Trade Mark Act 1940. Trade and Merchandise Marks Act, 1958, followed the Act of 1940. This Act served for about four decades; however, it had become unable to protect present-day challenges. Moreover, it was also felt necessary to pass a new trademark Act to conform to international law on the mark. With the above objects, the Trade Mark Act was passed in 1999, which came into force in 2003.

III. Definition and meaning of Trade Mark-

A trademark is a visual representation allocated to goods to indicate their trade origin.

According to S. 2 (1) (zb) of the Act[5]–

A trade mark means-

i) a mark capable of being represented graphically and
ii) which is capable of distinguishing the goods or services of one person from those of others and

iii) may include the shape of goods, their packaging and a combination of colours.

From the above definition, we may lay down the following characteristics or features of Trademark.

i) Mark-

2 (1) (m) defines ‘mark’ to include ‘a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

‘Name’ includes any abbreviation of a name (S. 2 (1)(o). ‘Package’ includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork (S. 2(1)(q).

Thus, the definition of ‘mark’ is inclusive. It includes other things which may fall within the general and plain meaning of the definition. We may say a trade mark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements etc.

In Gorbatschow Vodka K.G v. John Distilleries Ltd[6]

The Bombay High Court observed that the shape of the goods, packing of the goods and combination of colours are now statutorily recognised as trademarks under the definition of trade mark.

The present Trade Mark Act. 1999 protects certain other forms of ‘marks’ which cover certain categories of trade, business, services, etc. Those marks are service marks, collective marks, certification trademarks, well-known trademarks, Domain names etc. [We will discuss them at appropriate places or the end of this topic].

ii) Capable of being represented graphically-

The mark should be capable of being represented graphically. Graphical representation means representing a trade mark for goods or services in paper form.

iii) Capable of distinguishing-

A trade mark is required to distinguish the goods or services of one person from those of others, e.g., the trade mark of Jio is different from BSNL.

iv) Goods and services-

A trade mark may be registered for goods and services. According to S. (1) (j), ‘Goods’ means “anything which is the subject of trade or manufacture”. According to S. 2 (1) (z) ‘Service’ means “service of any description which is made available to potential users and includes the provision of services in connection with the 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.”

The definition of service is not exhaustive but illustrative and inclusive[7]. [Discussed detail in notes].

III. Registration of trademark-

The subject of registration is discussed in two parts viz. (A) Conditions and grounds for registration, and (B) Procedure for registration. We will discuss them as follows.

(A) Conditions and Grounds for registration (Ss. 6 to 17)-

Conditions and grounds for registration can be discussed in the following points.

1. Registrar of trademark-

All trademarks accepted for registration are entered into a register maintained by the Registrar. The Controller General of Patents, Designs, and Trade Marks acts as Registrar of Trade Marks (S. 3).

It shall be lawful for the Registrar to keep the records wholly or partly in computer floppies, diskettes, or any other electronic form subject to such safeguards as may be prescribed.

2. Classification of goods (S. 7 and 8)-

The Registrar shall classify goods and services, as far as may be, following the International classification of goods and services to register trademarks. Any question arising as to the class within which any goods or services fall shall be determined by the Registrar, whose decision will be final[8].

The Registrar may publish an alphabetical index of goods and services classified in the prescribed manner. Where any goods or services are not specified in the index, the Register himself shall determine their classification.

A trademark is owned by one person only, but under special circumstances, it may be owned by two or more persons[9].

3. Relevant factors to be considered by Registrar-

Before granting registration, the Registrar shall examine the application, keeping in mind the following factors-

a) Absolute grounds for refusal of registration (S. 9)-

The absolute grounds for refusal are concerned with public policy. The object of absolute grounds for refusal of registration of the mark is to protect the legitimate interest of the traders and the public in using ordinary words and devices legitimately required by them about their goods. Following are the absolute grounds upon which the Registrar can refuse registration of the trade mark.

Mark devoid of any distinctive character-

The marks which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person, shall not be registered as trademarks.

In The Imperial Tobacco Co. of India Ltd v. The Registrar of Trade Marks[10]

The Calcutta High Court observed that ‘distinctiveness’ means ‘some quality in the trade mark which earmarks the goods so marked as distinct from those of other producers’ of such goods’.

Marks indicative of kinds, quality etc.-

Marks consisting exclusively of marks or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin, or the time of production of the goods or rendering of the service or other characteristics of the goods or services shall not be registered as a trade mark.

M/S Hindusthan Development Corporation. Ltd. v. The Deputy Register of Trade Marks[11]

The Calcutta High Court held that the word ‘Rasoi’ for the hydrogenated groundnut oil refer directly to the character of the goods which was used ordinarily for cooking purposes hence not registrable.

iii. Customary Marks-

Marks consisting exclusively of marks or indications that have become customary in the current language or in the bona fide and established practices of the trade shall not be registered.

In other words, words falling under the ‘public domain’ are prohibited from registration as trademarks. Thus, the mark ‘INDIA’ is refused for electric fans; similarly, geographical words like’ Liverpool and Yorkshire’ and common language words like ‘Janta’ and ‘Rasoi’ are denied registrations.

Deceiving or confusing marks-

If a mark is of such a nature as to deceive the public or cause confusion, it shall not be registered as a trademark. Thus, the application to register the trademark “TI-ECO,” BARAGAN, HITAISHI, was rejected on the grounds that it was deceptive and confusing with already registered and famous trademarks like “TELCO,” BARALGON, HITACHI, etc.

