Trademarks – Intellectual Property Rights Laws and Practices Important Questions

Question 1.
With reference to the relevant legal enactments, write short notes on the following :
(v) Well-known trademark
Answer:
A Well Known trademark in relation to any goods or services means a mark that has become so popular among the public which uses such goods or services such that the use of such mark in relation to other goods or services, would be likely to be taken as indicating a connection between the goods & services and the first-mentioned goods or services.

Question 2.
With reference to the relevant legal enactments, write short notes on the following:
(iii) Collective trademark
Answer :
Collective trademark – A collective trademark means a trademark distinguishing the goods or services of members of an association of persons, which is the proprietor of the mark, from those of others. The application for registration of collective mark should be accompanied with Regulations for use of the collective mark, specifying persons authorized to use the mark, conditions of membership, conditions for use of mark including sanctioning against misuse and other prescribed matters.

Question 3.
With reference to the relevant legal enactments, write short notes on the following:
(iv) Inherently distinctive marks
Answer:

A trademark acting as a sign that is capable of distinguishing the goods or services of one trading entity from another, at the very least it has to be the inherently distinctive mark.
In the case of Imperial Tobacco Co. of India v. The Registrar of Trade Marks, AIR 1977 Calcutta 413 the Calcutta High Court held that the essential conditions of a trademark in relation to goods proposed to be registered are (1) distinctive or (2) if not distinctive, or capable of distinguishing the goods as aforesaid, there may be some inherent qualities or distinguishing characteristics in the mark itself which may mark it so distinctive or capable of such distinguishing the goods of the applicant from others.

Question 4.
(a) Distinguish between the following:
(i) ‘Certification trade marks’ and ‘collective trade marks’.
Answer:
Certification trade mark – The certification trademark in relation to goods means the mark which is used to show that the goods on which the mark appears are certified by some competent person in respect of certain characteristics of the goods such as origin, mode of manufacture, quality, etc. A certification trademark can be used in addition to the user’s own trademark on his goods.
Collective Trade Marks:
Please refer 2011 – Dcc (1) (C) (iii) on page no. 189

Question 5.
(a) Distinguish between the following:
(ii) ‘Trade mark’ and ‘certification trade mark’.
Answer:
The distinction between Trade Mark and Certification Trade Mark the term Trademark has been defined under Section 2(1 )(zb) of the Trade Marks Act, 1999 as to mean a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors; and

(i) A registered trademark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and

(ii) In relation to other provisions of the Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person and includes a certification trademark or collective mark.

Certification Trade Mark:
Section 2(1 )(e) of the Trade Marks Act, 1999 defines the term certification trademark as to mean a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which is 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 from goods or services not so certified and registrable as such in respect of those goods or services in the name, as proprietor of the certification trademark, of that person.

Question 6.
(a) Distinguish between the following :
(ii) ‘Registered proprietor of a trademark’ and ‘registered user of a trademark’.
Answer:
The registered proprietor of a trademark means the person for the time being entered in the register as proprietor of the trademark. In other words, a registered proprietor is simply the person whose name appears in the register containing the name of the owner/proprietor of the trademark. According to to- the provisions of Section 37 of the Trademark Act, the proprietor has an absolute right to assign the trademark, and thus as a consequence the person to whom such rights to use the trademark arise becomes the ‘registered user’ of the trademark.

Section 49 Provides for the registration as a registered user.
Section 50 deals with the power of the registrar to vary or cancel registration as a registered user on the ground that the registered user has used the trademark otherwise than in accordance with the agreement or used in such a way that is likely to cause confusion or registered user has failed to disclose any material fact.
Section 50 empowers the registrar to require the proprietor to confirm at any time during the continuation of registration as a registered user whether the agreement on the basis of which registered user was registered is still in force and if the reply does not receive within 1 month then remove the name from the register.
Section 52 recognizes the right of the registered user to take proceedings against infringement.

Question 7.
(a) Distinguish between the following:
(iv) ‘Infringement of trade mark’ and ‘passing off.
Answer:
Infringement of trade-mark:
Section 29 of the Act states that a registered trademark is infringed by a person who, not being the registered proprietor of the trademark or a registered under thereof using by way of permitted use, uses in the course of trade a mark which is identical with, or deceptively similar to, the trademark, in relation to any goods in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark. Accordingly, in order to constitute an infringement, the act complained of must fulfill the following requirements:

the mark used by the person must be either identical with or deceptively similar to the registered trademark;
the goods in respect of which it is used must be specifically covered by the registration;
the use made of the mark must be in the course of trade in areas covered by the registration,
the user must be in such a manner to render it likely to be taken as being used as a trademark. Whenever misuse of a trademark occurs, the proprietor can either, file a civil suit or file a criminal complaint under Sec. 134, suit for infringement, etc., to be instituted before District Court of the Act. After examination of the complaint and in some cases after verification by the complainant, the Court issues an order directing the Crime Branch of the Police to search and seize offending goods, labels, and other materials.

Wherever there is a slavish imitation of a trademark, it is advantageous to resort to criminal complaints rather than undergo the long and cumbersome process of a civil suit. The advantage of a criminal complaint is that it. has immediate effect i.e., the premises of the suspected parties manufacturing, storing, selling, or offering for sale spurious goods, can be raided and the spurious goods can be seized. The problem involved in filing a criminal complaint is to obtain the cooperation of the enforcement authorities for timely and effective action.

A criminal complaint can be filed even if a trademark is not registered. If the complainant can prove to the satisfaction of the Court that his mark enjoys sufficient reputation, the Court will issue a search and seizure order. By and large, in practice, a Magistrate is not inclined to grant the relief unless the complainant’s mark is registered.

Passing off:

Passing-off is the infringement of a trademark, which is done in a manner where the trademark is not only deceptively similar to the trademark of other companies but also creates confusion for customers.
Factors that are considered while deciding on action for passing off include the nature of the trademark, degree of resemblances between the trademark, etc.

Question 8.
(a) Distinguish between the following:
(iii) ‘Assignment of a trade mark’ and ‘transmission of a trade mark’ under the Trade Marks Act, 1999.
Answer:
1. Section 37 entitles the registered proprietor of a trademark to assign the trademark for any consideration for such assignment. Section 39 provides that an unregistered trademark may be assigned or transmitted.

2. Section 40 contains restrictions on assignments or transmission of trademarks where multiple exclusive rights would be created in more than one person in relation to the same goods & services.

3. The assignment is not deemed to be invalid if having regard to the limitation imposed, the goods are to be sold in different markets – either within India or through export.

4. Certification trademark can only be assigned with the consent of the registrar.

Question 9.
(a) Distinguish between the following:
(iv) ‘Trade mark’ and ‘certification trade mark’.
Answer:
The distinction between Trade Mark and Certification Trade Mark The term Trademark has been defined under Section 2(1 )(zb) of the Trade Marks Act, 1999 as to mean a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors; and

(1) A registered trademark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and

(2) In relation to other provisions of the Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating . or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person and includes a certification trademark or collective mark.

Question 10.
The attempt of the following :
(iv) What are the acts which do not amount to infringement of a trademark under the Trade Marks Act, 1999?
Answer:
Following are the acts which do not amount to infringement of a trademark under Section 30 of the Trade Marks Act, 1999

If there is some restriction or limitation when the trademark is registered and if the trademark is used in a manner that is outside the scope of registration.
In relation to part or accessories of goods/products.
To indicate the kind of quality of the product.

Question 11.
(c) Explain the provisions of the Trade Marks Act, 1999 regarding infringement of registered trademarks.
Answer:
Section 29 enumerates the grounds which constitute an infringement of a trademark. When a trademark is used by a person who is not entitled to use such a trademark under the law, it constitutes infringement. A trademark is infringed if :

The mark is identical and is used in respect of similar goods or services.
The mark is similar to registered trademark and there is an identity of goods & services covered by trademark.
The trademark is identical and is used in relation to identical goods or services and that such use is likely to cause confusion on the part of the public. Advertising of a trademark to take unfair advantages also constitute an infringement of a trademark. Where the registered trademark consists of words, the spoken use of such words as well as a visual representation for promoting the sale of goods would constitute an infringement of the trademark.

Question 12.
(a) What are the circumstances under which a registered trademark is deemed to be infringed under the Trade Marks Act, 1999.
Answer:
Please refer to 2008 – Dec [4] (c) on page no. 196

Question 13.
(c) Mention the provisions of the Trade Marks Act, 1999 relating to the assignment and transmission of registered trademarks.
Answer:
Please refer 2012 – Dec [3] (a) (iii) on page no. i94

Question 14.
(c) Discuss the provisions of the Copyright Act, 1957 relating ‘ to infringement of copyright.
Answer:
Section 51 of the Copyright Act, 1957 contemplates a situation in which copyright shall be deemed to be infringed. This Section says that a copyright is infringed when any person without a license granted by the owner of the l copyright or the Registrar of Copyright or in contravention of the conditions of a license so granted or of any condition imposed by a competent authority, does

1. Anything for which the exclusive right is conferred upon the owner of the copyright, or

2. Permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work unless he was not aware and had no reasonable ground for believing that such communication would be an infringement of copyright.

3. When any person (i) makes for sale or hire or lets for hire or by way of trade display or offers for sale or hire, or (ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or (iii) by way of trade, exhibits in public, or (iv) imports into India any infringing copies of the work.

However, the import of one copy of any work is allowed for private and domestic use of the importer. Explanation to Section 51 clarifies that the reproduction of literary, dramatic musical, or artistic work in the form of cinematograph film 1 shall be deemed to be an infringing copy.

Question 15.
(v) State the absolute grounds for refusal of registration of trademarks.
Answer:
The absolute grounds for the refusal for registration are

The trademark is devoid of any distinctive characteristics.
The trademark designates the kind, quality, quantity, etc.
The mark has become customary in the current language.

