Chanderprabhu Jain College of Higher Studies

&
School of Law
An ISO 9001:2015 Certified Quality Institute
(Recognized by Govt. of NCT of Delhi, Affiliated to GGS Indraprastha University, Delhi & Approved by Bar Council of India)

E-NOTES

Class : B.A.LL.B/ BBA LL.B VIII Semester

Paper Code : LLB 402

Subject : Intellectual Property Rights

UNIT-2

Introduction of Trademark

Trademark is a branch of intellectual property rights. Intellectual property rights permit people to
maintain ownership rights of their innovative product and creative activity. The intellectual
property came to light because of the efforts of human labour, so it is limited by a number of
charges for the registration and charges for infringement. Types of intellectual property are
Trademarks, Copyright Act, Patent Act, and Designs Act.

A trademark includes a name, word, or sign that differentiates goods from the goods of other
enterprises. Marketing of goods or services by the procedure becomes much easier with a
trademark because recognition of product with the trademark is assured and easier. The owner
can prevent the use of his mark or sign by another competitor.

Trademark is a marketing tool which increases financing of the business. A trademark is not
always a brand but the brand is always is a trademark. Sometimes there is a confusion between
trademark and brand. The brand name can be simply a symbol or logo but the trademark is a
distinguishing sign or indicator in a business organization as it has a wider implication than
brands. People are more influenced by the distinctive trademark that reflects the quality of the
product. A trademark can be a logo, picture mark or a slogan.

A ―Trade mark‖ [TM] is defined under Section 2(zb) of the Indian Trademarks Act, 1999 as
―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 a shape of goods, their
packaging, and combination of colors.‖

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Simply put, a trademark may include a device, brand, heading, label, ticket, name, signature,
word, letter, numeral, shape of goods, packaging or combination of colors or any such
combinations (Section 2(m)). The only qualification for a trademark being its capacity to
distinguish the goods or services of one person from that of another.

In order to understand the requirements for choosing a proper trademark for your business, you
may refer to our previous blog post that cannot be registered.

Trademark law in India

Before 1940 there was no law on trademarks in India. A number of problems of infringement of
registered and unregistered trademark arose which were resolved under Section 54 of the
Specific Relief Act, 1877 and registration was adjudicated under the Indian Registration
Act,1908. To overcome these difficulties, the Indian Trademark law was enforced in 1940. After
the enforcement of the trademark law, demand for protection of trademarks increased as there
was major growth in trade and commerce.

The Trademark law was replaced with the Trademark and Merchandise Act, 1958. It provides
better protection of trademark and prevents misuse or fraudulent use of marks on merchandise.
The Act provides registration of the trademark so that the owner of the trademark may get a legal
right for its exclusive use.

This previous Act got replaced with the Trademark Act, 1999 by the government of India by
complying it with TRIPS (Trade-related aspects of intellectual property rights) obligation
recommended by the World Trade Organization. The aim of the Trademark Act is to grant
protection to the users of trademark and direct the conditions on the property and also provide
legal remedies for the implementation of trademark rights.

The Trademark Act, 1999 gives the right to the police to arrest in cases of infringement of the
trademark. The Act gives a complete definition for the term infringement which is frequently
used. In Trademark Act, it provides punishments and penalties for the offenders. It also increases
the time duration of registration and also registration of a non-traditional trademark.

Campus: Plot No. OCF, Sector A-8, Narela,Delhi-110040

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 Chanderprabhu Jain College of Higher Studies
&
School of Law
An ISO 9001:2015 Certified Quality Institute
(Recognized by Govt. of NCT of Delhi, Affiliated to GGS Indraprastha University, Delhi & Approved by Bar Council of India)

Owner of Trademark:

Trademark provides protection to the owner of the mark by ensuring the exclusive rights to use
in to identify the goods or services or authorize another to use it in return of payment. It works
like a weapon in the hand of registered proprietor or owner of the mark to stop other traders from
unlawful use of the mark of the registered owner. Under section 28 of the Act, the registration of
a trade mark shall give to the registered proprietor of the trademark, the exclusive right to the use
of the mark in relation to the goods in respect of which the mark is registered and to obtain relief
in respect of the trademark in the manner provided under the Act. The proprietor of a trade mark
has a right to file a suit for infringement of his right and obtain:

1. Injunction,

2. Damages,

3. Account of profits

Doctrine of dilution in India

The Doctrine of Dilution was not present in the old law i.e. the Trade and Merchandise Marks
Act, 1958, as is in the case of section 29(4) of the Trademarks Act, 1999 by which the doctrine
of dilution has been first incorporated in a statute. But the doctrine of dilution was introduced by
the court much before the Act having regard to internationally recognized status.