Mark hurting religious susceptibilities-

The marks which contain or comprise any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India shall not be registered.

Mark containing scandalous or obscene matter-

The marks which comprise or contain scandalous or obscene matter shall not be registered.

vii. Marks the use of which is prohibited-

The marks the use of which is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950, shall not be registered.

viii. Marks related to the following shapes-

In fact, all shape marks are registerable except those prohibited below. A mark shall not be registered as a trade mark if it consists exclusively of –

(a) the shape of goods which results from the nature of the goods themselves, or

(b) the shape of goods which is necessary to obtain technical results or

Thus, an ‘apple’ cannot be registered either for apples or for packaging in the shape of an apple.

However, if a trade mark before making an application has acquired a distinctive character due to its use or is a well-known trademark, the registration shall not be refused.

b. Relative grounds for refusal of registration (S. 11)-

Registration of trademarks may also be refused on some relative grounds. The grounds are relative in the sense that the Registrar can refuse registration of a trademark if there already exists a trade mark.

Likelihood of confusion with earlier trade mark-

The Registrar may refuse registration if there is a likelihood of confusion caused to the public, including the likelihood of association with an earlier trade mark (i) by virtue of its identity with the earlier trade mark and similarity of goods or services covered by the earlier trademark, or (ii) by virtue of its similarity to an earlier trade mark and identity or similarity of the goods or services caused by the earlier trade mark.

The term ‘identity’ means being the same in essential character as another trademark, whereas ‘similarity’ means being similar to another trademark.

In Amrutdhara Pharmacy v. Satya Deo Gupta[12]

The Supreme Court refused registration of “Lakshmandhara” for medical preparation as a trade mark since it could cause confusion in the minds of the public, being deceptively similar to an already registered trade mark “Amritdhara”.

To take unfair advantage of well-known trade mark-

The Registrar may refuse registration if the earlier trademark is a well-known trademark in India, and the later mark would take unfair advantage of the earlier mark or be detrimental to the distinctive character or repute of the earlier trademark. [for more detail, refer to the note at the end]

In Khoday India Ltd. v. The Scotch Whiskey Association[13]

Facts- The appellant, an Indian whiskey manufacture ring company, has been manufacturing whiskey under the trade mark “Peter Scot” since 1968. It got its trade mark registration in 1974. After almost 13 years, the Respondent, a well-known association, filed an application for the cancellation of the appellant’s trade mark on the ground that it is deceptively similar to the “Scotch Whiskey” of Scotland, of which they are producers and distributors. Their further contention was that the word “Scot” in the trade mark deceptively suggests that the whiskey is produced in Scotland.

Supreme Court ruled that it is not descriptively similar to lead consumers to believe that the production is from Scotland.

iii. Its use is liable to be Prevented-

The Registrar may refuse registration if the use of a trademark in India is liable to be prevented by virtue of any law of passing off protecting an unregistered trademark used in the course of trade or if its use in India is liable to be prevented by virtue of the law of copyright.

Registration based on consent (Proviso to S. 11)-

On the above three grounds, if the proprietor of the earlier trade mark or the proprietor of other earlier rights consents to the registration of the later trade mark, the Registrar may register the same.

4. Limitation as to colour (S. 10)-

A trademark may be registered either subject to limitation as to certain colours or any combination thereof or without limitation of colour. So far as a trademark is registered without limitation of colour, it shall be deemed to be registered for all colours.

In other words, the colour elements in the visual presentation of the trademark may be registered. If the registration does not mention the colours, the trademark is deemed to be registered for all colours.

5. Honest and Concurrent use (S. 12)-

The Registrar may permit the registration of identical or similar trademarks by more than one proprietor, irrespective of an earlier registration with respect to one of them, on the grounds of honest and concurrent use or other special circumstances. In other words, the section provides for the registration of identical or similar trademarks by more than one proprietor in the case of honest concurrent use or other special circumstances.

6. Names of chemical elements or international non-proprietary names not registrable (S. 13)-

No word-(a) which is the commonly used and accepted name of any single chemical element or any single chemical compound (as distinguished from a mixture) in respect of a chemical substance or preparation or

(b) which is declared by the World Health Organisation and notified in the prescribed manner by the Registrar from time to time as an international non-proprietary name or which is deceptively similar to such name,

-shall be registered as a trade mark.

7. Names and representations of living persons or persons who recently died. (S. 14)-

Where an application is made for the registration of a trade mark which falsely suggests a connection with any living person or a person whose death took place within twenty years before the date of application for registration of the trade mark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in writing of such living person or, as the case may be, of the legal representative of the deceased person to the connection appearing on the trade mark, and may refuse to proceed with the application unless the applicant furnishes the Registrar with such consent.

The provision is made to avoid misuse of living or dead famous persons.

8. Registration of parts of a trade mark (S. 15 (1) and (2) and S. 17)-

Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trade marks.

Each such separate trademark shall satisfy all the conditions applying to it and have all the incidents of an independent trademark.

When a trade mark consists of several matters, its registration shall confer the proprietor exclusive right to use the trade mark taken as a whole (S. 17 (1).

9. Registration of trade mark as a series (S. 15 (3)-

Where a person claiming to be the proprietor of several trade marks in respect of the same or similar goods or services or description of goods or description of services, which, while resembling each other in the material particulars thereof, yet differ in respect of— (a) statement of the goods or services in relation to which they are respectively used or proposed to be used; or (b) statement of number, price, quality or names of places; or (c) other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or (d) colour, seeks to register those trade marks, they may be registered as a series in one registration.

