CHAPTER V

INTELLECTUAL PROPERTY RIGHTS IN

Trademark is such type of intellectual property which is also called as industrial

property. In the trade and business there must be identity of the goods of

particular trader or businessman. Like manufacturing of soap should be different

of two or more traders, hair oils of two traders must be different. Trademark may

be define as it is one type of visual symbol in the form of word, a device or a

liable applied to the articles of a trade which indicate the quality of the goods the

law relating to Trademark in India is develop after the business growth in the

country particularly in the 18th century. And in the 19th century actual need arose

of a strong law about protection of Trademark. Because of rise of reputed

companies in India and business competition legislature try to give competent law

for protection of Trademark.

5.2. Meaning and definition of Trademark:-

Indian Legislature endeavours to describe the meaning of Trademark as under,

Definition:-

The term Trademark can be defined as “it is a visual symbol in the form of any

word or device or a label applied to articles of commerce as distinguished from

similar goods manufactured or dealt in by others"

A trade Mark is a visual representation relating to goods for the purpose of

indicating their trade origin, e.g.

-KODAK-for photographic goods

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-APPLE-for computers

-WILLS- for cigarettes

When a Trade Mark is used in connection with services, it is called as “service

Mark”, for example Hotels, restaurants, Airlines, Tourist agencies, Laundries and

Cleaners etc. The concept of trademark is a distinctive sign, form which

individuals can identifies certain goods or services as those produced or provided

by a specific person or enterprise. Trade Marks may be one or combination of

words, letters, and numerals. In the trademark also it is consist of drawings,

symbols, three-dimensional signs such as shape and packaging of goods, or

colours used as distinguished feature.

Some features Prevailing Trademark law in India as under :

a) Registration of service marks, collective marks and certification trademarks.

b) Increasing the period of registration and renewal from 7 years to 10 years.

c) Allowing filling of single application for registration in more than one class.

d) Enhanced punishment for offences related to trademarks.

e) Exhaustive definition for terms frequently used.

f) Simplified procedure for registration of registered users and enlarged scope of

permitted use.

g) Constitution of an Appellate Board for speedy disposal of appeals and

rectification applications, which at present tie before High Court.

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What is Trademark?

According to Indian Trademark act trademark means any mark which shows

identity of the goods or products it is different other than the movable and

immovable property. A trademark is a part and parcel of the manufactured article.

In majority times it is made by mechanical process, it contains more merchandise

qualities than artistic approach.

There are two purposes of trademark

1) it protect business reputation and good will

2) it also protect the consumers from deception.

5.2.1. Essential features of a Trademark:

Word over the concept of trademarks is more or less uniform. It has two basic

characteristics that is

1) It must be distinctive; and

2) It must not be deceptive.

1) Distinctive-

A trade mark must be distinctive than any other marks. Distinctiveness of the

mark means that the mark or get up is distinct in itself from everything else and no

one can justifiably claim the right to use it. The trademark should preferably be an

invented word.

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2) Deceptive-

Deception and reality is different but deceptive factor is one of the feature of

trademark. For example, a trademark ‘Real Leather’ for goods that are not made

of genuine leather

Apart from the concept of trade mark the concept of are service marks also

applicable for services, again the concept of collective marks-applicable for

group or associations, and concept of well known marks-which are successfully

establishes and are worldwide known like Sony,Versace,Louis Vuitton etc.

5.3. History of Trademark in India:-

Trademarks are a diverse and familiar feature in both industrial and commercial

market. For more than one thousand years and up to the middle of the eighteenth

century, the Great Britain was importing the textiles, ornaments etc, from India.

The Indian mark goods were very popular in Europe. Trademarks commonly

referred to as ‘identifying marks’ or ‘distinctive marks’67 the concept of trademark

is very old in the history of India but in old days there was not any provisions for

protection of trademark. British Government not enacts any law for Indian and

trade activities of the Indian inhabitant because at that time there was monopoly

of the British peoples in India in trade related activities.

But in the 18th century because of increase in the industries and competition the

British Government showed interest to protect the trade mark as a part of law

enforcing authority.

67
satyam info way v sify Net Solutions (2004)28 PTC 566,569(SC

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Purpose of Trademarks:-

A trademark serves as a vehicle for the creation and retention of custom by their

use, as they indicate the origin of goods and disservices. According to The

Supreme Court the purpose of trademarks as under:

The object of trademark is to give the protection to consumer from duplicate

goods or the goods which the consumer not interested to purchase it. It is duty of

the law maker to protect the interest of the seller and consumer as to selling and

buying the qualified goods and maintain relationship as a customer and buyer. In

other words the purpose of trademark is protect the reputation of the original

owner of any trader, seller or owner.

5.3.1. Legislative History of the Trademark Act, 1999:

The Indian Penal Code,1860 was enacted one hundred and sixty years ago. In

Indian Penal Code,1860 chapter XVIII explains provisions about “of offences

relating to documents and to Property Marks” section 478 to 489 explain the

provisions about “property and other Marks “these sections had the important

provisions for the protection of trade marks.

