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JAMIA MILLIA ISLAMIA

PASSING-OFF AND INFRINGEMENT OF TRADEMARK IN INDIA SUBMITTED TO DR. S. Z. AMANI

SAHIL CHOWDHURY 5TH YEAR

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ACKNOWLEDGEMENT

Firstly, I would like to express my profound sense of gratitude towards the Almighty

―ALLAH‖ for providing me with the authentic circumstances which were mandatory for the

completion of my research work.

I am also thankful to Dr. S. Z. AMANI, for her invaluable support, encouragement,

supervision and useful suggestions throughout this research work. Her moral support and

continuous guidance enabled me to complete my work successfully. Her intellectual thrust

and blessings motivated me to work rigorously on this study. In fact this study could not have

seen the light of the day if her contribution had not been available. It would be no

exaggeration to say that it is her unflinching faith and unquestioning support that has

provided the sustenance necessary to see it through to its present shape.

Sahil Chowdhury

B.A.LL.B (Hons) 9th

Semester

5th

Year

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TABLE OF CONTENTS

1. Introduction To Intellectual Property

2. What Is Intellectual Property?

3. Nature Of Intellectual Property Rights

4. What Are Intellectual Property Rights?

5. Why Promote And Protect Intellectual Property?

6. Literature Review

7. Procedure Of Registration Of Trademark In India

8. Trademarks Law In India

9. Introduction

10. Importance Of Trademark

11. Passing Off

12. Elements To Be Proved For Passing Off Action

13. Characteristics Of Passing Off Action

14. Issue In A Passing Off Action

15. Factors To Be Considered In Case Of An Action For Passing Off

16. Defences To A Passing Off Action

17. New Facet Of Passing-Off Action

18. A Case Analysis On Passing-Off

19. Infringement Of A Trade Mark

20. What Constitutes Infringement?

21. Infringement- Various Factors

22. Following Are The Instances Where The Acts Constituted Infringement Of

Trademark

23. Who Can Sue For Infringement?

24. Who Can Be Sued?

25. Jurisdiction

26. Period Of Limitation

27. Issues In Infringement Suits

28. Evidence In Infringement Actions

29. Acts Not Constituting Infringement (Section 30)

30. Case Analysis On Infringement

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31. What The Plaint Should Contain?

32. Reliefs In Suit For Passing-Off And Infringement

33. Difference Between Passing-Off And Infringement

34. Conclusion

35. Bibliography

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INTRODUCTION TO INTELLECTUAL PROPERTY

Over the past two decades, intellectual property rights have grown to a stature from where it

plays a major role in the development of global economy. In the 1990s, many countries

unilaterally strengthened their laws and regulations in this area, and many others were poised

to do likewise. At the multilateral level, the successful conclusion of the Agreement on

Trade-Related Aspects of Intellectual Property Rights (TRIPS) in the World Trade

Organization enhanced the protection and enforcement of IPRs to the level of solemn

international commitment.

The new global IPR system comes with both benefits and costs. The domain of

intellectual property is vast. Copyrights, Patents Trademarks and Designs are known to have

received recognition for a long time. Newer forms of the protection are also emerging

particularly stimulated by the exciting developments in scientific and technological activities.

Intellectual property refers to the creations of the human mind like inventions, literary and

artistic works, and symbols, names, images and designs used in commerce. Intellectual

property is divided into two categories: Industrial property, which includes inventions

(patents), trademarks, industrial designs, and geographic indications of source; and

Copyright, which includes literary and artistic works such as novels, poems and plays, films,

musical works, artistic works such as drawings, paintings, photographs and sculptures, and

architectural designs. Rights related to copyright include those of performing artists in their

performances, producers of phonograms in their recordings, and those of broadcasters in their

radio and television programs. Intellectual property rights protect the interests of creators by

giving them property rights over their creations.

The most noticeable difference between intellectual property and other forms of

property, however, is that intellectual property is intangible, that is, it cannot be defined or

identified by its own physical parameters. It must be expressed in some discernible way to be

protectable. Generally, it encompasses four separate and distinct types of intangible property

namely- patents, trademarks, copyrights, and trade secrets, which collectively are referred to

as “intellectual property.”

However, the scope and definition of intellectual property is constantly evolving with the

inclusion of newer forms under the gambit of intellectual property. In recent times,

geographical indications, protection of plant varieties, protection for semi-conductors and

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integrated circuits, and undisclosed information have been brought under the umbrella of

intellectual property.

Intellectual Property refers to creation of mind i.e. inventions, industrial designs for article,

literary & artistic work, symbols etc. used in commerce. Intellectual property rights as a

collective term includes the following independent IP rights which can be collectively used

for protecting different aspects of an inventive work for multiple protection:-

Patents

Copyrights

Trademarks

Registered (Industrial) design

Protection of IC layout design,

Geographical indications, and

Protection of undisclosed information

Intellectual property is divided into two categories: industrial property, which includes

inventions (patents), trademarks, industrial designs, and geographic indications of source: and

Copyright, which includes literary and artistic works such as novels, poems, plays, films and

musical works etc.

WHAT IS INTELLECTUAL PROPERTY?

Intellectual property refers to creations of the mind: inventions; literary and artistic works;

and symbols, names and images used in commerce. Industrial Property includes patents for

inventions, trademarks, industrial designs and geographical indications. Copyright covers

literary works (such as novels, poems and plays), films, music, artistic works (e.g., drawings,

paintings, photographs and sculptures) and architectural design. Rights related to copyright

include those of performing artists in their performances, producers of phonograms in their

recordings, and broadcasters in their radio and television programs.

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NATURE OF INTELLECTUAL PROPERTY RIGHTS

IPR are largely territorial rights except copyright, which is global in nature in the sense that it

is immediately available in all the members of the Berne Convention. These rights are

awarded by the State and are monopoly rights implying that no one can use these rights

without the consent of the right holder. It is important to know that these rights have to be

renewed from time to time for keeping them in force except in case of copyright and trade

secrets. IPR have fixed term except trademark and geographical indications, which can have

indefinite life provided these are renewed after a stipulated time specified in the law by

paying official fees. Trade secrets also have an infinite life but they don‘t have to be renewed.

IPR can be assigned, gifted, sold and licensed like any other property. Unlike other moveable

and immoveable properties, these rights can be simultaneously held in many countries at the

same time. IPR can be held only by legal entities i.e., who have the right to sell and purchase

property. These rights especially, patents, copyrights, industrial designs, IC layout design and

trade secrets are associated with something new or original and therefore, what is known in

public domain cannot be protected through the rights mentioned above. Improvements and

modifications made over known things can be protected. It would however, be possible to

utilize geographical indications for protecting some agriculture and traditional products.

WHAT ARE INTELLECTUAL PROPERTY RIGHTS?

Intellectual property rights are like any other property right. They allow creators, or owners,

of patents, trademarks or copyrighted works to benefit from their own work or investment in

a creation. These rights are outlined in Article 27 of the Universal Declaration of Human

Rights, which provides for the right to benefit from the protection of moral and material

interests resulting from authorship of scientific, literary or artistic productions. The

importance of intellectual property was first recognized in the Paris Convention for the

Protection of Industrial Property (1883) and the Berne Convention for the Protection of

Literary and Artistic Works (1886). Both treaties are administered by the World

Intellectual Property Organization (WIPO).

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WHY PROMOTE AND PROTECT INTELLECTUAL PROPERTY?

There are several compelling reasons. First, the progress and well-being of humanity rest on

its capacity to create and invent new works in the areas of technology and culture. Second,

the legal protection of new creations encourages the commitment of additional resources for

further innovation. Third, the promotion and protection of intellectual property spurs

economic growth, creates new jobs and industries, and enhances the quality and enjoyment of

life. An efficient and equitable intellectual property system can help all countries to realize

intellectual property‘s potential as a catalyst for economic development and social and

cultural well-being. The intellectual property system helps strike a balance between the

interests of innovators and the public interest, providing an environment in which creativity

and invention can flourish, for the benefit of all.