In other words, we may say that a series of trade marks basically means several trademarks that resemble each other in their material particulars and differ only in matters of a non-distinctive character, not substantially affecting the trade mark’s identity in the consumer’s eyes. Thus, in a series, there are very minute distinctions that the customer usually does not understand.

10. Registration of trade mark as ‘associated trade mark’ (S. 16)-

2 (c) defines “associated trade marks” as trademarks deemed to be, or required to be, registered as associated trademarks under this Act. According to S. 2 (3)” Goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in and the same business might provide those services and so with description of goods and description of services”.

Where a trade mark which is registered, or is the subject of an application for registration, in respect of any goods or services is identical with another trade mark which is registered, or is the subject of an application for registration, in the name of the same proprietor in respect of the same goods or description of goods or same services or description of services or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may, at any time, require that the trademarks shall be entered on the register as associated trade marks (S. 16 (1).

Where there is an identity or near resemblance of marks that are registered or are the subject of applications for registration in the name of the same proprietor, in respect of goods and services which are associated with those goods or services, or goods or services of that description, the trademarks shall be entered on the register associated trademarks (S. 16 (2).

Where a trade mark and any part thereof are registered as separate trade marks in the name of the same proprietor in accordance with the provisions of sub-section (1) of section 15, they shall be deemed to be and shall be registered as associated trademarks.

All trademarks registered in accordance with the provisions of sub-section (3) of section 15 as a series in one registration shall be deemed to be and shall be registered as associated trademarks.

Difference between “Associated trade marks” and Regular trade mark-

In fact, both these trademarks allow a business owner to attach a particular mark or design to his products and services. An associated trade mark allows a business to brand new products and services with its primary mark or use derivative forms of its primary trademark. It also allows a business to register a mark similar to one belonging to another business. Thus, a distiller named Anderson can register a trade mark for “Anderson wines”. He can also register associated trademarks for “Anderson Beer” and “Anderson Whiskey”.

B. Procedure for registration (S. 18 to 26)-

The procedure for registration is discussed in the following points-

1. Application for registration (S. 18)-

a) Who may apply– Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.
b) Single application– A single application may be made to register a trade mark for different classes of goods and services, and the fee payable shall be in respect of each such class of goods or services.
c) Place of application- Every application shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or, in the case of joint applicants, the principal place of business in India of the applicant whose name is first mentioned in the application as having a place of business in India, is situated: Provided that where the applicant or any of the joint applicants does not carry on business in India, the application shall be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application, is situate.
d) Acceptance or refusal of application- Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.

However, in the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.

e) Withdrawal of the acceptance of application (S. 19)- If the Registrar, after acceptance of application but before registration, finds that the application was erroneously accepted, may withdraw the acceptance.
f) Correction and amendment (S. 22)- The Registrar may, on such terms as he thinks, at any time, whether before or after acceptance of an application for registration, permit the correction of any error in the application or permit an amendment of the application

2. Advertisement of application (S. 20)-

When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall cause the application to be advertised as accepted together with the conditions or limitations, if any, subject to which it has been accepted.

The Registrar may cause the application to be advertised before acceptance if the trade mark is devoid of any distinctive character or consists of only marks or indications or consists of marks or indications which became customary in the current language or trade practice. Moreover, suppose the trademark is deceptively similar or identical to another trademark, which may lead to confusion on the part of the public, etc. In that case, the Registrar may also cause the application to be advertised before acceptance.

3. Opposition of application (S. 21)-

Any person may, within four months from the date of the advertisement or re-advertisement of an application for registration, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed to the Registrar of opposition to the registration.

The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so, he shall be deemed to have abandoned his application. However, if the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the person giving notice of opposition.

Any evidence upon which the opponent and the applicant may rely shall be submitted to the Registrar in the prescribed manner and within the prescribed time, and the Registrar shall give them an opportunity to be heard if they so desire.

The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be permitted and may take into account a ground of objection whether relied upon by the opponent or not.

4. Registration (S. 23)-

When an application for registration of a trade mark has been accepted and either—

(a) the application has not been opposed and the time for notice of opposition has expired; or

(b) the application has been opposed, and the opposition has been decided in favour of the applicant, the Registrar shall, unless the Central Government otherwise directs, register the said trade mark within eighteen months of the filing of the application and the trade mark when registered shall be registered as of the date of the making of the said application. The date of application is to be deemed to be the date of registration.

On the registration of a trade mark, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry.

Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.

The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake.

5. Jointly owned trade marks (S. 24)—

The Act does not authorise the registration of two or more persons as joint proprietors who use a trade mark independently or propose so to use it. However, where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except— (a) on behalf of both or all of them; or (b) in relation to an article or service with which both or all of them are connected in the course of trade, those persons may be registered as joint proprietors of the trade mark. The Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested in a single person.

6. Duration, renewal, removal and restoration of registration (S. 25)—

a. Duration and renewal of registration-

The registration of a trade mark shall be for a period of ten years but may be renewed by payment of the prescribed fee for a further period of ten years.

Notice for renewal– At the prescribed time before the expiration of the last registration of a trade mark, the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained.
Removal of Trade mark from the register-

The Registrar may renew the registration on the proprietor’s application according to the Act’s provisions. However,(i) if at the expiration of the time prescribed on that behalf, those conditions have not been duly complied with, the Registrar may remove the trade mark from the register, Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the applicant pays the prescribed fee and surcharge within six months from the expiration of the last registration of the trade mark, the Registrar shall renew the registration of the trade mark for the further period of ten years

Restoration of removed trade mark –

Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration of the last registration.