Question 16.
Telly Toy brought into the market a play toy named “Jump Bhola”, a spring balance, in which children can stand on and jump. It became very popular among the kids. The spring was, however, made up of plastic, and hence it had many practical problems. Mera Khilona, another competitor company, came up with a similar toy with a different name “Jump Bheem” made of a material that solved all the practical problems that “Jump Bhola”, had.
Keeping the above in view, answer the following:
(1) Can Mera Khilona claim patent protection for its product?
(2) Assuming that Mera Khilona adopted the same logo and style of writing as that of Telly Toy, can Mera Khilona claim trademark protection for its product?
Answer:
(1) What is Patent
A patent is an exclusive right granted to a person who has invented a new and useful article or an improvement of an existing article or a new process of making an article. The exclusive right is to manufacture the new article invented or manufacture an article according to the invented process for a limited period. During the term of the patent, the owner of the patent, i.e. the patentee can prevent any other person from using the patented invention.

The invention must be New and Useful It is a fundamental principle of Patent Law that a patent monopoly is granted only for inventions that are new and useful and which have industrial application. This is embodied in the definition of “invention”. The question of whether a particular invention is new and useful is often extremely difficult to decide as it depends upon the state of the prior art in the particular field which includes prior publication on the subject and prior user.

Invention
As per Section 2(1 )(j) of the Patents Act, 1970: ‘Invention’ means a new product or process involving an inventive step and capable of industrial application.
Under Section 2(1)(ja) of the Patents Act, 1970: ‘Inventive step’ means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both, and that makes the invention not obvious to a person skilled in the art.
As per Section 2(1 )(l) of the Patents Act, 1970: New invention’ means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of a patent application with complete specification, i.e. the subject-matter has not fallen in the public domain or that it does not form part of the state of the art.

Subject — Matter of Invention
The question of whether there is an invention is a question of fact in each case. A new and useful application of an old principle may be a good subject matter. An improvement on something known may also afford subject -matter; so also a new combination of different matters already known. A patentable combination is one in which the component elements are so combined as to produce a new result or to arrive at an old result in a better or more expeditious or more economical manner.

Improvements
The definition of the invention includes within its scope any new and useful improvement of any manner of manufacture, article, or substance whether patented or otherwise. But the improvement in order to be patentable must independently satisfy the test of the invention.

In the present case, M/s Mera Khilona come up with the same Toy but with a material that solved the pre-existing practical problem, and hence with improvements qualifying the test of invention Mera Khilona can claim Patent in the present matters.
(ii) The law of trademark, practically all over the world is based on three broad concepts:

(1) Distinctiveness or distinctive character or capable of distinguishing,
(2) Deceptive similarity or similarity or near resemblance of marks and
(3) Same descriptive or similarity of goods. The purpose of the Act, as stated in the preamble, is to provide for the registration and better protection of trademarks for goods and services and to prevent the use of fraudulent marks. In consonance with this object the following fundamental principles of trademark law are embodied in the various provision of the Act:

Since registration confers on the proprietor a kind of monopoly right over the use of the mark, which may consist of a word or symbol legitimately required by other traders for bona fide trading or business purposes, certain restrictions are necessary on the class of words or symbols over which such monopoly right may be granted. This principle is recognized in the qualifications for registration laid down in Section 9. Registration of a trademark should not interfere with the bona fide use by other persons of names or words in ordinary usage. This principle is embodied in Section 13 and Section 3.

Property rights in a trademark acquired by use are superior to similar rights obtained by registration under the Act; this is clear from the preamble which refers to “better protection of trademarks”, thereby necessarily implying the existence and availability of some protection under common law. It, therefore, follows that prior users of trademarks should be protected against any monopoly rights granted under the Statute. This principle is enacted in Section 34.

There are obviously two main interests to be protected when a mark is presented for registration. There is first the interest of the public. A trademark ought not to be registered if its use will be apt to mislead that public as to the origin of the goods they are purchasing.
There are also the interests of other existing traders who are entitled to object if the use of the trademark proposed for registration will be calculated to enable the applicant’s goods to be passed off on the public as such other traders goods. These interests are protected by
Sections 9 and 11. In view of the above M/s Mera Khilona will not be able to claim trademark protection for its products as it is likely to create confusion among the general public and customers as the conflicting trademark being in the same business.

Question 16.
Explain ‘deceptive similarity of a trademark’ with example.
Answer:
The deceptive similarity of Trade Mark is that given Jwo trademarks are such as to their nature that it is likely to deceive the public or case confusion. The following examples will clarify the position of deceptive similarity :

Lakshmandhara and Amrit Dhara are deceptively similar.
“Simul” is likely to cause confusion and is Deceptively similar to “Cibatul”.
“Trevicol” was held to have Phonetically deceptive similarity to “FEVICOL”.
In Cadila Healthcare Ltd. Vs. Cadila Pharmaceutical LTD., the Supreme Court held that in an action for passing off on the basis of an unregistered trademark generally for deciding the question of deceptive similarity the following factors are to be considered:
The nature of the marks i.e. whether the marks are word marks or. label marks or composite marks, i.e. both words and label works.
The degree or resegnbleness between the marks, phonetically similar and hence similar in idea.
The nature of the goods in respect of which they are used as trademarks;
The similarity in the nature, character, and performance of the goods of the rival traders;
The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods;
The mode of purchasing the goods or placing orders for the goods; and
Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. Weightage to be given to each of the aforesaid factories depends upon facts of each case and the same weightage cannot be given to each factor in every case.

Note: “In answers to the questions based on the case study, the students may write any other alternative answer with valid reasoning.”

Question 17.
What rights are conferred by registration of a Trade Mark?
Answer:
Registration of a Trade Mark confers the following rights on the registered proprietor:
(1) It confers on the registered proprietor the exclusive right to the use of the Trade Mark in relation to the goods or services in respect of which the Trade Mark is registered.

(2) If the Trade Mark consists of several matters, there is an exclusive right to the use of the Trade Mark taken as a whole. .

(3) It entitles the registered proprietor to obtain relief in respect of infringement of the Trade Mark in the manner provided by the Trade Marks Act, 1999 when a similar mark is used on (a) same goods or services, (b) similar goods or services, (c) in respect of dissimilar goods or services.

(4) Registration of a Trade Mark forbids every other person (except the registered unregistered permitted user) to use or to obtain the registration of the same Trade Mark or a confusingly similar mark in relation to the same goods or services or the same description of goods or services in relation to which the Trade Mark is registered.

(5) After registration of the Trade Mark for goods or services, there shall not be registered the same or confusingly similar trademark not only for the same goods or services but also in respect of similar goods or services.

(6) Moreover, after registration of the Trade Mark for goods or services, there shall not be registered the same or confusingly similar trademark even in respect of dissimilar goods or services.

(7) Registered Trade Mark shall not be used by anyone else in business papers and in advertising. The advertising should not be detrimental to the distinctive character or reputation of the Trade Mark.

(8) There is a right to restrict the import of goods or services marked with a Trade Mark similar to one’s Trade Mark.

(9) There is a right to restrain the use of the Trade Mark as a trading name or part of trade name or name of business concern dealing in the same goods or services.

Question 18.
(a) ‘Passing off is a common tactic to use a similar trademark.

Describe the typical actions and trademark violation in ‘passing off an action of publicizing a body called ‘The University of Universal Learning’.
Is it possible to resort to ‘passing off the petition in an unregistered trademark?
Does the Trade Marks Act, 1999 govern an act of ‘passing off? If yes, why, and if no, why not?

Answer:
(1) A cause of action for passing off is a form of intellectual property enforcement against the unauthorized use of a mark which is considered to be similar to another party’s registered or unregistered trademarks, particularly where action for trademark infringement based on a registered trademark is unlikely to be successful (due to the differences between the registered trademark and the unregistered mark). Passing off is a form of common law, whereas statutory law as such provides for enforcement of registered trademarks through infringement proceedings.

Passing off and the law of registered trademarks deal with overlapping factual situations, but deal with them in different ways. Passing off does not confer monopoly rights to any names, marks, get-up. It does not recognize them as property in its own right. Instead, the law of passing off is designed to prevent misrepresentation in the course of trade to the public.

A civil suit can be initiated under the law of passing off in respect of an unregistered trademark. The suit for passing off can be initiated either in the District Court or in the High Court depending on the valuation of the suit. The suit can be at the place where the rights holder or one of the rights holders actually and voluntarily reside or work for gain or carries on business. In the given case, a civil suit can be initiated against the University of Universal Learning for the action of passing off.

(2) The Indian trademark law statutorily protects trademarks as per the Trade Marks Act, 1999 and also under the common law remedy of passing off. The passing off is a common law of tort that can be used to enforce unregistered trademark rights. Passing off action arises when an unregistered trademark is used by a person who is not the proprietor of the said trademark in relation to the goods or services Of the trademark owner. It is a tort and actionable under common law.

Section 27 of the Trade Mark, 1999 provides that no infringement action will lie in respect of an unregistered trademark but recognizes the common law rights of the trademark owner to take action against any person for passing off their goods/ services.

(3) As per Section 11 (3) of the Trade Marks Act, 1999, a trademark shall not be registered if, or to the extend that, its use in India is liable to be prevented:

by virtue of any law, in particular, the law of passing off protecting an unregistered trade mark used in the course of trade; or –
by virtue of law of copyright.

Section 134 of the Trade Marks Act, 1999 provides that no suit for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff’s trade mark, whether registered or unregistered shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit. Further Section 135 states that the relief which a Courl may grant in any suit for infringement or for passing off referred to in Section 134 includes injunction (subject to such terms, if any, as the Court thinks . fit) and 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 infringing labels and marks for destruction or erasure.

With the above provisions, it can be clearly understood that the action of passing off has been taken care in the provisions of Trade Marks Act, 1999. Since, there is very minute difference between passing off and infringement and in the common parlance the passing, off and infringement is supposed to one and the same thing. Therefore, the Act has to take care the provisions of passing of. The difference between action in passing and action in infringement had been clearly explained by the Hon’ble Supreme Court in the case of Kaviraj Pandit Durga Dull Sharma v Navratha Pharmaceutical Laboratories, AIR 1965 SC 980.

