A trademark is a designation, `any word, name, symbol, or device, or any combination thereof,'
which serves `to identify and distinguish [the] goods [of the mark's owner] ... from those
manufactured or sold by others and to indicate the source of the goods, even if that source is
unknown.' § 15 U.S.C. 1127. Although some marks are classified as inherently distinctive and
therefore capable of protection, see generally Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.
763, 768-69, 112 S. Ct. 2753, 2757-58, 120 L. Ed. 2d 615 (1992), it is not the case that all
inherently distinctive symbols or words on a product function as trademarks. See, e.g., Self-
Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 906-07 (9th
Cir.1995); Clairol Inc. v. Gillette Co., 389 F.2d 264, 269-71 & n. 16 (2d Cir.1968); see generally
IJ. McCarthy, McCarthy on Trademarks and Unfair Competition § 3:3 (4th ed.1997).
Rather, in order to be protected as a valid trademark, a designation must create `a separate and
distinct commercial impression, which ... performs the trademark function of identifying the
source of the merchandise to the customers.' In re Chemical Dynamics, Inc., 839 F.2d 1569,
1571 (Fed.Cir.1988); see also IJ. McCarthy § 3:3.
It is well established that `[t]here is no such thing as property in a trademark except as a right
appurtenant to an established business or trade in connection with which the mark is
employed.' United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S. Ct. 48, 50-51, 63
L. Ed. 141 (1918). Thus, whether alleging infringement of a registered trademark, pursuant to §
15 U.S.C. 1114(1), or infringement of an unregistered trademark, pursuant to § 15 U.S.C.
1125(a) (1), it is clear that a plaintiff must show that it has actually used the designation at issue
as a trademark, and that the defendant has also used the same or a similar designation as a
trademark. See, e.g., Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 622-23 (6th
Cir.1996), cert. denied, 519 U.S. 1093, 117 S. Ct. 770, 136 L. Ed. 2d 715 (1997); Homeowners
Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1105 (6th Cir.1991). In other
words, the plaintiff must establish a likelihood that the defendant's designation will be confused
with the plaintiff's trademark, such that consumers are mistakenly led to believe that the
defendant's goods are produced or sponsored by the plaintiff. See, e.g., Holiday Inns, 86 F.3d at
In Sumat Prasad v. Sheojanan Prasad, 1972 court held that a Trade Mark means a mark used in
relation to goods for the purpose of indicating a connection in the course of trade between the
goods and some person having the right as proprietor to use that mark. The function of a Trade
Mark is to give an indication to the purchaser as to the manufacture or quality of the goods, to
give an indication to his eye of the trade source from which the goods come or the trade hands
through which they passed on their way to the market.
In N.R. Dongre Vs. Whirlpool Corp 1996 , Court recognized the distinctiveness and uniqueness
of the word 'WHIRLPOOL' which was subsequently upheld by the Supreme Court in its decision
reported in 1996 PTC 583. 'WHIRLPOOL' is otherwise a dictionary word and was not registered
in India as a trademark. The court considering the entire gamut of the case held that the
reputation of the trademark 'WHIRLPOOL' in respect of washing machines has travelled trans
border to India and, therefore, although the respondents are not the registered proprietor of the
'WHIRLPOOL' in India in respect of washing machines can maintain action of passing off
against the appellants in respect of the use of the same which has been registered in their favour
in respect of the same goods. In the said decision, it was also held that registration of a trademark
under the Act would be irrelevant in an action of passing off.
DM entertainment v Baby Gift House and Ors., 2010
With respect to false endorsement, the Court stated that an individual claiming false endorsement
must prove that the use of the identity likely misled consumers into believing the concerned
personality endorsed the product at issue.
Turning to the passing off claim, the Court observed that in a passing off action, one has to see as
to whether the Defendant is selling goods/service so marked to be designed or calculated to lead
purchasers to believe that they are plaintiff’s goods. The court stated that even if a person uses
another’s well-known trademark or trademark similar thereto for goods or services that are not
similar to those provided by such other person, although it does not cause confusion among
consumers as to the source of goods or services, it may cause damage to the well-known
trademark by reducing or diluting the trademark’s power to indicate the source.
Further, it pointed out that where a person uses another person’s well-known trademark or
trademark similar thereto for the purpose of diluting the trademark, such use does not cause
confusion among consumers but takes advantage of the goodwill of the well-known trademark, it
constitutes an act of unfair competition. As the plaintiff, suffered loss of business, goodwill, and
reputation due to the sale of the dolls, the court held the defendants liable for passing off as well.
