By,

Ms Vintee Mishra

Brain League IP Services

Copyright Brain League IP Services Pvt. Ltd. 2009

RISKSINFRINGEMENTPASSING OFFSUIT FOR THREAT OF LEGAL

PROCEEDINGS AND TRADE LIBEL

WHAT CONSTITUTES INFRINGEMENT

IDENTICAL OR DECEPTIVELY SIMILAR MARKS

COVERED GOODS AND SERVICESUSE OF MARK IN COURSE OF TRADEUSE OF MARK IN MANNER OF

TRADEMARKPERMITTED USER

MAGIC V MAGIX FOR FANS

INFRINGEMENT CONTI…IDENTICAL MARK - SIMILAR GOODS AND SERVICES MATRIX V MATRIX FOR MOUSE AND

KEYBOARD

SIMILAR MARK – IDENTICAL OR SIMILAR GOODS AND SERVICES MAGIC V MAZIX FOR FANS

IDENTICAL MARK – IDENTICAL GOODS AND SERVICES MATRIX V MATRIX FOR COMPUTERS

LIKELIHOOD OF CONFUSION/ASSOCIATION WITH TRADEMARK

NEW HOPE FOOD INDUSTRIES V. PIONEER BAKERIES

NEW HOPE - CONFECTIONARY ITEMS AND BAKERY PRODUCTS

TRADE NAMES AND MARKS “MILKA” AND “MILKA WONDER CAKE”

PIONEER-SAME BUSINESS TRADEMARK “MILKA”

INFRINGEMENT? YES

TEST OF INFRINGEMENT

DECEPTIVE SIMILARITY 2 IDENTICAL TRADEMARKS –INFRINGEMENT NOT IDENTICAL – RESEMBLE-CAUSE

CONFUSION ONUS – PLAINTIFF PURCHASERS LIKELY TO DECEIVE COMPARE ESSENTIAL FEATURES MARK AS A WHOLE RESEMBLACE – PHONETIC OR VISUAL

XEROX V ZERRROGZZ

MEDILINE HEALTH CARE PVT. LTD. V. SHRI PAWAN KUMAR VARSHNEY, TRADING AS SALAKA PHARMA CARE PVT. LTD APPLICANT’S TRADEMARK ‘ANTIFLAM’ RESPONDENT TRADEMARK ‘NT FLEM’ PHARMA PRODUCTS INFRINGEMENT? YES

THE COURT HELD SINCE THE GOODS ARE SAME, RIVAL MARKS PHONETICALLY SIMILAR AND RESPONDENT SUBSEQUENT USER, THEREFORE HELD INFRINGEMENT

INFRINGEMENT CONTI…DILUTION MARK IDENTICAL OR SIMILAR –TRADEMARK ® GOODS AND SERVICES NOT SIMILAR TRADEMARK ® - REPUTATION IN INDIA USE WITHOUT DUE CAUSE USE- UNFAIR ADVANTAGE, DETRIMENTAL TO

DISTINCTIVE CHARACTER AND REPUTE – TRADEMARK ®

BARVEE FOR DOLLS – EARLIER MARK V BARWE FOR BAR AND RESTAURANTS

MEANING OF REPUTATION

SUFFICIENT KNOWLEDGE OF EARLIER MARK EXIST TO MAKE ASSOCIATION

KNOWN TO SIGNIFICANT PART OF PUBLICSUFFICIENT TO BE KNOWN IN ONE AREACONSIDER MARKET SHARE,

GEOGRAPHICAL EXTENT, DURATION OF USE AND SIZE OF INVESTMENT

ROLEX SA V. ALEX JEWELLERY “ROLEX” REGISTERED FOR WATCHES IN

AROUND THE WORLD INCLUDING INDIA.

DEFENDANT ALSO STARTS SELLING JEWELLERY UNDER THE NAME OF “ROLEX” IN INDIA.

DILUTION? YES

HELD USE WITHOUT DUE CAUSE AND DEFENDANT TAKING UNFAIR ADVANTAGE OF PLAINTIFF’S BUSINESS WHICH WAS DETRIMENTAL TO ITS DISTINCTIVE CHARACTER AND REPUTE

INFRINGEMENT CONTI…

USE TRADEMARK ® AS- TRADE NAME OR PART OF IT NAME OF BUSINESS OR PART OF IT SAME CLASS OF GOODS AND SERVICES

AFFIX TO GOODS OR PACKAGEEX-IM GOODS UNDER THE MARKBUSINESS PAPER OR ADVERTISINGOFFER FOR SALE OR ACTUAL SALE, MARKETS,

STOCKS GOODS AND SERVICESAPPLIED TO MATERIAL FOR PACKAGING OR

LABELLINGCOMPARATIVE ADVERTISEMENT - DISPARAGEMENT

INFRINGEMENT BY ADVERTISINGCOMPARATIVE ADVERTISING DECLARE OWN GOODS AS BEST DECLARE OWN GOODS BETTER THAN OTHERS, EVEN IF UNTRUE COMPARE ADVANTAGES OF OWN GOODS WITH OTHERS NOT SLANDER OR DEFAME