Question 19.
“There is no legislation which explicitly refers to dispute resolutipn in connection with domain names. This, however, does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing-off.” Discuss.
Answer:
There is no legislation, which explicitly refers to dispute resolution in connection with domain names. Although the operation of the Trade Marks Act, 1999 itself is not extra territorial and may not allow for adequate protection of domain names, yet this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off. Passing off is a form of tortuous action based on the object to protect the goodwill that a trader has in his name, unlike an action for infringement of a trademark where a trader’s right based on property in the name as such. The law of passing off applies whenever there is the prospect of confusion between marks or where there is the prospect of confusion of identity through the unauthorized use of similar marks.

The protection of domain names in India has been in some ways, a favourable one, because the Courts in India have been more patient towards the concept of providing legal protection to domain names as that to trademarks through the instrument of passing off. Domain names serve the same functions as a trademark and are not mere addresses or like finding a number on the internet and therefore, it is entitled to equal protection as trademarks. Domain names are entitled to the protection as trademark and trademark law applies to the activities on internet and the mere fact that the petitioner has no registered domain name by itself may not stand in the way of passing off action.

Question 20.
Only a registered trade mark owner can give notice of opposition. Discuss.
Answer:
As per provisions of Section 21 of the Trade Marks Act, 1999 this statement is not correct. Section 21 (1) provides that ‘.‘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 by the Registrar, of opposition to the registration”. Therefore, there is no requirement of the person submitting his opposition to the registration of a trademark to be the registered owner of such trademark. Having commercial or personal interest is also not necessary. Moreover, his bonafides are also immaterial for the purposes of submitting opposition to the grant of a trademark.

The opponent does not necessarily have to be a registered proprietor of a trademark. He can be a purchaser, customer or a member of the public likely to use the goods. The rationale behind this is that the opponent is not only representing himself but the public at large because having two similar marks in the market can only result in confusion amongst the public at large.

Every opposition shall be filed in compliance with the provisions of Section 21 in relevant format and form, along with prescribed fees.

Question 21.
Read the following case and answer the questions given at the end:
One Shri Rama Krishna Bahadur the appellant in the present case, trading aS M/s Om Perfumery, Makerganj, Mahatma Gandhi Road, Bhubaneshwar made an application to the Registrar of Trade Marks to register a trademark by Digitally signed by name “RAMAYAN” with the device of crown in Class 3 in respect on incense sticks (agarbattis, dhoops) and perfumeries etc.,

One Shri Laxman Singh the respondent herein, was a dealer for the sale of the products of the appellant and was also trading as M/s Badshah Industries, Shitkohra, Purohit Colony, Bhubaneshwar. The respondent herein filed a Notice of opposition to oppose the registration of aforesaid trademark under Sections 9, 11(a), 11(b), 11(e), 12(1), 12(3) and 18(1) of the Trademarks Act, 1999 claiming that the impugned mark, being the name of a religious book, cannot become the subject matter of monopoly for an individual.

The appellant was in the business of manufacturing, trading and marketing of incense sticks since 1981 and the respondent was a dealer of the appellant. The goods under the trademark “RAMAYAN” have been advertised by him through various means including the publication of cautionary notices in newspapers, extensive use, wide advertisement and the excellent quality of the products. The trademark “RAMAYAN” and the carton in which the products are sold has become distinctive in such a manner that use of the same or similar trademark or carton by any other person will cause confusion and deception in the trade and amongst the public. The sale was done through a network of dealers and distributors. The respondent was one of the dealers of the appellant. After the termination of dealership, the respondent started selling incense sticks under the trademark “RAMAYAN” written in the same style and manner.

The Assistant Registrar of Trade Marks, after holding that the impugned trademark consists of device of crown and the word “RAMAYAN” is capable of distinguishing the goods and is not included in the list of marks not registrable under the Act, by order dated 31s’ March, 2004, dismissed the application filed by the respondent.

Taking in to account the trademark, being the name of a religious book, cannot be a sufficient ground for refusal of registration under Section 9(2) of the Act and is not based on evidence’ on record that the feelings of any section of the Hindus having been hurt by its use in relation to incense sticks. Further it was submitted that the Assistant Registrar of Trade Marks rightly held that the impugned trademark consists of device of crown and the word is capable of distinguishing the goods of the appellant and the trademark is not included in the list of marks not registrable under the Act. It was further claimed that it has already been proved before the Court of Assistant Registrar that the appellant was using the trademark since 1981 and hence, is the prior user in comparison to the respondent.

Being aggrieved by the other passed by the Assistant Registrar, the respondent preferred an appeal before the Intellectual Property Appellate Board. On January 10th, 2005 the Board, set aside the other passed by the Assistant Registrar of Trade Marks (31-03-2004). Aggrieved by the other passed by the IPAB (10-01 -2005), the appellant has filed this appeal by way of special leave before the Supreme Court of India. Appellant contended that it was unfortunate the Board, misconstrued the observations of the Standing Committee in the 8th Report on the Trade Marks Bill, 1993. It was also contended that the Board erred in law while setting aside the judgement of the Assistant Registrar of Trade Marks while holding adversely about its distinctiveness, the mark causing deception and not having been used in an honest manner.

The respondent contended that the impugned mark, being name of a religious book, cannot become the subject matter of monopoly for an individual. He further contended that the mark “RAMAYAN” is not a distinctive mark and is devoid of any distinctive character. The mark is capable of distinguishing the goods of one person from those of another. It was also contended that the mark “RAMAYAN” is not registrable since it is name of a famous and well known religious book. It was also claimed that more than 20 traders in Patna and many more are using the trademark and thus it has become public juris. It was further submitted that the impugned mark is identical with the respondent’s mark “BADSHAH RAMAYAN” which is pending registration and the impugned registration will cause harassment to other traders and purchasing public would be bound to be confused and deceived. He further added that his application for the registration of the same trademark claiming user since 5tM November, 1986 is pending for registration.

The Court observed that the word “RAMAYAN” represents the title of a book written by Maharishi Valmiki and is considered to be a religious book of the Hindus in our country. Thus, using exclusive name of the book “RAMAYAN”, for getting it registered as a trademark for any commodity could not be permissible under the Act. If any other word is added as suffix or prefix to the word “RAMAYAN” and the alphabets or design or length of the words are same as of the word “RAMAYAN” then the word “RAMAYAN” may lose its significance as a religious book and it may be considered for registration as a trademark.

However, in the present case, the Court finds that the appellant had applied for registration of the word “RAMAYAN” as a trademark. It also finds that in the photographs, after adding “OM’s” to the word “RAMAYAN”, at the top and in between “OM’s and RAMAYAN”, the sentence, “Three Top Class Aromatic Fragrance”, is also written. Thus, it is not a case that the appellant is seeking the registration of the word “OM’s RAMAYAN” as a trade mark. Further, from the photographs, it also find that the photographs of Lord Rama, Sita and Lakshman are also shown in the label, which is a clear indication that the appellant is taking advantage of the Gods and Goddesses which is otherwise not permitted.

There are many holy and religious books like Quran, Bible, Guru Granth Sahib, Ramayan etc., to name a few. The answer to the question as to whether any person can claim the name of a holy or religious book as a trade mark for his goods or services marketed by him is clear ‘NO’. In relation to the artistic work said to have been created, there is not doubt that both the marks are identical in design, colour, scheme and the reproduction of photographs is in such a manner that an ordinary buyer would reasonably come to a mistaken conclusion that the article covered by one brand can be the article covered by the other. Both the parties have claimed to be manufacturing units engaged .in certain goods.

The respondent claimed that though he had been in the business since 1980, he had developed and published the artistic work in 1986 and has also been using the mark as a trademark and claiming use since 1986 whereas the appellant herein claimed use of the trademark since 1987. However, by filing an application to the concerned authority, the appellant has claimed the use since 1981. Further, in various pleadings in the Title Suits filed by the respondent herein, the appellant herein has admitted the use and publication of the artistic mark of the respondent before the date of claim of the first use by the appellant, that is, 1987. From these facts, it is clear that the respondent herein was using the artistic mark earlier in point of time to that of the appellant herein.

In view of the foregoing discussion, the Supreme Court of India do not find any irregularity in the order passed by the Intellectual Property Appellate Board consequently, the appeal fails and is accordingly dismissed.

Questions:
(a) Analyse the judgement of the Supreme Court. Find out the reasons and provisions of law applied by the Court in giving such judgement.
(b) Do you agree with the order passed by the Assistant Registrar of Trademarks Registry? Explain the concept of domain names mentioned under trademarks law.
(c) Examine the requisites for registration, duration and renewal of trademark as per trademark legislation.
(d) Discuss in brief various kinds of mark and mention the provisions in relation to registered user under the Trademarks Act, 1999.
Answer:
(a) In the present case, the Supreme Court of India while taking into
account the following facts upheld the judgement of the I PAB:

1. The court observed that the word “RAMAYAN” represents the title of a holy book written by Maharishi Valmiki and is considered to be a religious book of the Hindus in our country. Thus, using exclusive name of the book “RAMAYAN”, for getting it registered as a trade mark for any commodity coutd not be permitted under the Act. If any other word is added as suffix or prefix to the word “RAMAYAN” and the alphabets or design or length of the words are same as of the word “RAMAYAN” then the word “RAMAYAN” may lose its significance as a religious book and it may be considered for registration as a trade mark.

2. In the present case, the court finds that the appellant had applied for registration of “RAMAYAN” as a trade mark for his business. It also finds that in the photographs, after adding “OM’s” to the word “RAMAYAN”, at the top and in between “OM’s and RAMAYAN”, the sentence, “Three Top Class Aromatic Fragrance”, is also written. Thus, it is not a case that the appellant is seeking the registration of the word “OM’s RAMAYAN” as a trade mark. Further, from the photographs, it also found that the photographs of Lord Rama, Sita and Lakshman are also shown in the label which is a clear indication that the appellant is taking advantage of the Gods and Goddesses which is otherwise not permitted.

3. There are many other holy and religious books like Quran, Bible, Guru Granth Sahib, Ramayan etc., to name a few. According to the Court, no person can claim the name of a holy or a religious book as a trade mark for his goods or services.

4. In relation to the creation of artistic work, there is no doubt that both the marks are identical in design, colour, scheme and the reproduction of photographs is in such a manner that an ordinary buyer would reasonably come to a mistaken conclusion that the article covered by one brand is the article covered by the other. Both the parties have claimed to be the manufacturing units in respect of certain goods.