Section 29(4), Trade and Merchandise Marks Act, 1958

The trademark under 29(4) should be registered and should have a reputation in India. For the
application of this section, the trademark should be well known and should have a reputation in
India.[3]

As per section 29(4) of The Trade Marks Act, trademark infringement in the form of dilution
will occur only when the person uses the mark which is:

Identical or similar to the registered trademark which already has a reputation in India and

Use is on different goods or services than those covered by the registration.

Infringement which is occurred if it is found the use of offending mark produces the following
results:

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 when the person takes unfair advantage of the reputed mark or mark having a distinctive
character.
 when the mark is harmful to the distinctive mark or reputed mark.

As the court has already used the doctrine of dilution prior to the act. One of the famous cases,
where court used the dilution prior to the act is Daimler Benz Aktiegessellschaft & Anr. v. Hybo
Hindustan, in which the issue was with the mark BENZ along with a three pointed human being
in a ring which the defendant used or his undergarment line. The High Court, in this case,
granted the injunction to the plaintiff and stated that copying of mark such as Mercedes-Benz by
anyone would result in the perversion of the trademark law in India. The court stated that Such a
mark is not up for grabs—not available to any person to apply to anything or goods. That name
is well known in India and worldwide, with respect to cars, as is its symbol a three-pointed star‖.

This is the first case In India where the court restrained the defendant from using the plaintiff
well-known trademark on the sole ground to avoid confusion or deception into a picture.

Exceptions to dilution of trademarks

The following shall not be actionable as dilution:

Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a
famous mark by another person other than as a designation of source for the person‘s own goods
or services, including use in connection with–

Advertising or promotion that permits consumers to compare goods or services; or

Identifying and parodying, criticizing, or commenting upon the famous mark owner r the goods
or services.

All forms of news reporting and news commentary.

Any mark which includes parodies, criticism or comments. The exception of parodies was used
in Louis Vuitton Malletier S.A. v. Haute Diggity Dog,

LLC, where the defendant manufacture apparels for dogs under the mark ‗Chewy Vuitton‘ which
was a parody the plaintiff famous brand ‗Louis Vuitton‘ apparels. It was held by the court that
‗Chewy Vuitton‘ did not dilute the trademark ‗Louis Vuitton‘ because it was merely a parody of
‗Louis Vuitton‘.

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 Chanderprabhu Jain College of Higher Studies
&
School of Law
An ISO 9001:2015 Certified Quality Institute
(Recognized by Govt. of NCT of Delhi, Affiliated to GGS Indraprastha University, Delhi & Approved by Bar Council of India)

Trademark law in India

Before 1940 there was no law on trademarks in India. A number of problems of infringement of
registered and unregistered trademark arose which were resolved under Section 54 of the
Specific Relief Act, 1877 and registration was adjudicated under the Indian Registration
Act,1908. To overcome these difficulties, the Indian Trademark law was enforced in 1940. After
the enforcement of the trademark law, demand for protection of trademarks increased as there
was major growth in trade and commerce.

The Trademark law was replaced with the Trademark and Merchandise Act, 1958. It provides
better protection of trademark and prevents misuse or fraudulent use of marks on merchandise.
The Act provides registration of the trademark so that the owner of the trademark may get a legal
right for its exclusive use.

This previous Act got replaced with the Trademark Act, 1999 by the government of India by
complying it with TRIPS (Trade-related aspects of intellectual property rights) obligation
recommended by the World Trade Organization. The aim of the Trademark Act is to grant
protection to the users of trademark and direct the conditions on the property and also provide
legal remedies for the implementation of trademark rights.