LITERATURE REVIEW

In addition, technological developments in the 20th century have transformed the majority of

wealth creating work from physically – based to ―knowledge-based‖. Technology and

knowledge are now the key factors of production. With increased mobility of information and

global work force, knowledge and expertise can be transported instantly around the world,

and any advantage gained by one company can be eliminated by competitive improvements

overnight. The only comparative advantage a company will enjoy will be the process of

innovation-combining market and technology know-how with the creative talents of

knowledge workers to solve a constant stream of competitive problems.—and its ability to

derive value from information. The Major challenge before the organization in the coming

years would be to create a culture for IPR regime, so that creative work and innovations get

duly protected. More and more organizations may have to provide at their cost the services of

IP management consulting firm for drafting / prosecution of intellectual property. IPR, very

broadly, are rights granted to creators and owners of works that are results of human

intellectual creativity. These works can be in the industrial, scientific, literary and artistic

domains, which can be in the form of an invention, a manuscript, a suite of software, or a

business name. The importance of Intellectual Property in India is well established at all

levels – statutory, administrative and judicial. India ratified the agreement establishing the

World Trade Organization (WTO). This agreement, inter-alia, contains an agreement on

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Trade Related Aspects of IPRs (TRIPS), which came into force from 1st January 1995. It

lays down minimum standards for the protection and enforcement of IPRs in member

countries, which are required to promote effective and adequate protection of intellectual

property rights with a view to reducing distortions of and impediments to international trade.

The obligations under the TRIPS agreement relate to provision of minimum standard of

protection within the member countries legal systems and practices. The agreement provides

for norms and standards in respect of following areas of intellectual property.

Patents

Copyrights

Trademarks

Registered (industrial) design

Protection of IC layout design,

Geographical indications, and

Protection of undisclosed information

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PROCEDURE OF REGISTRATION OF TRADEMARK IN INDIA

The procedure for registration of a trademark in India is given below

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TRADEMARKS LAW IN INDIA

India‘s obligations under the TRIPS Agreement for protection of trademarks, inter alia,

include protection to distinguishing marks, recognition of service marks, indefinite periodical

renewal of registration, abolition of compulsory licensing of trademarks, etc.

With the globalization of trade, brand names, trade names, marks, etc. have attained an

immense value that require uniform minimum standards of protection and efficient

procedures for enforcement as were recognised under the TRIPS. In view of the same,

extensive review and consequential amendment of the old Indian Trade and Merchandise

Marks Act, 1958 was carried out and the new Trade Marks Act, 1999 was enacted. The said

Act of 1999, with subsequent amendments, conforms to the TRIPS and is in accordance with

the international systems and practices.

The Trade Marks Act provides, inter alia, for registration of service marks, filing of

multiclass applications, increasing the term of registration of a trademark to ten years as well

as recognition of the concept of well-known marks, etc. The Indian judiciary has been

proactive in the protection of trademarks, and it has extended the protection under the

trademarks law to Domain Names as demonstrated in landmark cases of Tata Sons Ltd. v.

Manu Kosuri & Ors1, and Yahoo Inc. v. Akash Arora

2.

India, being a common law country, follows not only the codified law, but also common law

principles, and as such provides for infringement as well as passing off actions against

violation of trademarks. Section 135 of the Trade Marks Act recognises both infringement as

well as passing off actions.

Trademark infringement is an infringement of exclusive rights attaching to a trademark

without the authorization of the trademark owner or any licensee. Trademark infringement

typically occurs when a person uses a trademark which may be either a symbol or a design,

with resembles to the products owned by the other party. The trademark owner may begin an

officially permitted proceeding against a party, which infringes its registration. There are two

types of remedies are available to the owner of a trademark for unauthorized use of its

imitation by a third party. These remedies are an action for passing off in the case of an

unregistered trademark and an action for infringement in case of a registered trademark. An

1 [90 (2001) DLT 659]

2 [1999 PTC 201]

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infringement action and an action for passing off are quite different from each other, an

infringement action is a statutory remedy and an action for passing off is a common law

remedy.

Accordingly, in order to ascertain infringement with regard to a registered trademark, it is

necessary only to establish that the infringing mark is deceptively similar to the registered

mark and no further proof is required. In the case of a passing off action, proving that the

marks are deceptively similar alone is not sufficient. The use of the mark should be likely to

deceive confusion. Further, in a passing off action it is necessary to prove that the use of the

trademark by the defendant is likely to cause injury to the plaintiff's goodwill, whereas in an

infringement suit, the use of the mark by the defendant need not cause any injury to the

plaintiff. Trademark infringement laws are of assistance the trademark holders to keep

awareness about infringement of trademark.

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INTRODUCTION

A trademark in relation to goods conveys to the general public and specifically to the

consumers about the origin and quality of those goods, thereby acquiring reputation in the

course of business and time. Therefore the concept of a trademark is the foundation of one‘s

business to distinguish from others. A good trademark is often the best salesman of the goods

and is a visual symbol of goodwill and stamp of quality.

A trademark is one of the elements of Intellectual Property Right (IPR) and is represented by

the symbol ™ or ®. It is a distinctive sign, symbol or indicator which is used by an

individual, business organization or other legal entity to identify uniquely the source of its

products or services to consumers, and to distinguish its products or services from those of

other entities. It could typically be a name, word, phrase, logo, symbol, design, image, or a

combination of these elements. Trademarks are used to facilitate and enhance the marketing

of a commodity and is a sign that indicates to consumers the source and reputation of the

affixer of the mark and provides an important advertising and sales tool.

Every businessman who has spent considerable amount of money making his mark popular

will try to secure it from usage by unscrupulous competitors. Protection of trademark is

important not only from the business point of view but also for the protection of consumer

from fraud and imposition.

The Trademark Act of 1999, both in letter and spirit, lays down that, while it encourages fair

trade in every way and aims to foster and not to hamper competition, it also provides that no

one, especially a trader, is justified in damaging or jeopardizing another‘s business by fraud,

deceit, trickery or unfair methods of any sort. This necessary precludes the trading by one

dealer upon the good name and reputation built up by another.

The first Trademark legislation was enacted in India in 1940, but before that, protection to

trademarks in the country was governed by the principles of common law based on English

cases. The law relating to protection of this form of industrial property is intricate and

complex.

The reputation of a business symbolized by a mark, under common law, can be protected

only by an action for Passing off. Registration of a trademark under the Trade Marks Act of

1999 gives statutory rights and slight infringement of it can invite an action for Infringement.

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However, even the unregistered trademarks are also protected as the Act itself provides that

an action of passing off remedy is available for unregistered trademark.

IMPORTANCE OF TRADEMARK

The importance of trademarks lies in their association with quality and consumer

expectations in a product or service. They can be seen as serving four main purposes:

First, identifying the product of its origin,

Secondly, advertising the product/service and lending it a brand name,

Thirdly, protecting the business‘ reputation and goodwill, and

Fourthly, protecting consumers from deception, that is to prevent the buying public

purchasing inferior goods or services in the mistaken belief that they originate from or

are provided by another trader.

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PASSING OFF

Passing off action is based on common law principle. The damages claimed for in an action

for passing off are ―un-liquidated damages‖. The action against passing off is based on the

principle that ―a man may not sell his own goods under the pretence that they are the goods

of another man.”3 Similar view has been held in ICC Development (International) Ltd. vs.

Arvee Enterprises4 that ―the passing off action depends upon the simple principle that

nobody has any right to represent his goods as the goods of somebody else‖. In a passing off

action, the priority in adoption and use of trade mark is superior. Passing off is not defined in

the Trademark Act, 1999. It is referred to in Section 27 (2), 134 (1) (c) and 135 of the Act.

Section 27 (2) states that the rights of action against any person for passing off as the goods

of another person or the remedies in respect thereof are unaffected by the provision of the

Act. Section 134 (1) (c) refers to jurisdiction of courts to try suits for passing off arising out

of the use of any trademark. Section one 135 specifies the remedies available in respect of

passing off arising from the use of a trademark.