5. The impugned mark, being the name of a religious book, cannot become the subject matter of monopoly for an individual.

6. Further, the respondent claimed that though he had been in the business since 1980, he had developed and published the artistic work in 1986 and has also been using the mark as a trademark and claiming use since 1986 whereas the appellant herein claimed use of the trademark since 1987. However, by filing an application to the concerned authority, the appellant has claimed the use since 1981.

Section 9 and 11 of the Trade Marks Act, 1999 prohibits the registration of certain marks as trade mark. In case of a mark which hurts the religious sentiments of any class or section of the citizens of India has been laid down as an absolute ground for refusal of registration of a trade mark under section 9(2)(b) of the Act. It comes under the absolute grounds for refusal of registration of a trade mark. Section 11 deals with the relative grounds and section 12 states regarding honest concurrent use or other special circumstances. These two sections also deal with certain exceptions to the main rule. The only question before the SC was whether the “registration of the word Ramayan as a trade mark, being the name of a Holy Book of Hindus, is prohibited under Section 9(2) of the Trade Marks Act, 1999“

Answering this question the court emphatically held “The answer to the question as to whether any person can claim the name of a holy or . religious book as a trademark for his goods or services marketed by him is clearly NO”. Also the court very specifically adds that if there was a – prefix or a suffix to the word Ramayan which was of the same “length of the word Ramayan then Ramayan may lose its significance as a religious book and it make be considered for registration as a trademark”.

(b) No, the order passed by the Assistant Registrar is not proper. The impugned trade mark consists of device of crown and the word “RAMAYAN” is capable of misleading, causing confusion and deception in the minds of the public.

Concept of Domain Names:
Domain names are the human-friendly forms of Internet addresses. A domain name is a unique name that identifies a website. For example, the domain name of the Tech Terms – v Computer Dictionary is “techterms.com.” Each website has a domain name that serves as an address, which is used to access the website. Whenever we visit a website, the domain name appears in the address bar of the web browser. Some domain names are preceded by “www” (which is rid! pall of the domain name), while others omit the “www” prefix. All domain names have a domain suffix, such as, .com, .net, or .org. The domain suffix helps identify the type of website the domain name represents. For example, “.com” domain names are typically used by commercial website, while “.org” websites are often used by non-profit organizations. Some domain names end with a country code, such as “.dkl (Denmark) or “.se” (Sweden), which helps identify the location and audience of the website.

When we access a website, the domain name is actually translated to an IP address, which defines the server where the-website is located. This translation is performed dynamically by a server called the Domain Name Server (DNS). Domain names are formed by the rules and procedures of the Domain Name System (DNS). Technically, any name registered in the DNS is a domain name.

It is common-place for traders to have their electronic mail address’ and use the same in respect of their goods /services as trade names. In other words, the domain name is being used as a trade name or trade mark, and the Registrar will, subject to the usual criteria of the Act, permit domain names to be registered as trademarks, if otherwise registerable.

Elements of the domain name such as “.com” or “.co.in” are considered to be totally non-distinctive, much in the same way as “Ltd” and “Pic”. As . a general rule, one should consider whether the remainder of the mark is descriptive or non-distinctive; if so, there is likely to be an objection under Section 9(1) (a) of the Act.
The rights to take rigorous and drastic actions against any infringement cases connected with the registered and protected domain name within the Indian jurisdictions, are essentially covered by these rights granted to the registrant of domain name by any regional Trademarks Office of India. In this connection, the opinion and judgment of the law courts of India, essentially including the Apex Court, are expressed explicitly during the handling of many domain-name related law cases, particularly the cases of Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd, and the Tata Sons Ltd. vs Manukosuri and Others.

(c) Within three months of the publication of the trade mark in-the Trade Marks Journal, should the trade mark not be opposed by a third party, it will proceed for registration and the Trade Marks Registry will accordingly issue a registration certificate.

Requisites of Registration:
The registration of a trade mark confers upon the owner the exclusive right to the use of the registered trade mark and indicate so by using the symbol (R) in relation to the floods or services in respect of which the mark is registered and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar mark due to special circumstances such exclusive right does not operate against each other.

The register of trade mark currently maintained in electronic form contains inter alia the trade mark the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred or disclaimers, if any; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trade mark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact.

The Trade Marks Act, 1999 does not expressly list any requisites for registration of a Trade Mark. The requirements for registration and the definition of trade mark have converged. Instead of detailing requisites for registration, grounds for refusal are listed in Section 9(1), (2) and (3) and Section 11 which conversely are requisites for registration.

Most of the substantive law laid down by the Trade & Merchandise Marks Act, 1958 remains valid and would hold the field in respect of administering the provisions of Trade Marks Act, 1999.

From previous operation of trade mark law, four categories of trade marks were made out i.e., names, signatures, words and other distinctive marks. Most of the principles relating thereto would hold good under the new dispensation too.

Now any mark which is a trade mark may be registered for any goods or services if it is not hit by any of the two categories of grounds for refusal or other specific prohibitions. The first requisite is that it should be a trade mark within the meaning of Trade Marks Act, 1999 which concept itself imports many conditions as has been mentioned earlier in the legal concept of trade mark. There emerge, many conditions from the definition of trade mark in Section 2(1)(zb). The identification and distinguishing functions performed by the trade mark must be fulfilled by the mark sought to be registered as a trade mark under the Act.
The next pre-requisite distinctive character emerges from the presence of words “capable of distinguishing goods of one person from those of others” in the definition of trade mark in Section 2(1 )(zb). A mark shall be trade mark only if, in addition to fulfilling other conditions in the definition of trade mark, it also satisfies the requirement of being a distinctive character. That distinctive character may be inherent or an acquired one. Purpose the Trademark System serves

• It identifies the actual physical origin of goods and services. The brand itself is the seal of authenticity.
• It guarantees the identity of the origin of goods and services.
• It stimulates further purchase.
• It serves as a badge of loyalty and affiliation.
• It may enable consumer to make a life style or fashion statement. Capable of Distinguishing the Goods or Services: A mark which has a direct reference to the character or quality of the goods/services is considered as inherently not capable of distinguishing. If the reference to the character or quality is only indirect or suggestive,, the mark may be considered as possessing sufficient degree of inherent capacity to distinguish.

Thus, the legal requirements to register a trade mark under the Act are: – j The mark should be capable of being represented graphically. It should be capable of distinguishing the goods or services of one undertaking from those of others.
Duration and Renewal of Trademark: Trade mark protection in India is perpetual subject to renewal of the registration after every 10 years. The application for renewal can be filed six months before the expiry of the validity period of the trademark.

Section 25 of the Act allows registration of a trade mark for a period of 10 years. In keeping with the generally accepted international practice and to reduce the work-load of the Trade Marks Office, section 25 allows renewal of registration for successive periods of 10 years, from the date of the original registration or the last renewal. With a view to facilitating ‘ renewal of registration, section 25(3) provides for a grace period of six months for payment of renewal fee after expiry of registration, subject to the payment of the prescribed surcharge. Sub-section (4) provides for restoration of the trademark to the register and renew of the registration on payment of renewal fees.

Unlike patents, copyright or industrial designs, trade mark rights can last indefinitely if the owner continues to use the mark and seek its renewal. However, if a registered trade mark is not renewed, it is liable to be removed from the register. An application for restoration of the expired trademark can filed to the Registrar within one year from the expiration of the last registration of the trademark under Section 25(4) of the Trademark Act, 1999 accompanied by the prescribed fee. The Registrar shall while considering the request for restoration of the expired trademark look at the interest of other affected persons.

Upon the restoration of the expired trademark, a notice must be sent by ( the Registrar to proprietor regarding such restoration and the same must be advertised in the official Journal. After the advertisement is made in the Trademark Journal regarding the restoration of the expired trademark, the Registrar invites for objection against restoration. If no such objection is made then the trademark is restored in the register for the next 10 years. In case of any objection, the Registrar conducts hearing and after hearing both the parties it passes a decision on whether to restore the trademark or not.

If somebody else applies for registration of the expired trademark, then the proprietor has to file an objection against the third party who has applied for registration of the expired trademark.

Restoration of an expired trademark protects the proprietor from duplicity and enables to maintain the exclusivity of the brand. If the expired trademark is not restored then the brand opens up in the market and can be exploited by anyone.- Thus, in order to protect the rights of the proprietor that are attached with the trademark, it is necessary to restore the trademark. Thus, it can be said that the Trademark Act, 1999 and Trademark Rules of 2002 (further amended in 2013) provides the liberty to the proprietor of the trademark that even if the trademark has expired he can file an application for restoration of the expired trademark at any point of time only if the Registrar has not issued a notice to the proprietor in FORM 03.

Should the rights holder of a trade mark come across a trade mark that is deceptively similar to their mark and which has been published in the Trade Marks Journal, they can oppose to the grant of the impugned mark within three months of the publication of the journal. A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. Priority in adoption and use of a trade, mark is superior to priority in registration [Consolidated Foods Corporation v. Brandon & Co. Pvt. Ltd., AIR 1965 Bom 35].

In Ramdev Food Products (P) Ltd. v. Arvind Bhai Rambai Patel, 2006 (8) SCC 726, the Apex Court held that the registration of trade marks is envisaged to remove any confusion in the minds of the consumers. If, thus, goods are sold which are produced from two sources, the same may lead to confusion in the mind of the consumers. In a given situation, it may also amount to fraud on the public. A proprietor of a registered trademark indisputably has a statutory right thereto.

In the event of such use by any person other than the person in whose favour the trade mark is registered-, he will have a statutory remedy iri terms of section 21 of the Trade & Merchandise Marks Act, 1958. Ordinarily, therefore, two people are not entitled to the same trade mark, unless there exists an express licence in that behalf.
Further the Supreme Court in Commissioner of Income-tax v. Finlay Mills Ltd., AIR 1951 SC 464, held that the expenditure incurred on registration of trade mark is capital expenditure thus allowable to deduction under the Income-tax Act.