The Trademark Act, 1999 gives the right to the police to arrest in cases of infringement of the
trademark. The Act gives a complete definition for the term infringement which is frequently
used. In Trademark Act, it provides punishments and penalties for the offenders. It also increases
the time duration of registration and also registration of a non-traditional trademark

Types of Trademark

Service mark

A service mark is any symbol name, sign, device or word which is intentionally used in trade to
recognize and differentiate the services of one provider from others. Service marks do not cover
material goods but only the allocation of services. Service marks are used in day to day services :

 Sponsorship
 Hotel services
 Entertainment services
 Speed reading instruction
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 Management and investment

 Housing development services

A service mark is expected to play a critical role in promoting and selling a product or services.
A product is indicated by its service mark, and that product‘s service mark is also known as a
trademark.

Collective mark

A collective mark is used by employees and a collective group, or by members of a collaborative

association, or the other group or organization to identify the source of goods or services. A
collective mark indicates a mark which is used for goods and services and for the group of
organizations with similar characteristics. The organization or group uses this mark for more
than one person who is acting in a group organization or legal entity for dividing the different
goods or services. Two types of collective marks for distinguishing with other goods or services
of similar nature:

Collective mark indicates that the marketer, trader or person is a part of the specified group or
organization. Example – CA is a collective trademark which is used by the Institute of the
chartered accountant.

Collective trademark and collective service mark are used to indicate the origin or source of the
product.

A collective trademark is used by the single members of a group of an organization but is

registered as a whole group. Example- CA is the title or mark which given to the member of
Institute of a chartered accountant. That collective mark may be used by the group of association.
This was added to the Trademark Act, 1988.

Certification mark

A certificate mark is verification or confirmation of matter by providing assurance that some act
has been done or some judicial formality has been complied with. A certification mark indicates
certain qualities of goods or services with which the mark are used is certified, a certification
mark is defined in the Trademark Act, 1999.

Certification trade mark means a mark competent of identifying the goods or services in
connection with which it is used in the manner of trade, which is certified by the owner of the

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An ISO 9001:2015 Certified Quality Institute
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mark in respect of source, body, mode of manufacturer of goods or performances of assistance,

quality, accuracy or other characteristics.

Those goods or services which not so certified and registrable as such under this Act, in respect
of those goods or services in the name as the proprietor of the certification trade mark, of that
person. Registration of certification mark is done according to the Trademark Act, 1999.
Requirements for registration is the product must be competent to certify.

Uses of Trademark

Trademark identifies the owner of the product. Under any authorized agreement of product, a
trademark can be used, an example of trademarks goods names are, iPod and a big mac.
Company logos like the Golden Arches at McDonald‘s and McDonald‘s ―I‘m lovin‘ it. Brand
names like Apple, McDonald‘s, and Dolce &Gabbana.

The usage of the trademark by unauthorized means or illegal means by producing it in trading is
known as trademark piracy. If there is an infringement of trademark, the owner of the registered
trademark can take legal action and for an unregistered trademark, the only option is passing off.
Many countries like the United States, Canada and many more also, accept the trademark
policies, so they also gave the right to the master of product to take the action for the protection
of their trademark A common concept of a trademark is that the owner of a registered trademark
has a more legal right for protection than the owner of unregistered trademark.

The concept of usage of the non-physical trademark the Supreme Court held in the case of
Hardie trading Ltd. v. Addison paint and chemicals Ltd. The Supreme Court gave a wider
interpretation on the usage of a trademark that it could be non-physical and that there were no
grounds to restrict the user to use on the commodities or to the sale of the commodities bearing
the trademark.

Owner of the Trademark

Trademark gives protection to the owner by assuring them with the exclusive rights to use a
trademark, to identify the goods or services or permit others to use it in results of payment. It is a
weapon for the registered proprietor to stop the others from illegal use of the trademark. Under
Section 28 the rights conferred by registration.

The registration of a trademark is valid if the right is given to the certified owner of the
trademark, the owner has the exclusive right to use of the trademark in respect of goods or

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services in which the trademark is registered and to claim maintenance in respect of infringement
of the trademark is given to the holder of the trademark.

Wherever more than two persons are certified proprietors of the trademark which are same with
or nearly identical with each other. The exclusive right to use of each of those trademarks shall
not except if their own rights are related to any conditions or limitations entered on the register
be expected to be taken by one of those persons as against of other persons only by registration
of the trademark, but each of those persons has the same rights as against other persons.