Passing off cases are often cases of ―deliberate and intentional misrepresentation, but it is

well settled that fraud is not a necessary element of the right of action and the absence of the

intention to deceive is not a defence in an action for passing off though proof of fraudulent

intention may materially assist a plaintiff in establishing probability of deception.‖5

The concept of passing off which is a form of tort has undergone changes in the course of

time. At first it was restricted to the representation of one‘s goods as those of another. Later,

it was extended to business and services. Subsequently, it was further extended to professions

and non-trading activities. Now days, it is applied to many forms of unfair trading and unfair

competition where the activities of one person cause damage or injury to the goodwill

associated with the activities of another person or group of persons.

The law of passing off applies whenever there is the prospect of confusion between marks

and getup or where there is the prospect of confusion of identity through the unauthorised use

of similar marks or get-up. It is because the main consideration of passing off is whether

deception or confusion is likely to arise, passing off can be used to protect any kind of

3 N. R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714

4 2003 (26) PTC 245 (Del.)

5 Laxmikant Patel vs. Chetanbhai Shah, 2002 (24) PTC 1 (S.C)

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distinctive name, mark, logo or get-up used to identify a company or business as well as

products or services.

ELEMENTS TO BE PROVED FOR PASSING OFF ACTION

In the case of Reckitt & Colman vs. Borden6, their Lordships used the term ―classical

trinity‖, for goodwill, misrepresentation and damage, which are the three elements of the tort

of passing off.

1. Goodwill

The Plaintiff has to establish a goodwill or reputation attached to the goods and services

which he supplies, in the mind of the purchasing public by association with the identifying

get-up under which his particular goods and services are offered to the public as distinctive

specifically of his goods or services.

As Lord Macnaghten has stated: ―Goodwill is the benefit and advantage of a good name,

reputation, and connection of a business. It is the attractive force which brings in custom. It

is the one thing which distinguishes an old established business from the new established

business at its first start. The goodwill of a business must emanate from a particular centre or

source. However, widely extended or diffused its influence may be, goodwill is nothing unless

it has power of attraction sufficient to bring customers home to the source from which it

emanates.‖7

Goodwill is thus the benefit and advantage of a name and get-up, and it is the attractive

force which brings in business. A passing off action is a remedy for the invasion of a right of

property in the business or goodwill likely to be injured by any actionable misrepresentation,

not in the name or get-up itself. Goodwill need not be established in the mind of every

member of the relevant public, but in a significant section of it.8 A reputation generated

among a very few people will not do. There must be a substantial number of potential

customers although not necessarily a majority.

6 (1990) RPC 341 (HL)

7 Commissioners of Inland Revenue vs. Muller & Co.’s Margarine Ltd. (1901) A.C. 217

8 Chocosuisse Union des Fabricants Suisses de Chocolat vs. Cadbury Ltd., (1999) RPC 826

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The action of passing off lies where there is a real possibility of damage of goodwill to some

business or trading activity. Therefore, the plaintiff has to establish a goodwill in his business

or his goods or services with which the trade or public will be led to associate the defendant‘s

activities.

In the case of Deepam Silk International vs. Deepam Silks9, while granting an order

of injunction restraining the defendant from using the plaintiff‘s trademark, the Karnataka

High Court observed that ―once the plaintiff has shown that he has been doing business for

more than a decade with the trade name and that he has not only applied for registration of a

trademark nearly a decade back, but also has spent lakhs of rupees on gaining the reputation

by spending towards advertisements in almost all medias available, the loss that would be

caused to the plaintiff, if another person like the defendant makes use of the same trade name

and sells the same goods, cannot be ascertained in terms of money. It is the reputation of the

plaintiff’s trade name that will be in jeopardy. If the defendant is to sell inferior goods, it will

definitely affect the business of the plaintiff and will give an impression to the buyers of the

goods from the defendant that the goods sold by the trade name are not maintaining their

quality. Therefore, there is every likelihood of the plaintiff losing its customers and getting its

trade name defamed.‖

Passing-off by the defendant of his goods as the goods of the plaintiff injures the right of

property in the plaintiff, that right of property being his right to the goodwill of the business.

The law assumes or presumes that if the goodwill of a man‘s business has been interfered

with by the passing off of goods, damage results therefrom. The plaintiff need not wait to

show that damage has resulted; he can bring his action as soon as he can prove the passing

off; because it is one of the class of cases in which the law presumes that the plaintiff has

suffered damage.

2. Misrepresentation

The Plaintiff must demonstrate a misrepresentation by the defendant to the public leading or

likely to lead the public to believe that the goods or services offered by him are the goods and

services of him.

9 1998 (18) PTC 18 Kar.

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In its classic form the misrepresentation which gives rise to an action of passing off is an

implied representation by the defendant that his goods are the goods of the plaintiff. As Lord

Dipluck explained in Advocaat case10

that:

“Where the plaintiff and defendant were not competing traders in the line of business,

a false suggestion by the defendant that their business were connected with each other would

damage the reputation and thus the goodwill of plaintiff’s business.‖

The basis of passing off action being a false representation by the defendant, it must be

proved in each case as a fact that the misrepresentation was made. The use by the defendant

in connection of the goods, of the mark, name, or get-up in question must represent such

goods to be the goods of the plaintiff, or the goods of the plaintiff of a particular class or

quality; and the defendant‘s use of such mark, name or get-up is calculated to deceive.11

3. Damage

The plaintiff must demonstrate that he suffered or in a quia timet action, that he is likely to

suffer damage by reason of the erroneous belief endangered by the defendant‘s

misrepresentation that the source of the defendant‘s goods or service is the same as the source

of those offered by the plaintiff.12

In a passing off action, damage is presumed even if there is

likelihood of deception.

In case of ICC Development (International) Ltd. vs. Arvee Enterprises13

and in the case of

Sakalain Meghajee vs. BM House (India) Ltd.14

, the Delhi High Court cited the case of

Erven Warnik Besloten Vennootschap & Anr. Vs. Townend & Sons (Hull) Ltd. & Anr.,15

wherein the House of Lords identified five characteristics which must be present in order to

create a valid cause of action for ―passing-off‖. The House of Lords held that ―passing-off‖ is:

i. A misrepresentation;

ii. Made by a trader in course of business;

10

1979) AC 731, p. 741-742 11

Spalding vs. Gamage (1915) 32 RPC 273 12

Law of Trademarks and Geographical Indications, KC Kailasam, Publication: Wadhwa Nagpur; 2nd Edition, 2005, pg. 343 13

2003 (26) PTC 245 (Del.) 14

2002 (24)PTC 207 (Del.) 15

1979AC 731

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iii. To prospective customers of his or ultimate consumers of goods or services supplied

by him;

iv. Which is calculated to injure the business or goodwill of another trader which can

reasonably be foreseeable; and

v. Which causes actual damage to a business or goodwill of the trader by whom the

action is brought or in a quia time (because he fears or apprehends) action will

probably do so.

In the case of Laxmikant V. Patel vs. Chetanbhai Shah16

, the Hon‘ble Supreme Court held

the three elements of passing-off action are:-

i. Reputation of the goods;

ii. Possibility of deception; and

iii. Likelihood of damages to the Plaintiff.

CHARACTERISTICS OF PASSING OFF ACTION

Following characteristics can be attributed to passing off action

A. PROOF OF FRAUDULENT INTENT NOT NECESSARY

It is not essential that the plaintiff must establish fraud on the part of the defendant in

a passing off action. While granting injunction against the defendants using the

trademark ―Horlioks‖, the Delhi High Court held that ―the use of the offending mark

by the defendants to imitate the plaintiff’s trademark appears to be flagrant and

blatant attempt on the part of the defendants to imitate the plaintiff’s trademark with a

view to deceive the unwary purchasers and exploit and encash on their goodwill in

order to pass off their goods as that of the plaintiff’s. the law does not permit anyone

to carry on his business in such a way as would persuade the customers in believing

that the goods belonging to someone else are his or are associated therewith. Where

there is possibility of confusion in business, an injunction would be granted even

though the defendant adopted the name innocently.”17

16

2002(24) PTC 1 (sc) 17

Horlicks Ltd. Vs. Bimal Khamrai, (2003) 26 PTC 241 (Del.)

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B. PASSING OFF NOT LIMITED TO GOODS

Passing off properly so called is not confined to the case of sale of goods. Passing off

also restrains a defendant from trading under a particular name though the defendant

trader is not selling the goods.18

Thus, when a name has become identified, by

adoption and user with a particular trade or manufacture or business, the person who

so used or adopted it can obtain the aid of the Court to restrain the use of it by others

in such a way as to lead customers or the public to think that the trade or business of

the person sousing is his trade or business.