(d) Kinds of Trademark: Trademarks can be divided into the following categories: Service Mark is the same as a trade mark except that it identifies and distinguishes the source of a service rather than a product. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services. It includes service oriented establishments, such as, banking, communication, education, finance, insurance, boarding, lodging, construction, repairs etc.

Certification Trade Mark means, a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of its origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registrable as such under Chapter IX in respect of those goods or services in the name, as proprietor of the certification trade mark, of that person (Section 2(1 )(e) of the Act). Example are AGMARK, HALLMARK, 151 Market al.

Collective Markis a trade mark which distinguishes the goods or services of members of an association of persons not being a partnership within the. meaning of the Indian Partnership Act, 1932 which is the proprietor of the mark from those of others. It is provided for the benefit of members of an association of persons (but not partnership) and such inclusion of ‘collective mark’ is intended to benefit the traditional Indian family trademarks [Section 2(1 )(g)].

Well-Known Trademark as per Section 2(1)(zg) of the Trade Marks Act, 1999 refers to a trade mark which in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives 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. A mark, which has been designated as a well-known mark, is accorded stronger protection.

The Act casts an obligation on the Registrar to protect a well-known mark against an identical or similar trade mark.

Unconventional Trademarks: Unconventional trademarks are those trademarks which get recognition for their inherently distinctive feature. Unconventional trademarks include the following categories:

Colour Trademark : If a particular colour has become a distinctive feature indicating the goods of a particular trader it can be registered as a trademark. For example, Red Wine.

Sound Marks: Signs which are perceived by hearing and which is distinguishable by their distinctive and exclusive sound canbe registered as sound marks. For example, Musical notes.

Shape Marks: When the shape of goods, packaging have some distinctive feature it can be registered. For example, Ornamental Lamps. Smell Marks : When the smell is distinctive and cannot be mistaken for an associated product it can be registered as a smell mark. For example, Perfumes. On the whole, a trademark is an important means to protect the goodwill and reputation of a Business. While filing a trademark, the applicant can choose any aforementioned types of trademarks based on the nature of mark.

Provisions Related to Registered User under Trade Marks Act, 1999 Provisions relating to registered users are discussed in sections 48 to , 54 of the Act. Section 50 empowers the Registrar to vary or cancel registration as registered user on the ground that the registered user has used the trade mark otherwise than in accordance with the agreement or in such a way as to cause or likely to cause confusion, or deception or that the proprietor/registered user misrepresented or has failed to disclose any material facts for such registration or that the stipulation in the agreement regarding the quality of goods is not enforced or that the circumstances have changed since the date of registration, in such a way that at the date of such application for cancellation they would not j have justified registration of the registered user, etc.

However, Registrar has been put under an obligation to give reasonable . opportunity of hearing before passing orders for cancellation of registration. Section 51 empowers the Registrar, at any time during the continuance of the registration of the registered user, by a notice in writing, to require the registered proprietor to confirm to him within one month, whether the agreement on the basis of which registered user was registered is still in force, and if such confirmation is not received within a period of one month, the Registrar shall remove the entry thereof from the Register in the prescribed manner. The Act also recognises the right of registered user to take proceedings against infringement.

Section 54 provides that the registered user will not have a right of assignment or transmission. However, if is clarified that where an individual registered user enters into partnership or remains in a reconstituted firm, the use of the mark by the firm would not amount to assignment or transmission.

Question 22.
Read and analyze the following case study and answer j the questions given at the end : A Dutch SME produces their additives in China under the name Roi Jaguar. Their General Manager in China is tasked with making sure that the brand is protected in accordance with Chinese law. At one point, the Chinese General Manager leaves the company. Soon after he leaves, the Dutch SME discovers a very similar product on the Indian market called Roi Lynx. Both brands thus exist with the same word followed by the name of a species of big cat.

After some research, the Dutch SME, finds out that after quitting the job, its former General Manager has started competing against it with very similar products. Also, after consulting the China IPR SME Helpdesk, the SME finds out that the former General Manager has registered the trademarks of the company in China in his own name instead of under the Dutch company in v China.

The situation escalates due to some other related outstanding issues for which the former General Manager still demands certain payments. The Dutch company refuses, so the former General Manager goes to the local Authority of Industry and Commerce (AIC) and shows them the trademark certificate of Roi Jaguar, which results in the AIC confiscating the infringing products of the Dutch SME that carry the name Roi Jaguar. As the Chinese trademark registration is in the name of the former General Manager, and the Dutch SME does not have the legal right to the name Roi Jaguar, the former General Manager legally closes down the business of the Dutch SME with regard to the brand Roi Jaguar.

The Trademark registration carried out by the former General Manager was done in bad-faith due to his existing relationship with the Dutch SME. The Dutch SME thus filed for a trademark cancellation as the trademark was registered in bad faith, and then subsequently applied for the trademark itself.

After first having filed the trademark cancellation, which temporarily stopped infringement of the Roi Jaguar trademark, the Dutch SME continued to produce the product, but under a different product name. Before the new product name was used, the company checked that there were no conflicting trademarks that had already been registered in China, with regard to additives for that new name. The Dutch SME then registered the wordmark, logo and the Chinese character name of the new product. Once the cancellation was concluded and the trademarks was applied for in the Dutch SME’s name, the Dutch SME was able to put its products under the Roi Jaguar name back on the market.
Lessons learned
• Be on top of trademark registrations in China, and make sure the registration of the trademarks is conducted in your own company name.*
• Draft your contracts with care and with the assistance of legal professionals and translators to make sure that all terms, conditions and obligations are clear for both parties.
Questions:
(a) How was the former General Manager successful in legally closing down the business of the Dutch SME with regard to the brand Roi Jaguar in China?
(b) Explain how was Dutch SME able to put its products under the Roi Jaguar name in Chinese market.
(c) If tomorrow the Dutch SME operates in India by registering its trademark in India and someone infringes its trademark, then how will the Dutch SME get relief in suits for infringement/passing off under the Indian law quoting relevant case law, if any.
Answer:
(a) After quitting his job the former General Manager of the Dutch SME had started competing against it with very similar products. When Dutch SME consulted the China IPR SME Helpdesk, the SME discovered the fact that the General Manager had got the trademark of the company in China registered in his own name instead of getting it registered in the name of the Dutch company in China.

The former General Manager went to the local Authority of Industry and Commerce (AIC) and showed them the trademark certificate of Roi Jaguar registered in his own name, which resulted in the AIC confiscating the infringing products of the Dutch SME that carried the name Roi Jaguar. As the Chinese trademark registration was in the name of the former General Manager, and the Dutch SME did not have the legal right to use the trade mark of Roi Jaguar, the former General Manager succeeded in getting the business of the Dutch SME closed down legally with regard to the brand Roi Jaguar.

The case study points out in the lessons learned that in China, (i) Be on top of trademark registrations in China, and make sure that the registration of the trademark is carried out in your own company’s name, (ii) Draft the contracts with care and with the assistance of legal professionals and translators to make sure that all terms, conditions and obligations are clear for both the parties.

(b) The system of international registration of Trade Marks is governed by the Madrid Agreement and Protocol, which are open to any State which is a party to the Paris Convention for the Protection of Industrial Property. The * system of international registration has several advantages for trademark owners. The Trade Mark registration carried out by the former General Manager in his own name was done in bad-faith and with mala fide intentions taking advantage of his existing relationship with the Dutch SME. The Dutch SME thus filed for a Trade Mark cancellation as the Trade Mark was registered in bad faith, and then subsequently applied for the Trade Mark in its name itself.

After first having filed the Trade Mark cancellation application, which temporarily stopped the activity of infringement of the ‘Roi Jaguar’ trademark, the Dutch SME continued to produce the product, but under a different product name. Before the new product name was used, the company checked that there were no conflicting Trade Marks that had already been registered in China, with regard to additives for that new name. The Dutch SME then got registered the word mark, logo and the Chinese character name of the new product in its own name. Once the cancellation was concluded and the Trade Mark was applied for in the Dutch SME’s name, the Dutch SME was able to put its products under the ‘Roi Jaguar’ trade name back in the market.

(c) The relief in the suit could be realized under Civil Litigation. It says that a suit can be instituted either under the law of passing off or for trade mark infringement under the Trade Marks Act, 1999 depending on whether the Trade Mark is unregistered, pending registration or registered respectively. Meaning thereby, if the Trade Mark is not registered in India then the remedy available is under the ‘Law of Passing off’ and if the Trade Mark is registered then the statutory remedy available under the Trade Marks Act, 1999 can be availed. The important aspects of the legal action are as follows:

• Jurisdiction and Venue: The suit for passing off and/or infringement can be instituted either in the District Court or in the High Court depending on the valuation of the suit and the pecuniary jurisdiction of the Courts. Apart from the pecuniary jurisdiction, the other aspect which needs to be taken care of while deciding the ( appropriate forum for the suit is the territorial jurisdiction of the Court. The suit can be filed in the Court which has territorial jurisdiction over the place where the rights holder or one of the rights holders actually and voluntarily reside or work for gain or carry on its business.

• Elements of the Complaint: In the complaint, the rights holder is required to demonstrate that: (a) the alleged infringing act involves a mark that is identical or similar to a trade mark of the rights holder;

(b) the infringing representation of a trade mark is being, used in connection with goods or services and might lead to confusion in the mind of general public regarding the origin of the infringing goods/services; (c) the unlawful act interfered with the trade mark holder’s rights of exclusive use of the trade mark and caused the rights holder consequent economic loss.

Section 135 of the Trade Marks Act, 1999 expressly stipulates that the relief which a Court may grant in any suit for infringement or for passing off referred to in Section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and 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 infringing labels and marks for destruction or erasure.
According to Section 28(1) of the Act, the registration of a trade mark ensures exclusive right to the registered proprietor to use of the registered trade mark and the right to obtain relief in respect of infringement of the trade mark. Only a registered proprietor or registered user can institute a suit for infringement against an identical or deceptively similar mark to his registered trade mark according to Section 27(1).