DISPARAGEMENT FALSE OR MISLEADING STATEMENT STATEMENT CAPABLE OF DECEPTION DECEPTION INFLUENCE PURCHASING

DECISION

LOCALITY OF INFRINGEMENT

TERRITORIAL RIGHT

TRADE MAY NOT OVERLAP

USE OF OFFENDING MARK - MUST IN INDIA

IMPORT FOR RE-EXPORT SUFFICIENT USE

USE OF OFFENDING MARK – IN COURSE OF TRADE

ACTS NOT CONSTITUTING INFRINGEMENT

HONEST PRACTICES EG – LIVTEC V LIVDEE

NO UNFAIR ADVANTAGE DETRIMENTAL TO DISTINCTIVE CHARACTER OR REPUTE. EG – COMPARATIVE ADVERTISEMENT

DESCRIPTIVENESS. EG – COOLAIR FOR AIR CONDITIONERS

ACTS NOT CONSTITUTING INFRINGEMENTUSAGE SUBJECT TO CONDITIONS AND

LIMITATIONS

RESALE OF GOODS OR SUPPLY OF SERVICES ON WHICH MARK APPLIED AND NOT REMOVED EG – PARALLEL IMPORTATION

ACTS NOT CONSTITUTING INFRINGEMENT

USE ON PARTS OR ACCESSORIES EG – CAR AND CAR ACCESSORIES

LAWFUL ACQUISITION OF GOODS WITH TRADEMARK

MCDONALDS V MCCURRYMCDONALDS -RIGHT CLAIMED OVER THE WORD “MC”SIMILAR SERVICES- BOTH IN RESTAURANT BUSINESSMCCURRY - “MC” / “MAC” IS A COMMON NAME OF A

PERSON, USED COMMONLY IN BUSINESS ACROSS VARIOUS DOMAINS

INFRINGEMENT?NO

COURT HELD HONEST PRACTICE. NOT TAKING UNFAIR

ADVANTAGE.

DEFENCESNO TITLE TO SUEINVALID REGISTRATION OF TRADEMARKACT DOES NOT CONSTITUTE

INFRINGEMENTCONCURRENT REGISTRATIONPRIOR USERINNOCENT INFRINGEMENTLONG DELAY, LACHES AND

ACQUIESCENCE

PASSING OFFGENERAL PRINCIPLES

MISREPRESENTATION COURSE OF TRADEPROSPECTIVE AND ULTIMATE

CONSUMERSINJURIOUS TO BUSINESS OR

GOODWILLACTUAL DAMAGE TO BUSINESS OR

GOODWILL

ELEMENTS OF PASSING OFFGOODWILL OR REPUTATION DEPENDS ON NATURE OF GOODS, QUANTUM OF

SALES, EXTENT OF ADVERTISEMENT, AREA OF USAGE

DECEPTION DEPENDS ON NATURE AND EXTENT OF

REPUTATION, FIELDS OF ACTIVITY, SIMILARITY OF MARK, CONSUMERS LIKELY TO RECEIVE

DAMAGE TO GOODWILL OR REPUTATION ACTUAL OR PROBABLE DIVERSION OF SALES, INJURIOUS ASSOCIATION,

MISAPPROPRIATION OF BUSINESS REPUTATION

HONDA MOTORS V. CHARANJIT SINGH PLAINTIFF - “HONDA” FOR MOTORSDEFENDANT – “HONDA” FOR PRESSURE COOKERS.PASSING OFF?YES

COURT HELD SUCH USE OF TRADEMARK “HONDA” 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.

MEANS ADOPTED FOR PASSING OFF

DIRECT FALSE REPRESENTATION ADOPTION OF OR COLORABLE

IMITATION OF SAME TRADEMARK ADOPTION OF COMPLETE OR ESSENTIAL

PART OF RIVAL TRADER’S NAME – DUNKIN DONUT V DUNKEN TYRE

DEFENCESNON DISTINCTIVENESSDELAY, LACHES, ACQUIESCENCE,

MISREPRESENTATION OF FACTS OR FRAUDULENT TRADE

GOODS AND BUSINESSES TOTALLY DIFFERENT

BONAFIDE USEISOLATED INSTANCE

THREAT OF LEGAL POCEEDINGS AND TRADE LIBELTHREAT LIBEL SUIT MAY BE FILED ONLY FOR THREAT FOR

INFRINGEMENT OF REGISTERED MARK

REMEDIES CONTI…CIVIL – INJUNCTION, DAMAGE, PROFIT

CRIMINAL – IMPRISONMENT,FINE, BOTH

ADMINISTRATIVE – ANTON PILLAR ORDER, MAREVA INJUNCTION

OFFENCESFALSIFYING TRADEMARKFALSELY APPLYING A TRADEMARKMAKING OR POSSESSING INSTRUMENTS FOR

FALSIFYING TRADEMARKAPPLYING FALSE TRADE DESCRIPTIONAPPLYING FALSE INDICATION OF COUNTRY OF

ORIGINTAMPERING WITH AN INDICATION OF ORIGINCAUSING ANY OF ABOVE

OFFENCES CONTINUEDSELLING GOODS OR POSSESSING OR

EXPOSING FOR SALE OF GOODS FALSELY MARKED

REMOVING PIECEGOODSFALSELY REPRESENTING TRADEMARK AS

REGISTEREDIMPROPERLY DESCRIBING PLACE OF

BUSINESS AS CONNECTED WITH TRADEMARK OFFICE

FALSIFICATION OF ENTERIES IN REGISTER

THANK YOU

VINTEE MISHRA

Copyright Brain League IP Services Pvt. Ltd. 2009