C. EVIDENCE OF FALSE REPRESENTATION, BUT NOT DECEPTION

NECESSARY

False representation made by the defendant, whether expressly or otherwise, must be

proved as a matter of fact in each case. Absence of actual deception is not

determinative. The ultimate question of whether the deception is likely to cause

confusion remains a question of fact for the courts to decide in the light of available

evidence.

D. PLAINTIFF AND DEFENDANT NEED NOT BE IN THE SAME FIELD

In passing off action, it is immaterial whether the plaintiff and the defendant trade in

the same field or trade in different products. Remedies in the form injunction was

granted in favour of the plaintiff on the basis of an action of passing off even though

the plaintiff and defendant were trading in altogether different products.19

E. PRIOR USER TO BE ESTABLISHED

For inherently distinctive marks, ownership is governed by the priority of use of such

marks. The first user in the sale of goods is owner and senior user. In order to

succeed, the plaintiff has to establish user of the mark prior in time than the impugned

user by the respondents.

ISSUE IN A PASSING OFF ACTION

The issue in a passing off action may be stated as follows:

―would the users of the defendants, either the actual user or the proposed user conceded for

the purposes of the action, be likely to lead persons, either members of trade or of the public,

to suppose that the defendant’s goods so sold were the product of the plaintiff’s, or that the

18

Sales Affilates lts. Vs. Le Jean Ltd., (1947) 64 RPC 103 19

Honda Motors Co. Ltd. Vs. Charanjit Singh, 2003 (26) PTC 1

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business concerned in its production was the plaintiff’s or was associated with the plaintiff’s

business.”20

FACTORS TO BE CONSIDERED IN CASE OF AN ACTION FOR PASSING OFF

The Hon‘ble Supreme Court in the case of Cadila Health Care Ltd. Vs. Cadila

Pharmaceuticals Ltd.21

, held that the following factors to be considered in case of an action

for passing off action of an unregistered trademark for deciding the question of deceptive

similarity:-

a. The nature of the marks, i.e, whether the marks are word marks or label marks or

composite marks, i.e, both words or label works.

b. The degree of resemblance between the marks, phonetically similar and hence similar

in idea.

c. The nature of goods in respect of which they are used as trademarks.

d. The similarity in nature, character and performance of goods of the rival traders.

e. The class of purchasers who are likely to buy the goods bearing the marks they are

likely to exercise in purchasing and/or using the goods.

f. The mode of purchasing the goods or placing orders for the goods.

g. Any other surrounding circumstances which may be relevant in the extent of

dissimilarity between the competing marks.

DEFENCES TO A PASSING OFF ACTION

In a suit for passing off, apart from denying the plaintiff‘s allegations generally, the defendant

may be able to plead the following in defence in his case:-

a. The defendant may prove that the plaintiff‘s business is either fraudulent or forbidden

by law. If any particular business could be shown to be a fraudulent business or one

forbidden by law or one which the public policy of law was to prevent, then in those

cases the proprietor cannot claim protection of the court.22

For example, if a trader

who sells through street markets counterfeit versions of sound recordings and DVD‘s

20

Showerings vs. Bulmer, (1965) RPC 307 21

AIR 2001 SC 1952 22

Newman vs. Pinto, (1887) 4 RPC 508, p.519

21 | P a g e

bearing a famous trademark might not be allowed to rely on his sales to maintain a

passing off action against another counterfeiter who has come into the market after

him.23

b. A false representation contained in the mark itself did furnish a defence at law and at

equity. Where a trademark is used exclusively in connection with a trade which was

itself fraudulent, the fraud in the trade which was itself carried on by the trademark is

a defence.24

c. The mark complained of is not distinctive of the plaintiff‘s business and there is no

likelihood of passing off by reason of defendant‘s use of the mark.

d. The plaintiff is guilty of acquiescence, latches, etc. or the defendant has prior used the

mark.

e. The defendants mark represent his own name which he has the right to use. ―A man is

entitled to carry on his business in his own name so long as he does not do anything

more than that to cause confusion with the business of another, and so long he does it

honestly‖.25

f. The field of activities of the parties are completely different.26

g. The defendant claims right of concurrent use of his mark of his mark. Honest and

concurrent user of a trademark when established will constitute a defence.27

h. The defendant‘s use of the mark is the bona fide description of the character or quality

of goods or services. However, the defence of the name being ‗surname’ or ‗personal

name‘, though available to individuals, is not applicable to a corporate body.28

i. Innocent misrepresentation by the defendant also constitutes a valid defence against

passing off action. Under Section 135 (3)27, where the defendant satisfies the court

that he was unaware of the existence and nature of plaintiff‘s trademark, and that

when he became aware he ceased to use the trademark complained of, the Court shall

not grant relief by way of damages or an accounts of profit.

j. The defendant is using the Plaintiff‘s mark by way of a license. Under Section 12 an

honest concurrent user would be protected. Under Section 30 (2) (c) (i), a defence is

always open that the proprietor of a registered trademark has expressly or impliedly

23

Leather cloth Co. Ltd. Vs. American Leather Cloth Co. Ltd., (1865) 11 ER 1435 (HL) 24

Newton Chambers & Co. ltd. Vs. Neptune Waterproof Paper Co. Ltd, (1935) 52 RPC 399; p.406 25

Rodgers vs. Rodgers, (1924) 41 RPC 277 26

Dunlop vs. Dunlop, (1889) 16 RPC 12 27

Manoj Plastics vs. Bhola Plastic, (1983) PTC 368 28

Kirloskar Diseal Recon Ltd. Vs. Kirloskar Proprietors Ltd, AIR 1996 Bom. 149

22 | P a g e

consented to the use of the said trademark by the defendant. This defence, if laid,

would need a trial.29

k. The defendant may successfully plead and establish that the alleged misrepresentation

was made by his employee outside the scope of his authority and contrary to express

Instructions.30

l. Lastly, the defendant may plead that the plaintiff has abandoned his mark and that the

defendant has either already moved for rectification of register for removal of mark or

proposed to do so. Where a mark is abandoned, it may become common to trade.31

When abandoned, the mark may be appropriated by another person. The onus is on

the defendant to prove abandonment.32

NEW FACET OF PASSING-OFF ACTION

The present Trademarks Act, 1999 which provides protection of trademark in its

diverse forms, cases of trade dress does not strictly fall within the statutory definition of

―trademark‖ under Section 2 (1) (zb), because the business or product that enjoys goodwill

independent of the brand value enjoyed by the trademark cannot always be included within

the protective sweep of the Trademarks Act. This is because of two reasons; firstly, trade

dress law is less explicitly set forth in statute law in India. Secondly, the trade dress

protection is broader than trademark protection. One of them being that the breadth of trade

dress protection is generally perceived to be broader than the conventional protection

afforded to trademarks and business name. The reason for this is that packaging and product

design cannot be registered for trademark protection, and also the trade dress infringement

claim requires the Court to focus on the plaintiff‘s entire selling image, rather than the

narrower single facet of trademark alone. These elements encompass the manufacturer‘s total

selling image, unlike trademarks that merely identify and distinguish the manufacturers from

the competitors. However, in the case of Colgate Palmolive & Co. vs. Anchor Health and

Beauty Care Pvt. Ltd.33

, the Delhi High Court raised the bar of trademark protection

available to trade dress of goods and held that similarity of trade dress was an attribute of

passing off, and was actionable per se.

29

QRG Enterprises vs. Surendra Electricals, 2005 (30) PTC 471 (Del.) 30

Boston Marine Patents Company Ltd. Vs. Wheeler & Thomson, (1954) 71 RPC 432 31

National Starch Manufacturing Co. vs, Munn’s Patent Maizena and Starch Co. (1894) 11 32

Noor Illahi Maqbul Illahi vs. R.J Wood & Co., (1928) Lah. 487; AIR 1928 Lah. 924 33

2003 (27) PTC 478 (Del.)