A registered trade mark owner does not have an exclusive right to operate the identical/ nearly similar mark against another registered trade mark owner.
In the landmark judgement Clinique Laboratories LLC and Another vs. Gufic Limited and Another, the Court held that a suit for infringement by a registered trade mark owner/proprietor is certainly maintainable against another registered trade mark owner/proprietor. It was further held that Section 124(5) of the Act also allows the grant of an interim injunction in such suits for infringement.

Question 23.
Please read the Case below carefully and answer the questions at the end in detail: PayPal Accuses Paytm of Trademark Infringement in India:
On November 18, 2016, PayPal Inc. filed an objection at the Indian Trademark Office accusing Paytm, an Indian mobile wallet company, of trademark infringement. The objection comes at the heels of the recent windfall made by the latter on account of a cash-strapped nation moving rapidly towards a cashless normal.
For six. years, Paytm had been steadily becoming a household name in middle-class India – until it really hit the jackpot on November 8,2016 when the Indian Prime Minister Narendra Modi announced demonetization of currency notes of ? 500 and 11,000 – invalidating overnight 80% of the country’s cash in circulation.

The drastic move was taken to tackle the vast amounts of unaccounted “black” money in the Indian economy that was being used for bribery, corruption, tax evasion and for funding separatists and terrorists – and has since invoked strong emotions, both in favor and against, from the media, politicos and citizens across the country.
A direct consequence to the demonetization has been an unprecedented increase in electronic transactions – with Paytm being at the forefront. Adding over half a million users a day, Paytm saw its daily transactions grow from 2.5 million to over 7 million a day and a 10-fold increase in the amount of money added to Paytm accounts in the first 14 days after the demonetization was announced.

Rapid growth in that short a time earns Paytm not only great profits and valuation, but also the attention of global competitors like PayPal. In its complaint, PayPal accused Paytm of having “slavishly adopted the,two-tone blue color scheme” of PayPal’s own logo in entirety, and especially where “The first syllable in each mark is in dark blue color and the second syllable in a light blue Color”. Further, PayPal also noted that “both marks begin with the term ‘PAY’ which consumers tend to remember more than the second syllable, with the marks being of similar length.”

The Indian Trademark law requires an applicant to publish-and advertise their logo for a period of 4 months in which objections can be raised by third parties. Paytm applied for a trademark registration on duly 18,2016 – which means its four month window expired on November 18,2016. PayPal’s last- day complaint has thus raised many an eyebrow on why a company like PayPal – with ample legal resources at hand – would wait right until the end of the window to file the complaint. Needless to say, it was only after the demonetization that PayPal felt threatened (read jealous) by the rise of Paytm in a market that until now has been ignored, underserved and/or underperformed by PayPal. It must be noted that PayPal had not registered its own trademark in India until after the demonetization -a fact that Paytm’s lawyer will undoubtedly cite at trial.

Notwithstanding the timing and PayPal’s motivations, the complaint and the subject matter do raise a few important points. The names PayPal and Paytm are similar to the extent both start with the word “Pay” – however given that both companies operate in the electronic transactions space, PayPal would have a tough time winning the argument based on just the word “Pay” in the name. In fact, there is precedent strongly in favor of Paytm here. In Micronix India Vs. Mr. J.R. Kapoor, for example, the Supreme Court observed that micro-chip technology being the basis of many of the electronic products, the word “micro” has much relevance in describing the products and therefore no one can claim monopoly over the use of the said word. Applying the same logic in this case, the word “Pay” has little distinctive relevance in the market to which PayPal and Paytm cater.

PayPal’s stronger argument lies in the use of a similar color combination. Even a brief look at the two logos betrays that similarity between the two. The color tones while not identical – are undoubtedly similar – the first syllable is a darker shade of blue while the second syllable is light blue. Technically, the Paytm logo uses color codes #042e6f (dark blue) and #00baf2 (light blue) while PayPal uses #002d8b (dark blue) and #009bel (light blue) – so one could argue that the colors are not exactly identical. The difference is more easily seen if you compare just the colors side by side. It will remain to be seen if the difference is big enough for consumers and more importantly for the Court.

The Indian Trademark Law does protect colors to the extent the colors or combination of colors confer a distinctive characteristic to a product or service. Schedule 10 of the Trede Marks Act, 1999, pertains specifically to use of colors:

(1) A trade mark may be limited wholly or in part to any combination of colors and any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive character of the trade mark.

(2) So far as a trade mark is registered without limitation of color, it shall be deemed to be registered for all colors. PayPal will undoubtedly argue that the differences in the two sets of colors is minimal and inconsequential to the consumer’s eye – an ordinary consumer will not be able to discern the difference and naturally confuse between the two logos. This approach gives more weight to the overall look and feel of the brand – and at least partly abandons the question on whether PayPal has a trademark right over use of the particular colors.

It also opens up the discussion to whether the whole package – name, font and colors – used by Paytm and PayPal are similar enough for ordinary consumers in India to be deceived into buying the wrong product. Consumer perception can be a tricky territory for PayPal, especially after Paytm’s customer base increased manifold over the last five weeks. The key question the Court should ask is: Would an ordinary consumer intending to use PayPal be confused into using Paytm instead?

The fact of the matter is that ordinary consumers like regular workers, grocers and Uber drivers use and hear the word Paytm all day every day – most of which would not even know about PayPal. PayPal’s foray into India has been limited largely to eBay shoppers, freelancers and IT software developers that are exposed to global economy much more than the ordinary consumer – which means that if PayPal and/or Paytm were to conduct a survey, it would likely result strongly in favor of Paytm.
However, had PayPal chosen to file a trademark infringement lawsuit before the demonetization move was announced (or perhaps anytime in 2011 -2014) when Paytm had not yet established its household name status, it would have been a much easier battle (albeit also bearing much less rewards). PayPal would however be much better placed to win this dispute in virtually any other country (If and when Paytm expands its operations in those countries) – where PayPall still is recognized as a global payments leader.
Questions:

(a) What prompted PayPal file complain on last day against Paytm though it had ample legal resources but waited until the end of the window?
(b) It Paytm and PayPal branding similar? Would you way PayPal & Paytm . have similar trademarks? What is the extent of similarity?
(c) Can colors or color combinations be trademarked in India? Would an ordinary consumer be confused?
(d) Does Paytm deceive consumers away from PayPal? Are Paytm and PayPal Competitors? Does arm to decide consumers to use Paytm?

Answer:
(a) The relevant facts of the case (in brief) need to be analyzed before really answering the question as to what prompted PayPal file the complaint on the last day against Paytm though it had ample legal resources and still it waited till the end of the window. The facts are, that on November 18, 2016, Paypal Inc. had filed an objection at the Indian Trademark Office accusing Paytm of trademark infringement. The timings of filing of the objection is interesting since it has come very soon after the windfall business gains made by Paytm on account of the change in the cash-strapped nation moving rapidly towards a cashless normal.

It is further stated that for six years (since its incorporation) Paytm had steadily become a household name in India i.e.. inhabited largely by the middle class till it got benefited and hit the jackpot on November 8.2016 when the Indian Prime Minister, Shri. Narendra Modi announced the decision of demonetization of currency notes in the denominations of ? 500 and ? 1,000 respectively, thereby invalidating overnight 80% of the country’s cash currency in circulation. It is important to note that the said move was taken by the Government of India to tackle the problem of vast amounts of unaccounted “black” money operating in the Indian economy which was being inter alia used for illegal purposes like bribery, corruption, tax evasion and for funding separatists and terrorists as well, and thus the measure invoked strong emotions, both in favor as well as against the decision from all quarters including the media, the politicos arid the citizens across the country. This also proves that Paytm got naturally benefited from this move being one of the only few players operating in the Indian market.

As per the facts, the direct consequence of demonetization was that there was an unprecedented increase in electronic transactions — with Paytm being the beneficiary was in the forefront. As per the statistics available, there was an addition of over half a million users per day, and Paytm also saw its daily transactions grow from 2.5 million to over 7 million a day and a 10-fold increase in the amount of money added to Paytm accounts in the initial first 14 days after the demonetization was announced.

Rapid growth in that short a time earned Paytm not only great profits and valuation, but also the attention of global competitors like PayPal. In its complaint, as per the facts available, PayPal has accused Paytm of having “slavishly adopted the two-tone blue color scheme”of PayPal’s own logo in entirety, and especially where “The first syllable in each mark is in dark blue color and the second syllable in a light blue color”. Further, PayPal also noted that “both marks begin with the term ‘PAY’ which consumers tend to remember more than the second syllable, with the marks being of similar length.”

Needless to say it was only after the demonetization that PayPal felt threatened (read jealous) by the rise of Paytm in a market that until now had been ignored, underserved and /or underperformed by PayPal. Another important fact is that PayPal had not registered its own trademark in India until after the demonetization and thus its intention to carry out a huge business in India is suspect.

Coming to the position of law on the subject, it is important to note that while the law, Limitation Act, 1963 in particular, prescribes different limitation periods for filing of different suits, appeals and applications in the court of law (for their respective causes of action), it does not prohibit one from filing the same even on the last day of the end of period of limitation. Furthermore, it is only in cases wherein the limitation period is not prescribed by the statute that the court is to look into the facts of * the case to ascertain if there were bottlenecks or an unreasonable delay. Therefore, in the facts of the case, PayPal is entitled to file its objections/ complaint even on the last day of the period of limitation and all facts provided by the other party are extraneous to the issue at hand. No adverse inference can be drawn from the said facts against PayPal. The objection being filed within the period of limitation (prescribed period) merits consideration (by the Tribunal) from the limitation standpoint.

(b) The names ‘PayPal’ and ‘Paytm’ are undoubtedly similar but the similarity is to the extent that both start with the word “Pay” and relying only on the fact that both companies operate in the electronic transactions space, PayPal would have a tough time winning the argument based on the presence of just the word “Pay” in both the names. In fact, the precedent provided in the facts of the case is strongly in favor of Paytm here. Thus, in the case of Micronix India v. JR Kapoor, MAN U/SC/1166/1994 : 1994 Supp (3) SCC 215:1994 (3) SCALE 732, the Supreme Court had observed that “micro-chip technology being the base of many of the electronic products, the word “micro” has much relevance in describing the products. Further, the word ‘micro’ being descriptive of the micro technology used for production of many electronic goods which daily come to the market, no one can claim monopoly over the use of the said word.” Applying the same logic to the case at hand, the word “Pay” has little distinctive relevance in the market to which PayPal and Paytm cater.