Effect of removal from register for failure to pay a fee for renewal (S. 26).—

Where a trade mark has been removed from the register for failure to pay the fee for renewal, it shall nevertheless, for the purpose of any application for the registration of another trade mark during one year, next after the date of the removal, be deemed to be a trade mark already on the register, unless the tribunal is satisfied either— (a) that there has been no bona fide trade use of the trade mark which has been removed during the two years immediately preceding its removal; or (b) that no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.

In other words, we may say that even though the mark is removed from the register, it continues for the purpose of non-granting the same to new applicants except in some circumstances mentioned above.

IV. Rights of trade mark holder-

Registration confers some rights upon the proprietor of the mark. Even unregistered trademark holders have some rights.

A. Rights of registered trade mark holders (S. 28)-

We will discuss the rights of registered trade mark holders as follows-

1. Right to Exclusive Use (S. 28 (1))-

Registration of a trade mark gives the registered proprietor of the trademark the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered.

2. Right to Seek Statutory Remedy against an Infringement (S. 28 (1))-

The registered proprietor of a trademark can seek legal remedy in case of an infringement of his trademark in the manner provided by this Act. He may obtain an injunction, and at his option, he can either claim damages or an account of profits by instituting a suit against the alleged infringer.

3. Right of Registered Trademark holder of Identical Trademark- (S. 28 (3))-

Where two or more persons are registered proprietors of trademarks which are identical with or nearly resembling each other, the exclusive right to use of any of those trademarks shall not[14] be deemed to have been acquired by any of those persons as against any other of those persons merely by registration of trademarks. However, each of those persons has otherwise the same rights against other persons, excluding registered users using by way of permitted use, as he would have if he were the sole registered proprietor.

4. Right to Assign (S. 37)-

The registered proprietor of a trademark shall have the power to assign the trademark and to give effectual receipts for any consideration for such assignment. However, this right shall be subject to the provisions of the Act and to any rights appearing from the register to be vested in any other person.

5. Right to Seek Correction of Register-

The registered proprietor of a trademark has a right to make an application to the registrar seeking correction of the register regarding the errors pertaining to the particulars of the registered proprietor and other aspects relating to the registered trademark.

6. Right to Alter Registered Trademark–

The registered proprietor of a trademark must make an application to the Registrar seeking leave to add to or after the trademark in any manner not substantially affecting the identity thereof. The Registrar may refuse the leave or grant it on such terms and may be subject to such limitations as he may think fit.

B. Rights of Unregistered Trademark Holder-

Unregistered trade mark holders also enjoy some rights. The proprietor of an unregistered trademark can prevent any third party from using an identical or deceptively similar trademark, provided such an unauthorised use by the rival results in passing-off. For this purpose, he can initiate the proceedings under civil law. Apart from an injunction, the claimant may, at his option, obtain either damages or an account of profits. The claimant should, therefore, establish that he has acquired goodwill in his trademark, the act of the defendant amounts to misrepresentation, and the claimant has suffered or is likely to suffer damage due to the defendant’s act.

C. Limitation on Rights-

The rights mentioned above are subject to the conditions and limitations which may be expressly laid down in the Act. They are explained as follows-

1. Limitations on use at the time of registration (S. 28 (2))-

The exclusive right to use a trade mark is subject to limitations imposed during registration. Any use beyond those limitations is not protected by registration, and an action for infringement shall not lie against such use by others.

In Perry and Co. Ltd. v. Perry and Co.[15]

The Madras High Court has held that if a trade mark is granted for a particular product, like a biscuit, the proprietor cannot use it for his other product, such as confectionary (i.e. sweet).

2. Already registered proprietor-

The registration of trade mark would not act against the persons who are already registered proprietors of identical or similar marks.

3. Bona fide use of Owen’s own name-

The registered proprietor cannot interfere with any bona fide use by a person of his own name or that of his place of business or the use of any bona fide description of the character or quality of goods.

V. Infringement of registered trade mark (S. 29)-

In fact, any unauthorised use of the exclusive statutory rights of a registered trademark constitutes infringement. Following are the various acts which constitute infringement of trade mark.

a) Acts which constitute infringement of trade mark-

1. Use of identical or deceptively similar trade mark-

A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

In Prem Nath Mayer v. Registrar of Trade Marks[16]

Facts- In this case, the appellant was a registered proprietor of the “Lion Brand” trade mark. The trade mark contained the picture of a lion for chaff-cutter blades and knives. The respondent registered a trademark, “Ma Durga Brand”. This brand also had a picture of a lion, similar to the appellant’s brand for the chaff-cutter blades product. Both the marks were looking alike.

Calcutta High Court observed that “it is for the court to decide upon looking at the two marks, whether the respondent’s trade mark is likely to deceive a purchaser of average intelligence”.

In this case, the respondent’s trademark was found to be deceptive.

2. Use of confusing trade mark-

A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which, because of— (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

3. Use to take unfair advantage of reputed trade mark-

A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade a mark which— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India, and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

4. Use of trade mark as trade name-

A person infringes a registered trade mark if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name of his business concern dealing in goods or services in respect of which the trade mark is registered.

5. Use of trade mark on packing paper etc.-

A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as business papers, or for advertising goods or services, provided such person when he applied the mark, knew or had reason to that the proprietor or a licensee did not duly authorise the application of the mark.