23 | P a g e

A CASE ANALYSIS ON PASSING-OFF

Colgate Palmolive & Co. vs. Anchor Health and Beauty Care Pvt. Ltd.34

Facts of the case The Plaintiffs were selling tooth powder under the Trademark ―Colgate‖ in cans bearing

distinctive get-up and colour scheme. The colour combination was purportedly applied by the

defendants on their cans for a similar range of products. Colgate alleged that Anchor had

adopted similar trade dress in terms of layout, get-up and colour combination with the

obvious intention to encash upon the plaintiff‘s goodwill and reputation.

The Plaintiffs averment was that the red and white trade dress had acquired the meaning as a

trademark and they claimed to earn exclusive ownership over the same. Anchor argued that

the essential feature of the label mark was the word mark and not the colour combination or

the overall get-up and since the two trademarks in question; viz., Colgate and Anchor were

entirely different, Colgate could not seek protection under the grab of colour combination of

the label. Taking the cognizance of the rival containers, the Court ruled it to be an instance of

passing-off based on the overall similarity of trade dress of the two products.

Decision As the Court found similarity of look and appearance of the defendant‘s trade dress was that

with the plaintiff‘s trademark, the Plaintiff succeeded. The Hon‘ble High Court held that

―trade dress protection is also available under the Trademark Law and that wide protection

against imitation or deceptive similarities of trade dress as like trademark is the soul for

identification of the goods as to its source or design; and as such is liable to cause confusion

in the minds of unwary customers, particularly, those who have been using the product fo a

period‖. The Court while granting an injunction in favour of Colgate expressed that the test in

such cases was whether there is likelihood of confusion or deception in the minds of unwary

customers, ―irrespective of dissimilarities in the trade name‖.35

Even if the goods are not same or similar to each other, then also no one can use the

registered trademark of a company for any kind of goods which may result in the harm to the

business and reputation of the company which is the owner of the trademark. In the case of 34

Ibid. 35

Ibid 500 (Para 59)

24 | P a g e

Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors36

defendant Company was using the

trade name HONDA for ‗Pressure Cookers‘ which they are manufacturing in India and even

when their application for registration of this trademark had been rejected by the registrar

they continued using it and again applied for registration and hence plaintiff has brought this

plaint. Plaintiff is the well-known company having presence all over the world in the field of

Motor Cars, Motorcycles, Generators and other electronic appliances. They are doing

business in India in association with the Siddharth Shriram Group with the name Honda Siel

Cars India Ltd. Plaintiff has established that his business or goods has acquired the reputation

and his trade name has become distinctive of his goods and the purchasing public at large

associates the plaintiff's name with them. The use of trademark HONDA by respondents is

creating deception or confusion in the minds of the public at large and such confusion is

causing damage or injury to the business, reputation, goodwill and fair name of the plaintiff.

Hence court has restricted the defendants from using the trademark HONDA in respect of

pressure cookers or any goods or any other trade mark/marks, which are identical with and

deceptively similar to the trade mark HONDA of the plaintiff and to do anything which

amounts to passing off to the goods of the plaintiff.

In the case of Smithkline Beecham v. V.R. Bumtaria37

, the plaintiff applied for permanent

injunction to restrain the defendant from infringing the trademark, passing off, damages,

delivery etc. of its registered trademark ARIFLO, used in respect of the pharmaceutical

preparations. Defendants were using the similar name ACIFLO for their product of the same

drug in India. Plaintiffs were not doing business in India for the particular product and argued

that since their advertisements are been published in medical journals hence they have a trans

border reputation and defendants should be stopped to use the similar trademark which

creating deception in customers.

Court said that mere publication of an advertisement in a journal cannot establish a trans-

border reputation. Such reputation if any is confined to a particular class of people, i.e., the

person subscribing to the said specialized journals and the same can‘t be said to be extended

to the general consumers. Thus any adverse effect on the firm in such a case can‘t be

amounted to the offence of ―passing off‖.

36

[2003(26)PTC1(Del)] 37

[MANU/DE/2890/2005]

25 | P a g e

Though the dispute resulted in compromise where the defendant agreed and accepted the

plaintiffs‘ exclusive right on the use of mark i.e. ARIFLO in India and abroad and further

agreed to not to manufacture pharmaceutical preparations under the mark ACIFLO or any

other mark identical or similar to ARIFLO.

26 | P a g e

INFRINGEMENT OF A TRADE MARK

Section 27(1) of the Trademarks Act, 1999 provides that a person shall be entitled to initiate

legal proceeding to prevent or recover damages for the infringement of a registered

trademark. Infringement occurs when someone else uses a trademark that is same as or

deceptively similar to registered trademark for the identical or similar goods or services as to

cause confusion in the mind of the public. This right of bringing an infringement action

against the defendant has been conferred by Section 28 of the Trademarks Act, 1999. Section

28 of the Act provides that the registration of a trademark gives to the proprietor of a

registered trademark an exclusive right to use the trademark in relation to the goods and

services in respect of which the trademark is registered and to obtain relief in respect of

infringement of the trademark.

Trademark infringement claims generally involve the issues of likelihood of confusion,

deceptive marks, identical marks and dilution of marks. Likelihood of confusion occurs in

situations where consumers are likely to be confused or mislead about marks being used by

two parties. The plaintiff must show that because of the similar marks, many consumers are

likely to be confused or mislead about the source of the products that bear these marks.

Dilution is a trade mark law concept forbidding the use of a famous trade mark in a way that

would lessen its uniqueness. In most cases, trade mark dilution involves an unauthorized use

of another's trade mark on products that do not compete with, and have little connection with,

those of the trade mark owner. For example, a famous trade mark used by one company to

refer to hair care products, might be diluted if another company began using a similar mark to

refer to breakfast cereals or spark plugs.

WHAT CONSTITUTES INFRINGEMENT?

Section 29 of the Trademarks Act, 1999 deals with infringement. In this context, the

ingredients of Section 29 (1) are as follows:-

a. The plaintiff‘s mark is registered.

b. The defendant‘s mark is identical with, or deceptively similar to plaintiff‘s registered

mark;

27 | P a g e

c. The defendant has taken any essential feature of the mark or has taken the whole of

the mark and then made a few additions and alterations.

d. The defendant‘s use of the mark is in course of the trade in respect of goods/services

covered by the registered trademark.

e. The use of the infringing mark must be printed or usual representation of the marking

advertisements, invoices or bills. Any oral use of the trademark is not infringement.

f. The use by the defendant is in such manner as to render the use of the mark likely to

be taken as being used as a trademark.

g. The defendant‘s use of the mark is not by way of permitted user and accordingly

unauthorised infringing use.

While the above is the general proposition of law as per Section 29 (1), the various

circumstances in which the trademark is infringed are enumerated in sub-sections 29(2) to (9)

of Section 29.

INFRINGEMENT- VARIOUS FACTORS

In the case of Wockhardt Ltd. Vs. Aristo Pharmaceuticals Ltd.38

, Madras High Court, after

holding the defendant‘s mark ―SPASMO-FLEXON‖ deceptively and phonetically similar to

―SPASMO-PROXYVON‖, summarised the law as follows:

1. The registered proprietor of a trademark has exclusive right to the use of the

trademark in relation to the goods and services in respect of which the trademark is

registered and to obtain relief in respect of infringement of the trademark in manner

provided by the Act.

2. Whether it is deceptively or has become publici juris is a question of fact to be

established.

3. When a number of marks, all have a common element, may it be prefix, suffix or root,

i.e. essential part or the core of the mark, they come to be associated in the public

mind as an indication of the same source, which misleads or causes deception or

confusion.

4. It is the common element that has to be identified in an impugned mark and the

registered trademark and if such common element is highly distinctive and is not just

38

(1999) PTC 540

28 | P a g e

a description or a commonly used word, the likelihood of deception or confusion

would be very much there, despite the fact that it might differ in similarity in certain

letters.

5. The nature of the commodity, the class of purchasers, the mode of purchase and other

surrounding circumstances must also be taken into consideration.

6. Marks must be looked at from the first impression of a person of average intelligence

and imperfect recollection.

7. Marks must be compared as a whole, microscopic examination being impermissible.

8. The broad and salient feature must be considered, for which the marks must not be

placed side by side to find out the differences in design.