In the given set of facts, PayPal has also argued and insisted on the use of a similar color combination by Paytm as that of PayPal to make a case for non-grant of Trade Mark rights to Paytm. It is however provided in the facts of the case that even a brief look at the two logos betrays such similarity between the two. The color tones, while not identical, are undoubtedly similar the first syllable is a darker shade of blue while the second syllable is light blue.

It is further provided in the facts that, technically speaking, the Paytm logo uses color codes #042e6f (dark blue) and #00baf2 (light blue), while PayPal uses #002d8b (dark blue) and #009be1 (light blue). Therefore, one could argue that the colors are not exactly identical. The difference is thus more easily seen if one compares just the colors side by side. From the legal standpoint, section 2(h) of the Trade Marks Act, 1999 defines the term ‘Deceptively similar’ as: ‘A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.’ Further, Section 11 of the Trade Marks Act, 1999 lays down the relative grounds for refusal of registration wherein it is stated that ‘a trade mark shall not be registered if, because of (a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or (b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

In the facts of the case, PayPal had not registered its trade mark in India prior to the application for registration by Paytm. Furthermore, it is stated that the Ordinary consumers like regular workers, grocers and uber drivers use and hear the word Paytm throughout the day on daily basis and most of which would not even know about Paypal. Paypal’s foray into India has been limited largely to eBay shoppers, freelancers and IT software developers that are exposed to global economy, which means that if Paypal and Paytm were to conduct a survey, it would likely result strongly in favor of Paytm.

Taking the aforementioned facts and the law into consideration, it is very difficult to conclude that the branding of Paytm and Paypal are similar or to say that both have similar trademarks. The similarity between the two is not substantial to cause the customer of one brand to confuse it with the other one.

(c) The Indian Trademark Law (Trade Marks Act, 1999) does protect colors to the extent the colors or combination of colors confer a distinctive characteristic to the trade mark applied.to the product or service. Section 10 of the Trade Marks Act, 1999, pertains specifically to use of colors. It lays down that:

A trade mark may be limited wholly or in part to any combination of colors and any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive character of the trade mark.’ So far as a trade mark is registered without limitation of color, it shall be deemed to be registered, for all colors.
In the facts of the present case, PayPal can argue that the difference in the two sets of colors is minimal and inconsequential to the consumer’s eye, thus, an ordinary consumer will not be able to discern the difference and shall naturally be confused between the two logos. This approach, however, gives more weight to the overall look and feel of the brand and at least partly abandons the question on whether PayPal has a trademark right over use of the particular colors. Thus, in my opinion, it is not the correct approach or a fair reading of the Trade Mark Law in India.

It also opens up the discussion as to whether the whole package name, font and colors, used by Paytm and PayPal, are similar enough for ordinary consumers in India to be deceived into buying the wrong product. In the facts of the case, it has been clearly provided that the difference between the colors in the two trademarks is more easily seen if one compares just the colors side by side. Therefore, it is clear that though color and color combinations can be a subject matter of Trade Mark in India, in the facts of the present case, it is highly unlikely that the consumers may trapped into the error of confusing Paytm’s trade mark as that of Paypal’s trade mark.

(d) The answer to the question regarding Consumer perception wrt the services provided by Paytm and Paypal is really subjective. However, the key question the court should ask itself is: Has the expansion of business by Paytm in India been on account of any misconception in the minds of the customers as to the real identity or the origin of Paytm and has there been any confusion in the minds of the customers between the business of Paytm and PayPal. In short, would the consumers confuse Paytm as Paypal while deciding to avail its services.

As provided in the facts, ordinary consumers like regular workers, grocers and Uber drivers use and hear the word Paytm throughout the day on daily basis. Most of them would not even know about PayPal. As further provided, PayPal’s foray into India has been limited largely to eBay shoppers, freelancers and IT software developers that are exposed to global economy much more than the ordinary consumer – which means that if PayPal and / or Paytm were to conduct a survey, it would likely result strongly in favor of Paytm.

However, had PayPal chosen to file a trademark infringement lawsuit before the demonetization move was announced (or perhaps anytime in 2011-2014) when Paytm had not yet established its household name status, it would have been a much easier battle (albeit also bearing much less rewards). PayPal would however be much better placed to win this dispute in virtually any other country (if and when Paytm expands its operations in those countries) where PayPal is still recognized as a global payments leader. Thus, it is not correct to say that Paytm has either deceived consumers away from Paypal or that Paytm and Paypal are competitors in the Indian market.

Question
Read the following case study carefully and answer the questions given at the end :
Facts of the case : The plaintiff XYZ Ltd. is a Company publicly listed, organized and existing under the laws of USA, having its registered office at New York. Mr. ABC is duly authorised to sign, verify and institute the present suit. The plaintiff’s group of companies is one of the world’s most famous and well-known hotel and resort chain group using the trademark sleeping cat and its device. The plaintiff’s flagship company sleepingcat Resort was launched in 1994 in Lacuna Phuket under the trademark sleepingcat and its device.

Hence, the mark is inherently distinctive of the business and products of the plaintiff and the continuous use of the trademark sleepingcat by the plaintiff group since the year 1994 has created goodwill and reputation in the said mark that is associated with the plaintiff and the plaintiff alone. The plaintiff Group’s services and products underthe trademarks sleepingcat and its device have been widely promoted inter alia through print and audio-visual media including television programmes, advertisements, articles and write-ups appearing in leading newspapers, magazines, journals, etc. all of which enjoy a wide viewership, circulation and readership all over the world. Many of these forms of media also have a substantial reach and circulation in India and are viewed by millions of Indians who travel abroad or who subscribe to the same in India every year.

In addition, many people from all over the world including India access the plaintiff Group’s websites: www.sleepingcat.com,www.sleepingcatspa.com,www.sleepingcatgallery.com, www.sleepingcatresorts.com that have been registered since as early as 1996 and become acquainted with the plaintiff Group’s business, services and products which further contributed to the reputation and notoriety of the mark sleepingcat and its device of the plaintiff. The plaintiff Group, being prior in the adoption and use of the mark sleepingcat and its device, is its proprietor and thus, entitled to the use of these marks under common law rights, to the exclusion of all others. Apart from having common law rights in the mark sleepingcat and its device, the plaintiff also has statutory right in the same. It is submitted that the plaintiff has registered or has sought to register the mark sleepingcat and its device in more than 30 countries of the world. The plaintiff-is, thus, the registered owner of the trademark sleepingcat as well as the device in various countries.

The defendant Mr. X is the Managing Director of defendant No. 2 which is sleepingcat Tours and Travels (Pvt.) Ltd. having its office at Dadar, Mumbai and at Regal Building, Parliament Street, New Delhi. It is the case of the plaintiff against the defendant that sometime in 2004 it came to the knowledge of the plaintiff that the defendants had applied for registration of the mark sleepingcat under the Trademarks Act, 1999.

The plaintiff had filed opposition against the purported registration applications in 2004. The said application were thereafter abandoned in February 2005 since the defendants failed to file any counter statements to the oppositions filed by the plaintiffs predecessor in-title and thus, the cases were closed. In June, 2005 the defendants filed an application with trademark office seeking registration of the mark sleepingcat with device, opposition to which was filed by the plaintiff in May 2006 and September 2006 respectively. While the said applications were under contest before the trademarks registry, the defendant used the trademark for advertising his services. It adopted the website www.sleepingcattours.com which was created on 16th August 2003. The plaintiff filed the suit against the defendant use of the trademark on 15th January 2019. It plead to the court that:

(1) The adoption of the mark sleepingcat and its device by the plaintiff is much prior to the filing of the application for registration of the mark sleepingcat and its device by the defendants and also much prior to the alleged use of it by the defendants.

(2) It is submitted that the defendants belong to the same trade/industry and therefore, there exists every reason for the defendants to have been aware of the plaintiffs marks and also the goodwill and reputation of the said marks worldwide.

(3) The plaintiff submits that there is no way in which the defendants could have honestly or by sheer coincidence adopted such a well known mark for their goods, except for ulterior gains. The conduct of the defendants is totally dishonest and is solely motivated to create mass deception and confusion by running a trade/business under an identical trademark. The defendants! activities are clearly motivated to encash upon the hard earned reputation and goodwill of the plaintiff’s well known and recognized trademark sleeping cat and its device.

The following defence were raised by the defendant:
(1) The plaintiffs have no area of operation from India nor do they have any office in India, while the defendants are a company incorporated within India and have their area operations in India and have been actively conducting business since 1996 without any interruption. The plaintiffs are only trying to take advantage of the goodwill and reputation of the defendants and to encash on the presence of the defend ants’ business which the defendants have established for the last 12 years in India and abroad under the trademark of sleepingcat and its device.

(2) The defendant No. 2 is one of the leading tour and travel companies including camping and adventure sports and lay special emphasis on providing services to suit the clients and to provide such hospitality designed to fit into its natural surrounding, using indigenous resources as far as possible which may reflect the landscape and architecture of the area of travel and also catering to all such needs of clients visiting India and taking the advantage of the facilities and other opportunities available in India with regards to well known tourists spots in India.

(3) The plaintiffs are conducting a business of hotels, resorts and spas while the defendants are primarily conducting services relating to travel and tourism in India through their company and the trademark sleepingcat and its device. There is no trade connection between the business of the plaintiff and the defendants.
Questions :

Can an unregistered mark entitle to trademark protection?
What are the essential ingredients of ‘passing off?
Does the court have jurisdiction in the given case?
Is the current suit barred by limitation?

Answer:
(1) The trademark rights arise automatically as a result of using a mark on the goods or services. Registration of Trademark is not mandatory.
An “unregistered trademark” is one which does not possess legal benefits. But in some cases, an unregistered trademark may get common law benefits.
Unregistered marks are defined as marks which are not registered in relation to goods or services (that is names, marks or logos used in relation to a business) under the Trade Marks Act, 1999. Though under Section 27 of Trade Marks Act, 1999. no action for infringement is allowed for unregistered trademarks, it can still be protected by means of common law tort of passing off.