6. Use of trade mark in advertisement-

A registered trade mark is infringed by any advertising of that trade mark if such advertising— (a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters, (b) is detrimental to its distinctive character, or (c) is against the reputation of the trade mark.

In Compaq v. Dell[17]

Facts- “Dell” Company advertised that their computers function similarly to “Compaq” computers and still are cheaper.

The court found the advertisement infringement of Compaq’s trademark.

7. Spoken use of trade mark-

Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation.

b. Acts which do not constitute infringement (S. 30)-

The Act protects the honest use of trade mark. Therefore, it provides that the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor is allowed, provided the use (i) is in accordance with honest practices in industrial or commercial matters, and (ii) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark[18].

Therefore, it lays down certain acts which do not constitute an infringement of the mark. These acts are limitations upon or defences against infringement under S. 29. We will discuss them as follows-

1. Use of mark to indicate the kind, quality, quantity, etc.-

A registered trade mark is not infringed if its use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or the rendering of services or other characteristics of goods or services.

2. Use of trade mark outside the scope and limits of registration-

A registered trade mark is not infringed; where a trade mark is registered subject to any conditions or limitations, the use of the trade mark in a manner outside the scope of registration and limits of the registration office does not constitute infringement by the other.

RICH Products Corporation v. Indo Nippon Foods Ltd[19].

Facts- the proprietor of “RICH’S WHIP TOPPING” filed a case of infringement and injunction against the user of “BELLS WHIP TOPPING” as a deceptively similar use of words. The trade mark was registered in the U.S. and New Zealand with the exclusion of the words “Whip” and “Topping” which indicate the product’s name and quality.

Delhi High Court observed that the ‘Whip Topping” indicates the sort of name of goods it usually understood and sold and the services it rendered. Therefore, the use of words outside the scope of registration does not amount to infringement by the respondent.

Similarly, there is no infringement if it takes place in the county or places out of India or the area where the registration does not extend.

3. Implied consent of use-

A registered trade mark is not infringed where a person uses the mark in relation to goods and services for which the registered user had applied for the trade mark and may not have removed it or consented to its use.

4. Use in relation to accessories and parts-

Where a trade mark registered for any goods and services in relation to parts and accessories is used for other goods and services. Such a usage is reasonably unnecessary, and the effect of such a usage may not be considered a deceit of the original.

5. User of identical trademarks-

The use of a trademark is one of two or more registered trademarks that are identical or nearly resemble each other in the exercise of the right to use that trademark given by registration.

VI. Remedies for infringement of trade mark-

There is a remedy for the protection of unregistered trademarks, known as passing-off [discussed in the note]. In this paper, we will discuss remedies for infringement of registered trademarks. The following remedies are available against infringement of a registered trademark:

A) Civil Remedies (S. 134 and 135)-

1. Jurisdiction-

A suit relating to trademark infringement is to be instituted in the District Court having jurisdiction to try the Suit (S.134). The suit is to be instituted before the District Court where the plaintiff actually or voluntarily resides, carries on his business, or personally works for gain.

2. Nature of remedy-

In any suit for infringement or passing-off, the court may grant relief, including injunction and, at the option of the plaintiff, either damages or an account of profits together with or without order to deliver the infringing labels and marks for destruction or erasure. The following civil remedies are available to the holder of the trademark against infringement:

i. Injunction[20]–

‘Halsboury’ defines an injunction as a judicial process whereby a party is ordered-

(a) to refrain from doing or,

(b) to do (a particular act or thing).

It is thus the order of the Court whereby it restrains-

(a) the commission or

(b) continuance of some wrongful omission.

In the former case, the injunction is called a prohibitory or restrictive injunction; in the latter, it is mandatory. The former, i.e. prohibitory injunction, is more common than the latter, i.e. mandatory.

Specific relief afforded by the means of injunction is called Preventive relief. It is based on the maxim “prevention is better than cure”. An injunction is a form of specific relief which the Court grants when pecuniary compensation is inadequate or futile.

The object of granting an injunction is to restrain the commission of an act to prevent future or threatened injuries.

This preventive relief is granted at the discretion of the Court by injunction, temporary or perpetual, per the provisions of the Civil Procedure Code. Injunctions are of the following types-

(a). Temporary or interim injunction-

A temporary injunction is an order of restrain which continues until a further specified time or until a further order of the Court. A temporary injunction may be granted at any stage of a suit to prevent further trade mark infringement.

(b). Permanent Injunction-

A permanent injunction can only be granted by the decree made at the hearing and upon merits of the suit, and thereby, the defendant in the suit is perpetually injuncted from the assertion of a right or from the commission of an act, which would be contrary to the rights of the plaintiff, i.e. infringement of his trade mark. In other words, it is to be granted by the court in judgment. Permeant injunction is governed by S. 54 of the Specific Relief Act.

In Intel Corporation v. Dinakaran Nair[21]

Facts—The Plaintiff, a well-known Intel company, uses the trademark ‘INTEL’. The defendant started using’ ARTINTEL’ as its trademark.

Delhi High Court observed that the defendant’s deceptive practice is to show that its products are from well-known Intel.

Ex-parte injunction or Interlocutory order (S. 135 (2))[22]–

The order for an injunction may include an ex-parte injunction or any interlocutory order for any of the following matters, viz.

a) For discovery of documents;
b) Preserving of infringing goods, documents or other evidence which are related to the subject matter of the suit,
c) Restraining the defendant from disposing of or dealing with his assets in a manner that adversely affects the plaintiff’s ability to recover damages, costs, or other pecuniary remedies that may finally be awarded to the plaintiff.