9. Overall similarity is the touchstone.

10. It is not the colour of the container or the difference of the product, but it is the

statutory right to the word that has to weigh.

11. The plaintiff need not in general show prima facie case that is required to be shown

must be something more than a case that will avoid the action being struck out as

frivolous or vexatious and even if the chance of success at the trial are only twenty per

cent, the statutory protection is absolutely necessary by way of an injunction in order

to prevent confusion or deception arising from similarity of marks.

FOLLOWING ARE THE INSTANCES WHERE THE ACTS CONSTITUTED INFRINGEMENT OF TRADEMARK

i. TAKING SUBSTANTIAL FEATURE OF THE MARK

a mark is infringed by another trader, if, even using the whole of it upon or in

connection with his goods, he uses one or more of the essential features.

ii. ADDITIONS

Addition of extraneous matter, inconspicuous additions is infringement. If a person

incorporates whole or part of a registered Trademark of another, the addition of other

or matter would not save him from the charge of infringement.

iii. WHEN A MARK IS COPIED

If the defendant absolutely copied the mark and made a facsimile representation of it,

no further evidence is required. When the similarities are so close as to make it

29 | P a g e

impossible to suppose that such marks were devised independently of each other, in

absence of evidence of common origin, the conclusion that one party copied the mark

of another.

iv. MARKS LIKELY TO CAUSE CONFUSION

Likelihood of confusion occurs in situations where consumers are likely to be

confused or mislead about marks being used by two parties. The plaintiff must show

that because of the similar marks, many consumers are likely to be confused or

mislead about the source of the products that bear these marks. Where the visual,

aural and conceptual similarities is caused by the defendant‘s trademark which causes

confusion in the minds of the public as to its origin, then the mark is held to be an

infringing mark. Furthermore, if the association between the marks causes the public

to wrongly believe that the respective goods comes from the same or economically

linked undertakings, there is a likelihood of confusion.39

v. USE OF RECONDITIONED OR SECOND ARTICLES

The use of plaintiff‘s mark on reconditioned goods may constitute infringement even

if it is clarified that goods are not original but reconditioned.40

vi. PRINTING OF LABELS

Unauthorised printing of labels of the plaintiff will constitute infringement. Moreover,

if a copyright subsists in labels, it will constitute infringement of copyright as well.

vii. GOODS MANUFACTURED BY THIRD PARTY WOULD CONSTITUTE

INFRINGEMENT

When the owner of a mark gets the goods manufactured by a third party under a

contract, solely for the mark, sale of the goods bearing the mark by such a

manufacturer to other person would constitute infringement.

viii. MARKS USED ALONG WITH OTHER’S MARK

Use of the plaintiff‘s mark along with the defendant‘s name even if prominently

displayed constitutes infringement.41

ix. SIMILAR MARKS IN MEDICINAL PRODUCTS

When the goods or products involved are medicinal products, confusion of sources or

drugs or medicinal preparation caused by similar marks of the defendant would

constitute infringement, although similarity in the marks would have been very less.

39

Compass Publishing BV vs. Compass Logistics Ltd., (2004) RPC 41 40

Rolls-Royce vs. Dodd, 1981 FSR 517 41

Levi vs. Shah (1985) RPC 371

30 | P a g e

x. MARKS WITH INTERNATIONAL REPUTATION USED

UNAUTHORISEDLY

In case of marks which have acquired international reputation, an action for its

protection against un-authorised use will lie even if the owner of the trademark does

not have any business activity in India.42

WHO CAN SUE FOR INFRINGEMENT?

The plaintiff in an infringement suit may be either:

1. The proprietor of the registered trademark or his legal successor.

2. A registered user of a trademark subject to a prior notice to the registered proprietor

and consequent failure of the registered proprietor to take any action against the

infringer.

3. An applicant for registration of a trademark. He can file an infringement suit to

protect his right to continue with the suit which will sustain only if his trademark is

registered before hearing the suit.

4. Legal heirs of the deceased proprietor of a trademark.

5. Any one of the joint proprietors of a trademark.

6. A foreign proprietor of a trademark registered in India when Infringement occurs in

India.

WHO CAN BE SUED?

1. The infringer who directly by his action causes infringement or who uses or

contemplates or threatens to use a trademark infringing plaintiff‘s right.

2. The master responsible for his servant‘s act of infringement. For example, a worker

who is engaged in the business of making false labels is a servant of the master who

orders the making of such labels. It is the master in such a case who is to be sued.

3. The agents of an infringer.

4. Directors and promoters of a limited company cannot be joined as co-defendants

unless they have personally committed or directed infringing acts.

42

Torrent Pharmaceuticals Ltd. Vs. Wellcome Foundation Ltd. (Guj. H.C) 2001 (2) CTMR 158

31 | P a g e

JURISDICTION

Suit for infringement or for passing off is to be filed in the court not inferior to a District

Court having jurisdiction to try the suit.43

District Court having jurisdiction includes a District

Court within the local limits of whose jurisdiction, at the time of the institution of the suit or

other proceedings, the person instituting the suit or other proceedings, or where there are

more than one person, any of them who:-

a. Actually and voluntarily resides; or

b. Carries on business; or

c. Works for gain; can bring in an action against the defendant.

PERIOD OF LIMITATION

Under the Limitation Act, 1963, the period of limitation for filing a suit for infringement of a

trademark is three years from the date of infringement. Where the infringement is a

continuing one, a new course of action arises every time an infringement occurs. For

example, a continued sale of infringing article would give rise to a fresh cause of action.

ISSUES IN INFRINGEMENT SUITS

The issues that arise in an infringement action are the following:-

a. Whether the plaintiff is entitled to file a suit; i.e. whether he is proprietor of a

registered trademark or a registered.

b. Whether the use or proposed use of the mark by the defendant is an infringement of

the registered trademark.

c. Whether the defendant has succeeded in establishing one or more of the defences set

up by him.

d. If the plaintiff‘s succeeds in the suit, what reliefs he is entitled to?

e. Whether the plaintiff is entitled to any interlocutory relief?

f. Whether there has been an actual instance of deception and confusion amongst the

public?

43

Section 134 of the Trademarks Act, 1999

32 | P a g e

EVIDENCE IN INFRINGEMENT ACTIONS

The fact of registration of the plaintiff‘s mark is to be proved by production of a copy of the

entry on the register certified by Registrar and sealed with the Trademark Registry.44

The

certified copy will contain all the entries in the register relating to the mark including the

conditions, if any, subject to which a mark is registered. In all legal proceedings relating to a

registered trademark, the original registration of a trademark and all subsequent assignments

and transmissions will be prima facie evidence of the validity. The plaintiff must establish

that the use of the mark complained of comes within the scope of definition of infringement.

Where the defendant has absolutely copied the mark and made a facsimile representation of

it, no further evidence is required. Where the mark used by the defendant is not identical with

the registered trademark, the court has to determine the two marks are deceptively similar.

Opinion evidence is not admissible, but statement of witnesses to the effect that they

themselves would be deceived is admissible. Evidence as what constitutes the essential

feature of the mark is admissible.45

ACTS NOT CONSTITUTING INFRINGEMENT (SECTION 30)

Following acts do not constitute infringement of the right to the use of a registered trademark:

1. Where the plaintiff has no title to sue;

2. Where the registration of the trademark is not valid and liable to be expunged;

3. When the use of the mark by the defendant is not an infringement under Section 29;

4. When a person uses a trademark in accordance with honest practices in industrial and

commercial matters that do not take unfair advantage.

5. When a person uses a trade mark in relation to goods or services indicating character,

quality or geographical origin

6. When a person uses a trade mark in relation to services to which the proprietor has

already applied the mark or registered user the object of the use is to indicate that the

proprietor or the registered user has performed the services.

44

Section 137 of the Trademarks Act, 1999 45

Prem Nath vs. Registrar, AIR 1972 Cal 261

33 | P a g e

7. When a person uses a trademark, which is subject to any conditions or limitations,

beyond the scope of such conditions or limitations will not constitute infringement.

8. When a person uses a mark in relation to goods to which the mark has been lawfully

applied, or where the registered proprietor has consented to the use of the mark. This

applies to cases where goods are purchased in bulk and sold in retail applying the

mark.