Registration of Trademark

Any person claiming to be the owner of the trademark or supposed to used the trademark by him
in future for this he may apply in writing to the appropriate registrar in a prescribed manner. The
application must contain the name of the goods, mark and services, class of goods and the
services in which it falls, name and address of the applicant and duration of use of the mark.
Here the person means an association of firms, partnership firm, a company, trust, state
government or the central government.

As per section 18 (1) of the Trade mark Act, 1999, any person claiming to be the proprietor of a
trademark used or proposed to be used by him may apply in writing in prescribed manner fro
registration. The application must contain the name of the mark, goods and services, class in
which goods and services fall, name and address of the applicant, period of use of the mark.

Any Person means a Partnership firm, association of persons, a company, whether incorporated
or not, a Trust, Central or State government.

Steps for registration of trademark-

1. Search for the name, device, logo, and mark intended to be applied as trademark.

2. Apply for registration of trademark.

3. Examination of application by the registry. Examination report issued by the registry raising
objections under different sections of the Trademark Act, 1999.

4. Replying to the official objections and if required, ask for hearing. Applicant needs to file
evidence in support of the trademark application.

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5. Advertisement of trademark in official gazette/trademark journal for the purpose of opposition

filed by the public within 3 months from the date of publication.

6. If no opposition is received, a certificate of registration is issued in favour of applicant. The

validity period of registration certificate is for ten years and after that the same can be renewed
subject to the payment of renewal fees.

Conditions of Registration

The central government by mentioning in the official gazette appoint a person to be known as the
controller, general of patents, designs and trademark who shall be the registrar of the trademark.
The central government may appoint other officers also if they think that they are appropriate,
for the purpose of discharging, under the superintendence and direction of the registrar, the
registrar may authorize them to discharge.

The registrar has the power to transfer or withdraw the cases by in writing with reasons
mentioned. Under Section 6 of the Act, discussed the maintenance of a registered trademark. At
head office wherein particulars of registered trademarks and other prescribed, particulars, except
notice of the trust, shall be recorded. The copy of the register is to be kept at each branch office.
It gives for the preservation of records in computer or diskettes or in any other electronic form.

Absolute grounds for refusal of registration

Absolute grounds for the refusal of registration is defined in Section 9 of the Act. The
trademarks which can be lacking any distinctive characteristics or which consists exclusively of
marks or signals, which can be used in trade to indicate the kind, fine, quantity, supposed
grounds, values, geographical origin.

And also a time of production of goods or rendering of the offerings or different characteristics
of the goods or offerings which consists solely of marks or indications which have come to be
average in the present language. That marks are not entitled to registration. Except it is
confirmed that the mark has in fact acquired a new character as a result of use before the date of
application.

It gives that a mark shall not be registered as trademarks if:

It frauds the public or causes confusion.

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There is any matter to hurt religious susceptibility.

There is an obscene or scandalous matter.

Its use is prohibited. It provides that if a mark contains exclusively of (a) the shape of goods
which form the nature of goods or, (b) the shape of good which is needed to obtain a technical
result or, (c) the shape of goods which gives substantial value of goods then it shall not be
registered as trademark.

Test of similarity

For the conclusion, if one mark is deceptively similar to another the essential features of the two
are to be considered. They should not be placed side by side to find out if there are any
differences in the design and if they are of such a character to prevent one design from being
mistaken for the other. It would be enough if the disputed mark has such an overall similarity to
the registered mark as it likely to deceive a person usually dealing with one to accept the other if
offered to him. Apart from the structural, visual, and phonetic similarity or dissimilarity, the
query needs to be viewed from the factor of view of man typical intelligence and imperfect
collection secondly. It‘s regarded as an entire thirdly it is the query of his impressions.

In Mohd. Iqbal v. Mohd. Wasim it was held that ―it is common knowledge that ‗bidis‘ are being
used by persons belonging to the poorer and illiterate or semi-literate class. Their level of
knowledge is not high. It cannot be expected of them that they would comprehend and
understand the fine differences between the two labels, which may be detected on comparing the
two labels are common. In view of the above, there appears to be a deceptive similarity between
the two labels‖.