In India first law relating to trademark was the Trademarks Act, 1940 which was

changed by the Trademark and Geographical Indications Act, 1958. This law

relating to trademark provided protection to the trademarks.

5.4. Well-known Trademarks and Associated Trademarks:-

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A well-known trademark in relation to any goods or services means a mark, which

has become known to the substantial segment of the public that uses such goods

or services.

5.4.1. Service Marks:

Actually the reference of any service mark is not found in Indian laws relating to

trademarks. But service mark is require to protect the interest of any service

providers. Service means any of industrial or commercial service such as

banking,communication,education,financing,insurance,chit funds, real

estate,transport,storage ,material treatment, processing supply of electrical or

other

energy,boarding,lodging,entertainment,amusement,construction,repair,conveying

of news or information and advertising. Marks used to represent such dervices are

known as service marks.

5.4.2. Certification Trademarks:

In the Indian market many types of production of goods and service. Many

production having certain quality and in some circumstances it is need to protect

that goods by special manner. A certification trade mark is relating to goods of

quality it provide guarantee to such types of goods having specific quality to any

goods.

5.4.3. Owner of trademark:

Trademark provides protection to the owner of the mark by ensuring the exclusive

rights to use in to identity the goods or services or authorizes another to use it in

99
return of payment. The proprietor of a trade mark can enforce his right by way of

filing a suit for infringement of his right and obtain:

1. Injunction

2) Damages

3) Account of Profits.

5.5. Rights of Trademark Holder:

Trademark holder, in capacity of registered owner or registered user possesses

certain rights provided under the Act. A registered trademark stands on

advantageous position in comparison to non-registered trademark. But the Act

also protects the claim of unregistered trademark holder through passing off

action. The rights conferred under the Act are subject to conditions and limitations

imposed at the time of registration. In this chapter the various rights are

enumerated and explained.

1) Exclusive Use Right:

In case if there are more proprietors than one, each of them has the same rights

against other persons not being the registered users using by way of permitted use.

A registered trademark gives the registered proprietor the exclusive right to use

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

registered. However, this right shall be subject to any conditions and limitations to

which the registration is subject.

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A co-owner of erstwhile partnership, which has been dissolved, also has the right

to use and get himself registered as independent proprietor of the trademark. In

Babuj Products v. Zen Products68, the Gujarat High Court has held that a licence

cannot take action for infringement and passing off against partner of erstwhile

partnership firm as on dissolution of partnership firm; the partners having

acquired goodwill by use can continue to be co-owners of the mark.

2) Right to assign:-

A registered proprietor of a trademark has the right to transfer his rights through

licence or assignment of his trademark and give effectual receipts for any

consideration for such assignment.69

3) Legal Remedies against Infringement Right:

Since the Act confers exclusive right to use trademark by proprietor or his

authorised user, any unauthorised use of a trademark would amount to

infringement. The holder of Trademark has the right to obtain legal relief against

alleged infringement 70 of a registered trademark. In case of a trademark which is

not registered, the unauthorised use is prevented through passing off action.71

4) Correction of Registered Rights:-

In addition to three abovementioned important rights, the registered proprietor has

the right to apply for correction of register with regard to name, address or

description of registered proprietor, to cancel the entry of a trademark on the

68
2005(3) GLH 738
69
see section 37
70
see section 29
71
see section 27(2)
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register and to strike out any goods or classes of goods or services from those in

respect of which a trademark is registered.72

In the case Kabushiki Kaisha Toshiba v. TOSIBA Appliances Co., 73 the matters

was relating to an application which to rectify the register of trademarks under

section 46 on the ground that the mark “Toshiba” was never ‘used’ in India and

that the proprietor of this mark indulged in ‘trademark trafficking’. The court

(Justice Sinha Sitting with LS Patna) suggested that a mere use of the mark in

relation to servicing centres (which services washing machines imported from

abroad) could also amount to “use”.

The main question before the Supreme Court was whether TOSIBA was a person

aggrieved under Indian trademark Law or not. It was observed that that TOSIBA

had failed to show that it would suffer any real harm or damage if the mark

TOSHIBA was allowed to stand and, therefore, was not a person aggrieved.

5.5.1. Limitation on Rights:

The above stated rights are subject to the conditions and limitations which may be

either expressly imposed at the time of registration or which are expressly laid

down in the Act. They are explained hereunder:

1) The exclusive right to use a trademark is subject to limitations imposed at the

same time of registration. Any use beyond those limitations is not protected by

registration and an action for infringement shall not lie against such use by others.

72
see section 58

73
2008(9) SCR 670

102
Where a trademark is granted for a particular product, say biscuits, it cannot be

used by the proprietor for his other product such as confectionery.74

2) Registration ipso facto will not operate against persons who are already

registered proprietor of identical or similar mark.