Thus, the Act has incorporated the English Anton Pillor Order[23] and Mareva Injunction concepts.

As we all know, delay defects justice. Therefore, delay latches, acquiescence and suppression of facts by the plaintiff defeats his right of injunction.

ii. Suit for Damages and for profits[24]–

The Court may grant in any suit of infringement or for passing off, at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery –up of the infringement labels and marks for destruction or erasure. Thus, it shows that the action for an account of profit is alternative to the action for damages.

The court granted damages after thoroughly considering the evidence regarding the actual loss caused to the Plaintiff. The court also awards pay if the defendant earns any profit by infringement of the plaintiff’s trademark. The rule of damages and for account of profit plays an important role against infringement of trademarks.

B) Criminal Remedies (S. 102 to 120)-

The Trade Mark Act, provides punishment for various offences which may be committed by the persons regarding falsification of trade mark.

The criminal procedure can be initiated in addition to a civil suit. The nature of offences and punishment provided to them is listed as follows-

Sr.No.	Nature of Offence	Punishment
1.	Falsifying and falsely applying Trade mark (S. 102)	Imprisonment not less than six months but may extend up to three years. And fine not less than fifty thousand rupees but may extend to two lakh rupees (S. 103)
2.	Selling goods or providing services to which false trade mark or false trade description is applied (S. 104)	Imprisonment is not less than six months but may extend up to three years. And the fine is not less than fifty thousand rupees but may extend to two lakh rupees.
3.	Removing piece goods, etc., contrary to S. 81 (i.e. Stamping of pieces of goods, cotton yarn and threads) (S. 106).	Forfeiture of goods and fine up to Rs. 1000.
4.	Penalty for falsely representing a trade mark as registered (S. 107)	Imprisonment up to three years or a fine or both
5.	Improperly describing a place of business as connected with the Trade Marks Office. (S. 108)	Imprisonment up to two years or a fine or both
6.	Falsification of entries in the Register (S. 109)	Imprisonment up to two years or a fine or both

However, if the offences of falsification of trade mark or its sale are repeated, the offender would get a minimum of one year of imprisonment instead of six months, and he has to pay a minimum fine of Rs. 1 lac. Moreover, when the person is convicted or acquitted for the offences under S. 103 and 104, the Government may direct forfeiture of goods.

114 lays down punishments for vicarious liability. It provides that in case of offence by the companies, the company, as well as every person in charge of and responsible to the company for the conduct of its business at the time of the commission of the offence, shall be liable to proceed and be punished accordingly.

C) Administrative remedies-

Apart from the above remedies, the Act also confers certain powers upon Administrative authorities, specifically the Registrar, against infringement or to avoid it, as follows-

Classification of goods and services for the purposes of registration (S. 7).
Publication of alphabetical index for classification of goods/services (S.8).
Granting of or refusing to register a trade mark (S. 9 to S. 16).
Correcting and amending the register. (S. 22 and Chapter VII).
Renewal, removal and restoration of registration (S. 25).
Assignability and transmissibility of registered trademarks (S. 38).
Restriction of assignments and transmission (S. 45).

VII. Authorities under trade mark Act-

Introduction-

The Trade Mark Act is implemented through two important functionaries’ viz. Registrar and Intellectual Property Appellate Board. We will discuss them as follows-

1. Registrar-

Central Government appoints the Controller General of Patients, Drugs and Trade Marks acts as a Registrar of a trade mark (S. 3). The Central Government may appoint such other officers with such designations as it thinks fit for the purpose of discharging, under the Superintendence and directions of the Registrar such functions of the Registrar.

a. Powers of Registrar-

The registrar performs the following powers and functions-

Full powers of Civil Court-

The registrar of a trade mark shall have all the powers of civil court for the purpose of receiving evidence, administering oaths, enforcing the attendance of witnesses, compelling the discovery and production of documents and issuing commission for the examination of witnesses.

Orders as to costs-

The registrar may make such orders as to costs as he considers reasonable, and any such order shall be executable as a decree of a civil court.

iii. Review his own decisions-

The Registrar may review his own decision.

b. Functions of Registrar of trade mark-

Registrar performs the following functions under the Act, viz.

Classification of goods and services for the purpose (S. 7).
Granting or refusing to register a trade mark (Ss. 8 to 16).

iii. Maintaining, correcting, and amending the registers (S. 22).

2. Appellate Board-

a. Establishment (S. 83)-

The Appellate Board consists of a Chairman, Vice-Chairman and such number of other members as the Central Government may deem fit. The jurisdiction, powers and authority of the Appellate Board may be exercised by Benches thereof.

The Intellectual Property Appellate Board Benches shall sit at Ahmedabad, Chennai, Delhi, Mumbai and Kolkata. A Bench consists of one Judicial Member and one Technical Member (S. 84).

b. Functions of the Chairman (S. 84)-

The chairman of the Board performs the following functions-

To discharge his functions as a Judicial Member or the Technical Member, as the case may be, of any Bench.
To transfer a Member from one Bench to another Bench.

iii. To authorise members appointed to one bench to discharge the functions of the members of another bench.

To hear the point on which the Members of a Bench differed or to refer the case for hearing by one or more other Members;
To decide the question of whether any matter falls within the purview of business allocated to a Bench. The decision of the Chairman shall be final.