Relative grounds for refusal of registration

Under Section 11 of the Act, it gives relative grounds for the refusal of registration of a
trademark. A trademark cannot be registered if because of (i) its identity with an earlier
trademark and similarity of goods or services, (ii) its similarity to an earlier trade mark and the
similarity of the goods and there is a probability of confusion.

It also gives that a trademark cannot be registered which is identical or similar to an earlier
trademark. And also which is to be registered for goods and services which are not similar to
those for which earlier trademark is registered in the name of a different proprietor if, or to the
extent, the earlier trademark is well known in India. It further gives that a trademark is cannot be
registered if, or to the extent that, its use in India is liable to be prevented by virtue of any law.
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Procedure and Duration of Registration

The registrar on the application made by the proprietor of the trademark in the prescribed manner
within the given period of time with the adequate payment of fees. Registration of a trademark
shall be of ten years and renewal of the registered trademark is also for a period of ten years from
the date of expiration of the original registration or of the last renewal of registration.

The registrar shall send the notice before the expiration of last registration in the prescribed
manner to the registered proprietor. The notice mentions the date of expiration and payment of
fees and upon which a renewal of registration may be obtained if at the expiration of the time
given in that behalf those conditions have not duly complied with the registrar may remove the
trademark from the register.

But the registrar shall not remove the trademark from the register if implication made within the
prescribed form and the prescribed rate is paid within six months from the expiration of the final
registration of the trademark and shall renew the registration of the trademark for an interval of
ten years. If the trademark is removed from the register for non-payment of the prescribed fee,
the registrar shall after six months and within one year from the expiration of the last registration
of the trademark renew the registration,

And also on receipt of implication in the prescribed form and on payment of the prescribed fee
the registrar restores the trademark to the register and renew the registration of the trademark, for
a period of ten years from the expiration of the last registration.

International registration of a trademark

The law of trademark passed by the Indian government is applicable only within the territory of
India. The trademark which is registered in has effect only in India, for the protection of
trademark in other countries needs to be registered in another country as well. Each country has
its own trademark law with rules and law for the registration of a trademark in that country. In
other words, if an individual desire to obtain trademark registration in any particular nation then
a separate application must be moved in all such international locations. Within the year 2013,
the Indian government agreed to the Madrid conference which prescribes a methodology of
submitting a worldwide application to the contracting events from India by means of the
workplace of the Registrar of Trademark. For example- India‘s mobile phone manufacturing
Micromax received 1.25 millionth international trademark registration for its trademark
‗MICROMAX‘ protection in over 110 countries. The international trademark registration for
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Micromax filed under the Madrid Protocol, under mark can be protected in many jurisdictions by
only filing an application for international registration. There are two methods by which an
international application can be filed:

International application in each foreign country: For the protection of trademark in any foreign
country, an international application must be filed to the trademark office by following the rules
and regulations of that country. For this purpose the applicant must hire a firm dealing in
trademark registration in foreign, the applications to countries which is not a party to the Madrid
system can be filed as per above. It provides services that engaging an Attorney in the foreign
countries works closely for registration of a trademark in the foreign country.

The international application under the Madrid system: The trademark registration may also be
initiated by means of filing an international application under Madrid protocol before the
Registrar of Trademark for different nations. The Indian Trademark office collects international
Trademark application and after finding it in conformity with the Madrid protocol transmits such
a global application to the WIPO (World Intellectual Property Organization), which further
transmits it to the situation overseas. Each and every global software is processed by way of the
overseas nation as per their legislation and all communications are routed by means of Indian
executive.

Effect of Registration

The registration of a trademark shall if valid give the exclusive right to the registered proprietor
to the use of trademarks in respect of goods and services of which the trademark is registered,
and also to obtain relief in respect of the infringement of the trademark.

Infringement of Trademark

Infringement is a breach or violation of another's right.

As per Black's Law Dictionary Infringement means an act that interferes with one of the
exclusive rights of a patent, copyright and trademark owner. According to the Trademark Act, 'A
registered trade mark is infringed by a person if he uses such registered trade mark, as his trade
name or part of his trade name, or name of his business concern or part of the name, of his
business concern dealing in goods or services in respect of which the trade mark is registered.
Infringement of trademark means use of such a mark by a person other than the registered
proprietor of the mark.