9. When a person uses a mark in relation to parts of a product or accessories to the goods

in respect of which the mark is registered if the use is reasonably necessary to indicate

that the goods so adapted.

10. When a person uses a mark or a similar mark in the exercise of a right conferred by

independent registration.

11. When a person assigns a trademark to another, this will not affect the right of that

person to sell or deal in the goods bearing that mark.

CASE ANALYSIS ON INFRINGEMENT

Castrol Limited Vs P.K. Sharma46

Facts of the case

Plaintiff is the registered owner of the trade marks Castrol, Castrol Gtx And Castrol Gtx 2 in

respect of oils for heating, lighting and lubricating. During the month of December 1994,

plaintiffs came to know that the defendant was carrying on business of selling multigrade

engine oil and lubricants under the trade mark 'Castrol Gtx & Castrol Crb' IN IDENTICAL

containers as used by the plaintiffs. Plaintiff filed a suit for perpetual injunction.

Held

Hon‘ble Delhi High Court while passing an ex parte decree held that the user of the said trade

marks by the defendants, who have no right whatsoever to use the same is clearly dishonest

and is an attempt of infringement. The prayer of the plaintiff is accepted and they are

restrained by a decree of injunction from selling, advertising directly or indirectly in

multigrade engine oil with the aforesaid trade marks in containers which are similar to the

containers being used by the plaintiffs.

46

2000 (56) DRJ 704

34 | P a g e

Ranbaxy Laboratories Ltd. Vs. Dua Pharmaceuticals Ltd.47

Facts of the Case

The plaintiff company manufactured drugs under the trade name "Calmpose". The defendant

company subsequently floated its similar product under the trademark "Calmprose".

Held

The Hon‘ble Delhi High Court held that the two trademarks having appeared phonetically

and visually similar and the dimension of the two strips being practically the same including

the type of packing, the colour scheme and manner of writing, it is a clear case of

infringement of trade mark and the ad interim injunction granted in favour of the plaintiff.

No one can use the trademark which is deceptively similar to the trademark of other

company. As in the case of Glaxo Smith Kline Pharmaceuticals Ltd. v. Unitech

Pharmaceuticals Pvt. Ltd.48

, the plaintiff claimed that defendants are selling products under

the trademark FEXIM that is deceptively similar to the plaintiff‘s mark PHEXIN, which is

used for pharmaceutical preparations. The defendants are selling anti-biotic tablets with the

trademark `FEXIM' with the packing material deceptively similarly to that of the plaintiff,

whereby intending to not only to infringe the trademark but also to pass off the goods as that

of the plaintiff as the two marks are also phonetically similar. The Court restrained the

defendant from using the trademark `FEXIM' or any trademark deceptively similar to the

trademark of the plaintiff `', any label/packaging material deceptively similar and containing

the same patter PHEXIN n as that of the plaintiff.

If a party using the deceptively similar name only for a single shop and not spreading its

business by use of that particular name then also that party could be stopped from using the

trade name of other company. This is given in the case of M/s Bikanervala v. M/s Aggarwal

Bikanerwala49

where the respondent was running a sweet shop in with the name of

AGGARWAL BIKANERVALA and the plaintiff was using the name BIKANERVALA

from 1981 and also got registered it in the year 1992. hence they applied for permanent

injunction over the use of the name AGGARWAL BIKANERWALA for the sweet shop by

the defendant. Court held in favour of the plaintiff and stopped defendant from

47

AIR 1989 Delhi 44 48

[MANU/DE/2840/2005] 49

[117 (2005) DLT 255]

35 | P a g e

manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in food

articles for human consumption under the impugned trade mark/trade name/infringing artistic

label 'AGGARWAL BIKANER WALA' or from using any trade mark/trade

name/infringing artistic work containing the name/mark 'BIKANER

WALA/BIKANERVALA' or any other name/mark/artistic work which is identical or

deceptively similar to the plaintiff's trademark 'BIKANERVALA'.

If the trademark is not registered by any party but one party started using it before the other

then first one would have the legal authority on that particular mark. As in the case of

Dhariwal Industries Ltd. and Anr. v. M.S.S. Food Products50

, where appellants were using

the brand name MALIKCHAND for their product and the respondents were using the name

MANIKCHAND which is similar to the previous one and both parties have not registered

their trademarks. Court held in this matter that even though plaintiff have not registered their

trademark they are using it from long time back and hence court granted perpetual injunction

against the respondents.

Even if a company is not doing business in country, but it is a well-known company or well-

known goods, then also it would be entitled to get authority over its trademark. As given in

case of N.R. Dongare v. Whirlpool Corp. Ltd.51

, where the defendants have failed to renew

their trademark ‗WHIRLPOOL‘ and in the meantime the plaintiffs have got registration of

the same. In this case court said that though there was no sale in India, the reputation of the

plaintiff company was travelling trans-border to India as well through commercial publicity

made in magazines which are available in or brought in India.

The ―WHIRLPOOL‖ has acquired reputation and goodwill in this country and the same has

become associated in the minds of the public. Even advertisement of trade mark without

existence of goods in the mark is also to be considered as use of the trade mark. The

magazines which contain the advertisement do have a circulation in the higher and upper

middle income strata of Indian society. Therefore, the plaintiff acquired transborder

reputation in respect of the trade mark ―WHIRLPOOL‖ and has a right to protect the

invasion thereof.

50

[AIR 2005 SC 1999] 51

[(1996) 5 SCC 714]

36 | P a g e

WHAT THE PLAINT SHOULD CONTAIN?

There is no special form of pleading prescribed for an action for infringement. The pleadings

must contain a clear and conscience statement of all material facts relied upon by the

plaintiff, but not evidence. It should specifically allege what the defendant has infringed or

threatened to infringe in case of registered mark. In case of passing-off, the plaintiff must

specifically allege the wrong that has been done to his goodwill or business and also the act

of misrepresentation committed by the defendant. Particulars of the acts committed by the

defendant which form the basis of allegation must be given. Where the fraud is desired to be

raised, it must be clearly pleaded, and particulars of fraud must be stated. Where both the

infringement and passing off are combined in the suit, the plaintiff should state that by virtue

of such user the mark has become distinctive of his goods.

RELIEFS IN SUIT FOR PASSING-OFF AND INFRINGEMENT

Under Section 135 of the Trademarks Act. 1999, the reliefs which a Court may grant for

passing off and for infringement includes the following:-

1. Accounts of Profit

Account of profits are the actual profits which the defendant has made by infringing

the legal rights of the plaintiff. Sub-section (1) of Section 135 provides for grant of

relief which includes, at the option of the plaintiff, either damages or an account of

profit. In taking account of profits, the damage the plaintiff have suffered is totally

immaterial. The object of account of profit is to give to the plaintiff the actual profits

the defendant has made and of which it is established that the profits were improperly

made.52

Section 135 (3) expressly enacts that where the court is satisfied that it is a

case of innocent infringement, it shall grant only nominal damages. Further, in such

situation, the Court shall not grant an account of profits.

2. Damages

Damages are the compensation awarded to the Plaintiff by the defendant for the legal

injury caused by him to the plaintiff. Damages are the notional compensation paid to

the plaintiff irrespective of the actual amount of loss suffered by the plaintiff.

52

Graham vs. Plate, Seb. P. 208.

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FOLLOWING ARE THE MATTERS WHICH ARE GENERALLY TAKEN INTO

ACCOUNT IN AWARDING DAMAGES INCLUDE THE FOLLOWING

i. Any loss of trade actually suffered by the plaintiff directly from the acts complained

of, or properly attributable to injury to the plaintiff‘s reputation, business, goodwill

and trade and business connection caused by the acts complained of.

ii. Damages may be awarded even though there is no deception.

iii. Where the defendant‘s goods are similar in quality to the plaintiff‘s goods, the

defendant‘s wrongful act may cause injury to the plaintiff‘s business reputation.