The term of office of a Chairman or Member is five years unless he retires at the age of 65 years.

Powers of the Appellate Board-

The Appellate Board has the same powers as those vested in a Civil Court under the Code of Civil Procedure, 1908 while trying a suit with respect to the following matters:

a) Receiving evidence,
b) Issuing commissions for the examination of witnesses,
c) Requisitioning any public record; and
d) Any other matter which may be prescribed.

However, the Appellate Board is not bound by the procedure laid down in the Code of Civil Procedure but by the principles of natural justice laid down under the Trade Mark Act. The Board has powers to regulate its own procedure, including fixing the places and times of this hearing.

***

NOTES

1). Marks are protected under the Trade Mark Act.-

Present Trade Mark Act, which, in the definition of trademark, covers ‘marks’. This means that the definition of a trademark is inclusive. The Act protects all these marks as trademarks. These marks cover certain categories of trade, business or services. We will discuss them as follows-

(a). Service Mark[25]–

Trade in goods and services has occupied great importance at national and international levels. Like goods, services are also represented in some visual forms. A service mark identifies and distinguishes the source of a service. We may take some examples of services such as banking, communication, education, financing, insurance, boarding, loading, entertainment, transportation, tourism, etc.

Thus, the ‘service mark’ and ‘trade mark’ given to goods or services carry some functions. They are protected under the present Trade Mark Act. 1999.

(b). Collective Mark[26]–

As per S. 2 (g), ‘Collective Mark’ means a trademark distinguishing the goods or services of members of an association of persons (not being a partnership firm), which is the proprietor of the mark from those of others. Thus, we may say that the trade mark belongs to an individual, whereas the collective mark belongs to an association of a person other than a partnership.

In other words, the mark is not owned by any individual member but by the association of people. It is a mark owned by an organisation (association), used by its members to identify themselves with a level of quality or accuracy, geographical origin or other characteristics set by the organisation. Examples of collective marks include “CA” (used by the Institute of Chartered Accountants), “CPA” (used by members of the Society of Certified Public Accountants), “TATA”, Reliance, etc. (includes for all products under the organisation).

A separate application to register a ‘Collective Mark” may be made. Such application should be accompanied by regulations related to the use of collective marks.

However, the Collective mark shall not be registered if it is likely to deceive or cause confusion in public or prospective consumers. Moreover, it may be removed from the register in a manner and in situations like any other trademark.

(c). Certification trade mark-

Certification trade mark means a mark capable of distinguishing the goods or services in connection with which it is used in the curse of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics of goods or services not so certified and registerable under the Act (Ss. 69 to 78).

In other words, a certification trade mark guarantees that a product or service possesses certain characteristics, such as its origin, material, mode of manufacturing, performance, quality or accuracy. The standards associated with a certification mark are set solely by the owner of the mark and are not regulated by the government. The owner of the mark may not deny the use of the mark by anyone who maintains the characteristics governed by the certification mark. Certification trade marks include “Agmark for agriculture products, “”Hallmark” for Jewelry, etc.

There is a likeliness of confusion between ‘Collective Mark” and “Certification Mark”. Collective marks resemble “Certification mark” whenever membership in a collective trade mark requires adherence to a particular standard, e.g. a collective mark which limits its association to members located in a specific geographical region overlaps with a certification mark that grantees that a product is produced in that same region.

The right to use ‘Certification Trade Mark” is subject to the same exception to which the right of a registered proprietor of a mark is.

In conclusion, we may say that the purpose of a certification trade mark is to show that the goods on which the mark is used have been certified by some competent person regarding certain characteristics of the goods such as origin, made of manufacture, its quality, etc.

(d). Well known trade mark-

2 (zg) defines a “Well-known” trade mark as “a mark which has become so to the substantial segment of the public which uses such goods or services 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”.

For example, the trademarks Reliance, Bata, TATA, Jio, Patanjali, Pale-G, etc.

In Enfield India Ltd v. Deepak Engineering[27]

Facts– the applicant applied for registration with the trademark “Bullet” for a diesel oil engine. Respondent, a well-known Enfield India Ltd., i.e. the proprietor of the mark “BULLET” has opposed the registration on the ground that it is a well-known and reputed brand in the field and the applicant, in order to get a disadvantage, has applied for such registration.

The Intellectual Property Appellate Board held that a person cannot be permitted to take advantage of a well-known mark like BULLET.

A trademark that is identical to or similar to an earlier trademark is not allowed to be registered to avoid misuse of well-known trademarks. A well-known trademark in one class of goods will not be allowed to be used by others in different classes of goods or services[28].

(e). Internet Domain Name-

Nowadays, the internet and computers have brought a revolution in the business field. “E-commerce” has become a popular term for commercial activities. These commercial activities are carried out with a specific name, which is called a domain name. A domain name functions as a trade mark. It is more or less like a telephone number that enables the consumer or any party doing the business transaction to locate the other party on the internet. Therefore, the two domain names should not be the same.

In fact, the internet allows numeric addresses to each and every computer or server connected with it. It is called an IP (Internet Protocol) address. The address is very difficult to remember; therefore, the concept of domain name emerged.

An enterprise, by registering its domain name, acquires a unique identity on the Internet. It serves the same purpose as a trademark in the world of electronic commerce in the goods and service trade.

In fact, the domain names are not numbers but several names (or acronyms[29] thereof) combined together through simple dots.

Taking into consideration its importance, the domain name is protected under the present Trade Mark Act.