As per Trademark Act, a mark shall be deemed to be infringed mark if:

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1. it is found copy of whole registered mark with a few additions and alterations,

2. the infringed mark is used in the course of trade,

3. the use of the infringed mark is printed or usual representation of the mark in advertisement.
Any oral use of the trademark is not infringement.

4. the mark used by the other person so nearly resembles the mark of the registered proprietor as
is likely to deceive or cause confusion and in relation to goods in respect of which it is
registered.

A registered trademark is infringed by a person who not being a registered proprietor or a person
using by way of permitted use in the course of trade, a mark which is identical with or
deceptively similar to the trademark in relation to goods or services in respect of which the
trademark is registered. After infringement, the owner of the trademark can go for civil legal
proceedings against a party who infringes the registered trademark. Basically, Trademark
infringement means the unapproved use of a trademark on regarding products and benefits in a
way that is going to cause confusion, difficult, about the trader or potentially benefits.

Infringement of Trade Mark:

Infringement is a breach or violation of another's right.

As per Black's Law Dictionary Infringement means an act that interferes with one of the
exclusive rights of a patent, copyright and trademark owner. According to the Trademark Act, 'A
registered trade mark is infringed by a person if he uses such registered trade mark, as his trade
name or part of his trade name, or name of his business concern or part of the name, of his
business concern dealing in goods or services in respect of which the trade mark is registered.
Infringement of trademark means use of such a mark by a person other than the registered
proprietor of the mark.

As per Trademark Act, a mark shall be deemed to be infringed mark if:

1. it is found copy of whole registered mark with a few additions and alterations,

2. the infringed mark is used in the course of trade,

3. the use of the infringed mark is printed or usual representation of the mark in advertisement.
Any oral use of the trademark is not infringement.

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4. the mark used by the other person so nearly resembles the mark of the registered proprietor as
is likely to deceive or cause confusion and in relation to goods in respect of which it is registered

Infringement of Trademark on the Internet

The expansion of the web is also leading to an expansion of inappropriate trademark

infringement allegations. Probably, a company will assert trademark infringement each time it
views one among its trademarks on an online page of a Third party. For example, an individual
who develops a website online that discusses her expertise with Microsoft software could use
Microsoft‘s trademarks to consult exact merchandise without the worry of infringement.
However, she mainly would no longer be competent to use the marks in this kind of means as to
intent viewers of her internet web page to feel that she is affiliated with Microsoft or that
Microsoft is someway sponsoring her net web page. The honour could simplest be analyzed
upon seeing how the marks are sincerely used on the web page. In this way, there is an
infringement of trademark on the internet.

Protection Against Infringement of Trade Mark:

Under section 29 of the Trade mark Act, 1999, the use of a trade mark by a person who not being
registered proprietor of the trade mark or a registered user thereof which is identical with, or
deceptively similar to a registered trademark amounts to the infringement of trademark and the
registered proprietor can take action or obtain relief in respect of infringement of trademark. In a
matter Supreme Court has held that in an action for infringement if the two marks are identical,
then the infringement made out, otherwise the Court has to compare the two marks, the degree of
resemblance by phonetic, visual or in the basic ides represented by the registered proprietor,
whether the essential features of the mark of the registered proprietor is to be found used by
other person than only the Court may conclude the matter.

Case laws on Infringement

Hearst company Vs Dalal avenue verbal exchange Ltd.

The courtroom held that a trademark is infringed when a character in the course of trade makes
use of a mark which is same with or deceptively similar to the trademark in terms of the goods in
respect of which the trademark is registered. Use of the mark by using such man or woman needs
to be in a manner which is more likely to be taken as getting used as a trademark.

In an action for infringement of trademark:

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(a) the plaintiff must be the registered owner of a trademark

(b) the defendant must be use a mark deceptively similar to the plaintiff's mark

(c) the use must be in relation to the goods in respect of which the plaintiff's mark is registered,

(d) the use by the defendant must not be accidental but in the course of trade.