In Yahoo Inc. vs. Sanjay V. Shah53

, the Delhi High Court held that he defendants passed off

their goods as if the goods were manufactured by the plaintiff using the deceptively similar

―Yahoo”. The Hon‘ble High Court not only granted permanent injunction restraining the

defendants from the use of the trademark ―Yahoo”, but also decreed for damages amounting

Rs. 5, 05,000/- in favour of the plaintiff.

3. Injunction

Injunction is one of the reliefs which an aggrieved person may obtain in any suit for

infringement of a registered trademark or for passing off of the registered trademark

or unregistered trademark. The remedy of injunction is an effective remedy in

preventing the infringement of registered trademark or unregistered trademark.

Section 135 of the Trademarks Act, 1999 grants the relief of injunction. While

granting an injunction, the Court should always rely on the fact that whether the

balance of convenience lies with the plaintiff and whether an irreparable damage or

injury would occur to the plaintiff if injunction is not provided for against the

defendant.

Section 135 (2) further provides for ex parte injunction or any interlocutory order for

any of the following matters, namely:-

i. For discovery of documents;

ii. Preserving of infringing goods, documents or other evidence which are related

to the subject-matter of the suit;

53

2006 (32) PTC 157 (Del.)

38 | P a g e

iii. Restraining the defendant of or dealing with his assets in a manner which may

adversely affect plaintiff‘s ability to recover damages, costs or other pecuniary

remedies which may be finally awarded to the plaintiff.

In the case of Prabhu Shankar Aggarwal vs. Anand Kumar Deepak Kumar,54

the Delhi

High Court held as follows:-

“Whenever a court considers it necessary in a particular case to pass an order of injunction

without notice to the other party, it must accord the reason for doing so, and also how the

object of granting injunction itself would be defeated if ex parte order is not passed, due to

delay. An order passed without such reasons is liable to be vacated.”

INJUNCTION MAY BE OF FOLLOWING TYPES

I. Anton Piller Order

These are ex parte orders to inspect defendant‘s premises. A Court may grant such an

order to the plaintiff where there is a possibility of the defendant destroying or

disposing of the incriminating material.

II. Mareva Injunction

In such an order, the Court has the power to freeze defendant‘s assets where there

exists a probability of the assets being dissipated or cancelled so as to make

judgement against him worthless or un-enforceable.

III. Interlocutory Injunction

It is the most commonly sought and most often granted form of injunction. It serves to

take action against the defendant on the basis of past infringement. The interlocutory

injunction is an order restraining the defendant from continuance of the acts which

amount to infringement. It serves the purpose of preventing further infringement.

IV. Perpetual Injunction

It is an order restraining the defendant totally, for all times to come, from doing any

act which infringes the right of the proprietor of the trademark. Perpetual injunction is

generally granted when the suit is finally decided.

54

2002 (24) PTC 292 (Del.)

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DIFFERENCE BETWEEN PASSING-OFF AND INFRINGEMENT

In the case Durga Dutt Sharma V. N.P. Laboratories55

, Hon‘ble Supreme Court laid the

difference between the two – infringement and passing off. It was held that "An action for

passing off is a Common law remedy, being in substance an action for deceit, that is, a

passing off by a person of his own goods as those of another. But that is not the gist of an

action of infringement. The action for infringement is a statutory remedy conferred on the

registered proprietor of a registered trade mark for the vindication of the exclusive right to

use the trademark."

a. Conceptual Difference

1. Passing off action is based on common law principle that nobody has any right to

represent his goods as somebody else. Such action is recognised both in respect of

unregistered as well as registered trademark. An action for infringement on the

other hand is based on the right acquired by registration and is possible only in

respect of registered trademarks.

2. An action for infringement is a statutory right. It is dependent upon the validity of

the registration and subject to other restriction laid down in the Act.56

On the other

hand, in a passing off action registration of trademark is not relevant. It is based

on property in goodwill acquired by use of the mark.

3. The proprietor of an unregistered trademark whose mark is unauthorisedly used

by another cannot sue for infringement of a trademark. His only remedy lies in

bringing a passing off action.

4. In an infringement action, the plaintiff is not required to prove the reputation of

his mark, which is not the case in case of passing off. In passing off action, the

plaintiff has to prove that his mark has acquired reputation in relation to any goods

dealt with by him.

5. An infringement action can result in the restraining of defendant from using the

registered trademark whereas in a passing off action the defendant is restrained

from selling the article without clearly distinguishing from the goods of the

plaintiff.

55

AIR 1965 SC 980 56

Trademarks Act, 1999

40 | P a g e

6. In an action for infringement, the use of trademark of the plaintiff, in relation to

goods is a sine qua non for the action. In contradiction, in a passing off action, it is

deceit as practiced on the public and not the use of the trademark that is to be

shown.

b. Procedural Difference

1. In an infringement action, if there was colourable imitation, the fact that the

get up was different was not relevant in an infringement action though it might

have had relevance in a passing off action.57

2. In passing off action identity or similarity of marks is not sufficient, there must

also be likelihood of confusion. But in case of infringement if the marks are

identical or similar no further proof is required.

3. An infringement action is based on the violation of the proprietary right and

deception can be one of the ways whereas in a passing off action deception or

likelihood of deception is the only thing to be established.

4. An infringement action does not require the use of the mark. The proprietor

could have never used the mark in the course of the business and still bring an

action for infringement whereas in a passing off action the plaintiff must

establish that the mark by usage has become distinctive of his goods i.e. the

goods are identified by the mark.

5. In an action for infringement, the plaintiff must make out that the use of the

defendant‘s mark is so close either visually, phonetically or otherwise and the

court reaches the conclusion that there is an imitation; no further evidence is

required to establish that the plaintiff‘s rights are violated. Whereas, in case of

passing off the defendant may escape liability if he can show that the added

matter is sufficient to distinguish his goods from the goods of the plaintiff.58

6. In case of a passing off action, the defendant's goods need not be same as that

of the plaintiff; they may be allied or even different. In case of an action for

infringement, the defendant's use of the offending mark may be in respect of

the goods for which the mark is registered or similar goods.

COMBINED ACTION FOR INFRINGEMENT AND PASSING OFF

57

Saville Perfumery Ltd. Vs. Jump Perfect Ltd. (1941) 58 RPC 147 (161) upheld in M/S S.M. Dyechem Ltd vs. M/S Cadbury (India) Ltd., AIR 2000 SC 2114 58

Durga Dutt Sharma V. Navaratna Pharmaceuticals Laboratories, AIR 1965 SC 980, p.990

41 | P a g e

Where a mark is registered, the plaintiff may combine his action for infringement along with

an action for passing off, where the plaintiff has used his mark and can establish goodwill and

reputation in connection with his business. This provides for a better protection of trademark.

CONCLUSION

Thus, from the above discussion it can be said that protection of trademark is important not

only from the business point of view but also for the protection of consumer from fraud and

imposition. However, it is beneficial if combined action for infringement and passing off is

brought in one suit as incorporating a plea of infringement, if the mark gets registered can

always amend the plaint. But in an action for infringement alone the plaintiff may not be

allowed to include a fresh cause of passing off in order to save the action. Since the scope of

passing off action is wider than an infringement action, if an action fails, there is a chance of

other succeeding. As stated in the preamble of the Trademarks Act, 1999, the law provides

for a better protection of trademarks, the fact that the trademark law provides protection to

trademarks has come out to be a reality. The present Act expressly recognises the common

law remedy and thus saves both the registered and unregistered trademarks from being

misused.

42 | P a g e

BIBLOGRAPHY

BOOKS REFERRED

Kailasam and Vedaraman Law of Trademarks and Patent Geographical-indications

Act-Intellectual Property Rights (Pocket Size Edn.)

Intellectual Property Rights in India by VK Ahuja

Venkateswaran on Law of Trademark law and Passing off by Kapil Wadhwa, Dr.

Abhishek Manu Singhvi

Law Relating to Intellectual Property Rights by Dr. M.K Bhandari

JOURNALS REFERRED

India Law Journal

Indian Society of International Law

Journal of Law and Economics

WEBSITES VISITED

www.wikipedia.org

www.cll.com

www.tm-india.com

http://www.academia.edu/7795675/TRADEMARK_LAW_IN_INDIA_-

A_Critical_and_Comparative_Study

www.thomsonreuters.com

www.indlii.org