To succeed in such an action, it is necessary to establish that unregistered mark has comparable goodwill or reputation in connection with the product, service or business with which it is used. The facts of the given case are similar to that of. Choice Hotels International Inc. vs. M Sanjay Kumar and Another decided by the Delhi High Court on 9 February, 2015 The legal position emerging from the above case may be summarised as under:

(1) As per Section 29(5) of the Trade Mark Act, 1999 relates to a ‘ situation where (i) the infringer uses the registered trademark “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” and (ii) the business concern or trade is in the same goods or services in respect of which the trade mark is registered.

(2) This is in the nature of a per se or a ‘no-fault’ provision which offers a higher degree of protection where both the above elements are shown to exist. If the owner/proprietor of the registered trade mark is able to show that both the above elements exist then an injunction order restraining order the infringer should straightway follow. As per Section 29(5) of the Trade Mark Act 1999 there is no requirement to show that the mark has a distinctive character or that any confusion is likely to result from the use by the infringer of the registered mark as part of its trade name or name of the business concern.

(3) Although, in a situation where the first element is present and not the second then obviously the requirement of Section 29(5) is not fulfilled. Where the registered trade mark is used as part of the corporate name but the business of the infringer is in goods or services other than those for which the mark is registered, the owner
or proprietor of the registered trade mark is not precluded from seeking a remedy under Section 29(4) of Trade Mark Act 1999 if the conditions attached to Section 29(4) are fulfilled.

(4) Given the object and purpose of Section 29(1) to (4), Section 29(5) cannot be intended to be exhaustive of all situations of uses of the registered mark as part of the corporate name. Section 29(5) cannot be said to render Section 29(4) otiose. The object of Section 29(5) was to offer a better protection and not to shut the door of Section 29(4) to a registered proprietor who is able to show that the registered mark enjoying a reputation in India has been used by the infringer as part of his corporate name but his businesses in goods and services other than that for which the mark has been registered.

(5) A passing off action is maintainable in the case of a well-known mark even if the goods and services being dealt with by the parties are not similar. The, owner of an unregistered trademark may be abte to prevent use by another party of an infringing mark pursuant to the common law tort of passing off. 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’. Passing off is a species of unfair trade competition by which one person seeks to profit from the reputation of another in a particular trade or business.

(b) The three fundamental components of passing off are Reputation, Misrepresentation and Damage to goodwill. These three elements are also called as the Classical Trinity, as restated by the House of Lords in the case of Reckitt & Colman Ltd vs. Borden Inc. It was stated in this case that in a suit for passing off the plaintiff must establish firstly, goodwill or reputation attached to his goods or services. Secondly he must prove misrepresentation by the defendant to the public i.e. leading or likely to lead the public to believe that the goods and services offered by him are that of the plaintiff’s. Lastly he must demonstrate that he has suffered a loss due to the belief that the defendant’s goods and services are those of the plaintiff’s.

Among the three, one of the essential components of passing off’ is goodwill. The classic case of passing off as it existed since its genesis v., always insist the existence of goodwill of a merchant in order to give him a locally enforceable right to sue for passing off. This has^een explained by Kerly’s in his book called Law of Trade Marks and Trade Names, wherein the concept of goodwill has always been categorized as local in character and the learned author observed thus:- “Since an essential ingredient of passing off is damage to goodwill, he (the Plaintiff) must show that he had, at the date when the Defendants started up, in this country not merely a reputation but goodwill capable of being damaged. Goodwill, however, is local; it is situated where the business is.

Hence, a foreign claimant may have a reputation in this Guntry-from travelers or periodicals of international circulation or. increasingly, from exposure on the Internet-yet still fail in an action for passing off because he has here no business and so no goodwill. Such cases have been not uncommon in recent years, and have caused considerable difficulty. Where there is a substantial reputation here, our courts will often accept minimal evidence that a business exists here, but there has to be some”.

This meaning of goodwill and the insistence of localized business has been the traditional concept of passing off which sometimes is called as classic case of passing off. Although, this concept of passing off has undergone changes due to advent of technology and modernization. For the said reason the tendency to insist localized goodwill has been transformed into proving the reputation of a global character. All this would mean that courts entertaining the case of passing off can discount the localized existence of goodwill and the business in the territory-specific if the substantial nature of reputation has been proved which, has some kind of nexus in the territory where the protection is sought and the said concept in the modern language is called trans-border reputation whereas the goodwill is always local in character, the concept of reputation is dynamic and is all-encompassing.

The reputation of a person can transcend boundaries by virtue of its advertisement in the newspapers, media circulation, expatriate reputation due to cultural kindness, and all other relevant factors which connect one country’s business with that of another. This has been aptly explained by the Division Bench of this Court in the case of N. R. Dongre vs. Whirlpool Corporation, AIR 1995 Delhi 300 wherein the

concept of trans-border reputation was approved in the following words:-
Thus a product and its trade name transcend the physical boundaries of a geographical region and acquire a trans-border or overseas or extraterritorial reputation not only through the import of goods but also by its advertisement. The knowledge and the awareness of the goods of foreign trade and its trademark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial.
To prove the passing off action under the Trade Marks Act, 1999, the following points need to be proved:

The owner has to prove that there is a similarity in the trade names.
The defendant is deceptively passing off his goods as those of the owners.
It is leading to confusion in the minds of the customers (whether a person of average intelligence and of imperfect recollection would be confused).
The nature of the activity and the market consumption of the goods of the parties to the passing off action must be the same.
Use of the same trademark or trademark by the defendant must be likely to injure the business reputation of the plaintiff.
Misrepresentation and loss or damage of the goodwill are also, essential components for a successful passing-off action. This needs to be proved by the plaintiff for an interlocutory injunction,

(3) The plaintiffs have no area of operation from India nor do they have an office in India, while the defendants’ area of operation is a company incorporated in India and have their area operations in India and have been actively conducting business since 1996 without any interruption. The plaintiffs are only trying to take advantage of the goodwill and reputation of the defendants and to encash on the presence of the defendant’s business which the defendants have established for the last 12 years in India and abroad under the trademark of sleeping cat and its device.

Defendant No. 2 is one of the leading tour and travel companies including camping and adventure sports and lay special emphasis on providing services to suit the clients and to provide such hospitality designed to fit into its natural surroundings, using indigenous resources as far as possible which may reflect the landscape and architecture of the area of travel and also catering to all such needs of clients visiting India and taking the advantage of the facilities and other opportunities available in India with regards to well-known tourist spots in India.

The plaintiffs are conducting a business of hotels, resorts, and spas while the defendants are primarily conducting services relating to travel and tourism in India through their company and the trademark sleeping cat and its device. There is no trade connection between the business of the plaintiff and the defendants. The defendants are carrying on their business in India. The plaintiffs neither actually nor voluntarily reside and/or carry on business nor personally work for gain within the territorial jurisdiction of the Courts in India.

Section 135 of the Trade Marks Act, 1999 states that plaintiff centric jurisdiction to the parties. In the given case the plaintiff is offering his products and services for sale in India through the Internet. Further, the plaintiff has filed the case by making itself available to the court in India, therefore, this Court has jurisdiction to entertain and decide the present suit.

By inserting section 134(2) of the Trademarks Act, 1999 the Legislature has brought the trademarks law in tandem with the provisions under the Copyright Act. In section 62(2) of the Copyright Act as well as in Section 20 of the Code of Civil Procedure to enable the plaintiff to sue one who infringed his copyright within whose local limits he carried on business at the time of institution of the suit or other proceedings. The expression “carries on business” as provided under Section 62(2) and Section 134(2) of the Copyright Act and Trademarks Act respectively is restricted not only to the principal place of business but also covers branches or branches wherever the business is carried on.

In Ultratech Cement & Ann/. Dalmia Cement Bharat Limited the Bombay High Court held that even if one of the plaintiffs has place of residence or carries on business within the jurisdiction of the Courts, the Court is entitled to entertain the suit. The Court has further held that even if no cause of action arises at a subordinate place of business the plaintiff is still entitled to file a suit for infringement and passing off within the jurisdiction of the Court. There is a divergence from Section 20 of the CPC wherein the suits related to trademarks can be filed even in a place other than the principal place of business i.e. where a branch’s office is situated, even if no cause of action arises.

(4) It has been decided in many cases that such statutory right cannot be lost merely on the question of principles of delay, laches or acquiescence. It was also held that a mere delay after knowledge of infringement does not deprive the registered proprietor of a trademark of his statutory rights or of the appropriate remedy for the enforcement of those rights so long as the said delay is not an inordinate delay.

It is now well settled that an action for passing off is a common law remedy being an action in the substance of deceit under the Law of Torts. Wherever and whenever a fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favor. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits a breach of a registered trademark of another he commits a recurring act of breach, or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved.

The present suit .is not barred by limitation. Generally limitation period is for 3 years from the start of the cause of action. Article 88 and Section 22 of the Limitation Act, 1963 are to be read conjointly, it clearly provides that in case of a continuing breach of contract or in the case of a continuing tort, a fresh period of limitation begins to run at every moment of the time during which the breach or the tort, as the case may be, continues.

In the given case, admittedly, the defendants are subsequent users of the trademark SLEEPING CAT and SLEEPING CAT device. It is a continuous cause of action. The passing off is one of the facets of tort. In case both the provisions are read, prima facie it appears to the court that the suit is not barred by limitation.
In Timken Company v. Timken Services Private Ltd., the Delhi High Court held that if a new deceitful act is committed, the deceived party would naturally have a fresh cause of action in its favor. Hence, every time a party passes its goods oft as those of another it commits an act of infringement. Similarly, whenever a party breaches another party’s registered trademark, it commits a recurring act of breach or infringement of that mark, giving rise to a fresh cause of action to the aggrieved party.

Trademarks – Intellectual Property Rights Laws and Practices Important Questions

Trademarks – Intellectual Property Rights Laws and Practices Important Questions

CS Professional Intellectual Property Rights Laws and Practices Notes