Amritdhara Pharmacy Vs Satya Deo Gupta, AIR 1963 SC 449

In the said case the test for determining the similarity in two words relevant to an infringement
action was stated by Supreme Court that: You must take the two words. You must judge them,
both by their look and by their sound. You must consider the goods to which they are to be
applied. You must consider the nature and kind of customer who would be likely to buy those
goods. In fact you must consider all the surrounding circumstances and you must further
consider what is likely to happen if each of those trade marks is used in normal ways as a trade
mark for the goods of the respective owners of the marks. If considering all those circumstances,
you come to the conclusion that there will be a confusion- that is to say, not necessarily that one
man will be injured and the other will gain illicit benefit, but that there will be a confusion in the
mind of the public which will lead to confusion in the goods-then you may refuse the
registration, or rather you must refuse the registration in that case

Passing off

Passing off is common legislation of tort, which can be used to put in force for unregistered
trademark rights. The regulation of passing off prevents one man or woman from
misrepresenting other items or services.

The inspiration for passing off has faced some changes in the duration of time. In the beginning,
it was restrained to the representation of one person goods to another. Later it was elevated to
business and non- trading activities. Therefore it used to be additionally accelerated to
professions and non-trading movements. Today it is applied to many types of unfair trading and
unfair competitors where the activity of one person cause damage to another person. The
fundamental question on this tort turns upon whether the defendant‘s conduct is such as deceive
or mislead the general public to the confusion between the industry activities of the two.

In British Diabetic organization V Diabetic, both the parties have been charitable societies. Their
names have been deceptively identical. The phrases ‗association‘ and ‗society‘ both should be
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considering that they have been similar in derivation and meaning and were not completely
varied in kind. The everlasting injunction was granted.

Difference Between Passing Off And Infringement

The measures for passing off is different from the measures of an infringement. The claim for
infringement is a lawful remedy whereas the claim for passing off is a common law remedy.
Therefore, in order to establish infringement with respect to a registered trademark, it is only
required to prove that the infringing mark is same or deceptively similar to the certified mark and
no more proof is required. In the case of a passing off claim, proving that the marks are same or
deceptively similar only is not sufficient.

The use of the mark should be likely to mislead or cause confusion. Moreover, in a passing off
claim it is necessary to verify that the use of the trademark by the defendant is expected to cause
injury or damage to the plaintiff‘s goodwill, whereas, in an infringement suit, the use of the mark
by the defendant must not cause any injury to the plaintiff. But, when a trademark is registered,
registration is given only with respect to a particular category of goods. Protection is, therefore,
provided only to these goods. In a passing off action, the defendant‘s goods must not be the
same; it may be different.

In, KavirajPanditDurgaDutt Sharma Vs. Navaratna Pharmaceutical laboratories, the Apex

court held that there are some differences between the trial for passing off and trial for
infringement of a trademark. In American Home Products Corpn. Vs. Lupin Laboratories
Ltd., the Court held that it is well-settled law that when regarding the infringement of a
registered trademark. It is important to carry in mind the difference between the search for
infringement and the search in passing off the trial. In a passing off action, the courts seem to see
whether there is deception whereas, in infringement matter, it is important to note that the
Trademark Act gives to the owner an exclusive right to the use of the mark which will be
infringed in the case of indistinguishable mark and in the case of related marks, even though
there is deception, infringement can still take place.

In Satyam Infoway Ltd. VsSifynet Solutions (P) Ltd. it was held by the Court that to proceed
action for passing off three elements are required to be established, which are as follows:

In a trial for Passing off, as the expression passing off itself suggests, is to restrict the defendant
from passing off its goods or services to the public which of the plaintiff‘s. It is a claim not only
to preserve the status of the plaintiff but also to protect the public. The defendant must have

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traded its goods or given its services in a manner which was deceived or would be likely to
deceive the public into thinking that the defendant‘s goods or services are the plaintiffs.

That second element that must be established by the plaintiff is a misconception by the defendant
to the public and what has to be placed in the possibility of confusion in the minds of the public
that the goods or services offered by the defendant are the goods or the services of the plaintiff.
In assessing the possibility of such confusion the court must allow for the ‗imperfect recollection
of a person or ordinary memory‘.

The third element of a passing off action is loss or the possibility of it.

Notwithstanding, trademark registration under the Act only has effect in India. To get trademark
rights and protection in other countries it is required to register the trademark in those countries.
Trademark protection is regional in nature. A single registration will have to be made in every
country where protection is wanted. To get protection outside India, it is required to file
applications in the respect of the countries individually.