***

2) Passing Off-

The Trade Mark Act 1999 protects not only registered trademarks but also non-registered trademarks. Passing Off is the common law remedy available against infringement of both registered and unregistered trademarks. However, a more stringent remedy for registered trademarks is available for infringement under the Trade Mark Act. 1999. Therefore, registered trademark holders usually do not adopt the remedy of passing.

(a) Meaning of Passing- Off (S. 27 (2))-

Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person or the remedies in respect thereof.

This common law remedy is available to trademark holders, even before trademark protection acts were passed. The same Common Law remedy is carried forward by S. 27 (2) to protect even unregistered trade mark holders. In fact, this remedy is also available to registered trade mark holders; however, the provisions under the Trade Mark Act are more stringent than the common law remedy of passing off.

(b) Essential features of Passing-Off Action-

The basis of passing-off action is misrepresentation. It is an action against any person who passes off their goods or services as of another person’s. The object of this remedy is to protect the goodwill and reputation of a business (even though not registered) from encroachment by others.

In an action for passing off, the plaintiff has to prove-

i. Misrepresentation by the defendant.

That there is a misrepresentation made by the defendant in the course of trade to prospective customers or ultimate customers of goods or services supplied by the plaintiff.

ii. Injury to the plaintiff’s business-

It is further to be proved that the misrepresentation made by the defendant was clouted to inure his business or goodwill and

iii. Damage to plaintiff-

Due to misrepresentations by the defendant, Plaintiff has suffered damage to his business or goodwill.

These points are also laid down in the English case Erven Warnink v. Townend[30].

In Laxmikant Patel v. Chetan Bhat[31]

Facts- the Plaintiff was running the studio with the name “MUKTIVAN COLOUR”. The defendant was running the studio with the name “Gokul Studio”, later changing it to “MUKTI JIVAN COLOOR LABS STUDIO”, with the ulterior intention of passing off his services with the plaintiff’s name.

The Supreme Court held that there is a likelihood of injury which could be caused to the plaintiff.

(c). Modes adopted for passing off-

Persons (Defendant) may infringe the right of the non-registered trade mark holder or pass off his goods or services by any of the following means-

Direct false representation.
Adoption of the same or colourable imitation of the rightful holder’s trade mark.
Adopt essential parts of the rightful holders’ trademark’s name.
Copying the get-up or colourable scheme of the label used by the trader.
Intimation of the design or shape of the goods etc.

(d). Nature of Passing-Off Relief (S. 135)-

The relief for passing off includes injunction and, at the plaintiff’s option, either damages or an account of profits together with or without any order to deliver the infringing labels and marks for the destruction or erase.

In other words, the remedy for passing off is the same as that of infringement or registered trade mark.

*****

[1] व्यापार चिन्ह

[2] न्यायालयाचा तात्पुरत्या स्वरूपाचा मनाई हुकूम, जो पुढील अज्ञेपर्यत, तारखेपर्यत अथवा केसचे निकालापर्यत असतो..-

[3] सेवाचिन्ह / सेवेची खुन

[4] एकत्रितत्रित चिन्ह

[5] For the sake of brevity the Trade Mark Act, 1999 is called as “the Act”.

[6] AIR 2012 (NOC) 53 (Bom)

[7] सदर सेवांची व्याख्या हि पुर्ण नसुन उदाहरणे देनारी आहे, त्यामध्ये नमुद नसलेल्या सेवायंचा सुध्दा समावेष केला जाउ शकतो.

[8] S. 7

[9] S. 24

[10] AIR 1977 Cal. 413.

[11] AIR 1955 Cal. 519

[12] AIR 1963 SC 449

[13] AIR 2008 SC 2737

[14] (except so far as their respective rights are subject to conditions or limitations entered on the register)

[15] AIR 1963 Mad 46 held by Division Bench Presided by S. R. Iyer and Ramkakrishnan

[16] AIR 1972 Cal

[17] (1992) FSR 93

[18] S. 30 (1)

[19] Decided by the Delhi High Court on 19 Feb 2010

[20] न्यायालयाचा मनाई हुकूम

[21] 2006 (33) PTC 345 (Del)

[22] न्यायालयाचा तात्पुरत्या स्वरूपाचा मनाई हुकूम, जो पुढील अज्ञेपर्यत, तारखेपर्यत अथवा केसचे निकालापर्यत असतो.

[23] Search and Seizure order ( शोध आणि जप्ती अज्ञा (Anton Pillor Order)-

Anton Piller Order is an order of a court which gives right to the Plaintiff to search and seize evidence, without giving prior warning to the Defendant.

The action is known on the name of the case, Anton Piller K.G v. Manufacturing Process [(1976)1 All E R 779] decided by the Court of Appeal in England. In this case, Plaintiff filed affidavit that the Defendant was selling confidential design information to other companies.

Court ordered to search the defendant’s premise and seize documents belonging to the plaintiff.

[24] नुकसान भरपाई व नफयाच्या नुकसानी बद्दल दावा

[25] सेवाचिन्ह / सेवेची खून

[26] एकत्रित चिन्ह

[27] (2006) 32 PTC 397

[28] Sony Kabushiki Kaisha v. Mahalaxmi Textile Mills 2009 (41) PTC 184 (Cal), wherein, “SONY’ a well-known trade mark in electronic goods was sought to be applied by the defendant in textile products.

[29] शब्दांची अध्याक्षरे

[30] (1980) RPC 31

[31] 2002 (3) SCC 65.