In enhancement, there should be registration in a country before you begin the use of the
trademark in that country. In some countries such as China, Japan, Continental Europe, and
Indonesia, the first person who applies for registration will get the rights of a trademark, rather
than the person who first uses the trademark. Hence, the different party could legitimately take
trademark by applying for registration even if there is the first person using the trademark.

Expanding boundaries of the scope of trademark

Domain name

Every company on the internet has a domain name with a different address in cyberspace at
which the website is located. Nowadays companies have internet pages as the producer and
consumer are far away located as well as every company is going global. The other purpose is
that the Internet has become an essential tool in marketing. The rule came to be revealed as IP
numbers are hard to remember therefore they came up with the Domain Name System.

A user of the internet will find the domain name very useful in finding the goods or services that
he expected to find. But sometimes a distinct name of a highly commended business may be
allowed and passed off as the original one, For example, Tata, Google and Maruti. People visit a
website or domain name through a website or a URL. Cybercrime generally means the
registration of another party‘s mark as a domain name for the purpose of misuse. A domain name
has to be related to the product given and it has to be different. While choosing a domain name
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for a website it is desirable that it should be different. A high level of distinctiveness is allowed
that two domain names could not be alike. Two types of disputes that occur which concerns with
the domain name.

(i) That both the parties have the legal right to forming the words for the domain name in use. In
this way, the court decides that who is the original owner and who the infringer is.

(ii) The second type is cyber piracy where a party with no legal right questions the real owner. In
this type of problem, there is a number of ways by which a trademark owner can fight with
cyberpiracy.

Smell

It is a non-traditional type of trademark. There is a large problem in registering this type of

trademarks as there is no physical representation. Due to its high level of distinctiveness, for
example, the smell of a perfume strawberry etc., it is difficult to register this kind of trademark.
Smell marks are accepted if they are represented with a graphical representation. But this
provision is only in some countries. Smell the trademark is protected under copyright. In some
instances a particular scent is also a commodity by itself in other circumstances it is a scent used
or attached to the commodity not the natural smell of the product itself.

Sound

A sound may be trademark and can also be registered. A sound mark is a sound or a theme with
a different identification effect. A well-known sound mark is music owned by Hemglass. When
applying for a sound mark the mark can be expressed by a sound file or by an accurate
description of the sound in notation.

Shape

Distinguishing the one product from another assures that the customer doesn‘t get confused by
similar products. The shape of goods registered as a trademark as long as the shape is not
working. A shape is working if it affects the use or performance of the product. The shape of
goods can be a trademark if,

The shape doesn‘t superior working.

The shape has become connected with public and manufacturer.

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A shape of goods may be registered as a trademark when the shape is not working. Thus if a
certain shape is delicate more than useful in daily life and serves no purpose then it may be
registered.

Conclusion

Intellectual Property reflects the meaning that it‘s subject body is the product of the mind or the
intellect. As it‘s the product of a productive and creative mind, It can be traded, purchased, given
and reserved. All this can be done but there are issues related that to be dealt. Trademarks are
very important aspects of Intellectual Property so, the protection of the trademark has become
essential in the present day because, every generator of a good or service will want his mark to
be different, eye-catching and it should be easily distinguishable from others.

Designing a mark like this is difficult and after this when infringing of the mark takes place it
will cause maximum difficulty to the producer. Capital Protection is very important and there
should be a step towards Global Intellectual Property Order, if there is no IPR protection, it can
be explained that inventive activity will terminate. The reason for Intellectual Property protection
is that it can arouse creativity and discovery and prevent the exploitation of inventions.

Public policy here points at keeping an Intellectual Property system which promotes innovation
through protection initiatives, while at the same time assuring that this is not at the value of
societal interests. In this meaning, the challenge for the World Intellectual Property Organisation
would be to include public policy effects in applications carried out with developing countries,
such as increasing awareness of flexibilities in existing international intellectual property treaties.

Intellectual Property is not an unusual concept, in fact, it is a concept which is discussed in

everyday life whether a movie, book, plant variety, food item, cosmetics, electrical gadgets,
software‘s etc. It has become a concept of pervasiveness in everyday life. The World Intellectual
Property Day on 26th April every year.

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