3) The registered proprietor restricted for use of any similar mark. In N.R. Dongre

v. Whirlpool Corporation75 The Supreme Court held that passing off action

against registered owner of trademark at the instance of prior user of the same or

similar mark is maintainable.

4) in the case of the word/mark, if in the course of time it becomes the name of an

article or substance, then the right conferred by registration ceases.

5) The right to seek legal remedy against infringement is subject to limitations

prescribed in Section 30.

In this way it can, thus, be summarized that the Trademarks Act, 1999 has

conferred several rights on the holder of trademark, but these rights can be

enjoyed within the limits prescribed under the Act.

5.6. Registration of Trademark:-

The detail procedure about registration of a trademark in India is as under:

1) Filling of Application

74
Perry and co.Ltd Madras v. Perry and Co. AIR 1963 Mad.46
75
1996 PTC(16)583

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2) Allotment of Application No.

3) Issue of Examination Report by the Trade Mark Office

4) Objection Raised

5) Objections removed by Evidences etc

6) No Objection

7) 4 months period for public objections if no opposition within 4 months the

Trade marks is prohibited for registration

8) Issue of registration certificate

9) Renewal fee becomes due and payable every ten years w.e.f. the date of the

filling of application.

All marks are not registrable as ‘trademark’ under the Act.76 for a mark to be

registarble, it must conform to certain statutory prescriptions.

- ‘trade mark’

Means such type of mark which is capable for represented any geographical or

any identity of goods o shape of goods, features of goods quality of goods, colour

of goods or any combination of shape quality and colour.; and

i) as per Chapter XII of Trademark Act a registered trade mark or a mark used in

relation to goods or services for the purpose of indicating or so as to indicate a

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the different types of marks that can be registered under the Act, inter alia

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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 the mark; and

ii) as per other provisions of this 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, according to

circumstances, some individuals has the right, as a proprietor or as a permitted

user, to use the mark whether with or without any indication of the identity of that

person, and includes a certification trade mark or collective mark.77

-‘goods’

Goods is anything which is relating to subject matter of trade or manufacture,78

From the above meaning of goods the legal requirements to register a trade mark

under the Act are:

i) the selected mark should be capable of being represented graphically

(that is in the paper form);

ii) That mark must capable of distinguishing the goods or services of one

undertaking from those of others i.e. it should be distinctive;

iii) That mark must be used or proposed to be 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.

77
section 2(1)(zb)
78
(section 2(1)(j)

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For the purpose of secure registration of mark as a ‘trademark’ according to

provisions the Act, all above requirements must have to be satisfied, like words,

the company name and logo.

i) Graphical representation:-

As is clear from the above, a number of marks have been recognized under the

Act. But, it does not mean that all marks according to the definition of ‘mark’

under the Act are registrable.

ii) Distinctiveness of a mark:-

A distinctive mark is a mark which has attained a reputation connecting its origin

in the minds of traders and the buying public. The need of the distinctiveness of a

mark was decided by the supreme court in the National Bell Case:

‘One of the rules for absolute refusal of registration of trademarks read: which are

devoid of any distinctive character, that is, not capable of distinguishing the goods

or services of one person from those of another.79

Two test for determination of distinctiveness:

a) Whether the general reaction of the interested public, looking at the mark, is to

think of the maker of the goods bearing of the mark?80

79
National Bell v. Metal Goods AIR 1978 SC 898
80
Phillips v. Remington 1998 RPC 283

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b) Whether, even without a comparison with another mark, will cause confusion

to the public and as such deceives the public?81

Thus, the distinctiveness of a mark essentially means that the mark must be such

that it identifies a product from a particular undertaking 82 therefore it can be say

that distinctiveness is one of the essential requirement for registration of mark.

Section 47 of the Act further lies down that a trademark, once registered, can be

removed from the Register if the registration was obtained a ‘bonafide’ intention

to use it in relation to goods and services. Therefore it can be say that it is also one

of the requirement for registration of trademark under the Indian trademark law

,that the mark which have to register must be connected with goods or services or

both goods and services

5.7. Protection of Trademark:

There is no worldwide protection of trademarks through one application because

trademarks like all other intellectual property are territorial rights. Hence in each

country there has to be a national registration. There is however a Trademark Law

Treaty(TLT) which was adopted in 1994, administered by the World Intellectual

Property Organization(WIPO),and it sets out the information nationals of one

member state must supply and what procedures they must follow, but still there

has to be separate filing and this only facilitates the process. In India for over four

decade the trademark law was governed by the Trade and Merchandise Act, 1958.

But due to the developments in trading and commercial practices, increasing

81
National Serving Thread Co. V. James Chadwick AIR 1953 SC 357,363
82
Nestle SA T.M. Application 2004 FSR 16, 27

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 globalisation of trade and industry, the need to encourage investment flows and

transfer of technology, need for simplification and harmonisation of trade mark

management systems and to give effect to important judicial decisions, The Trade

Mark Act, 1999 was enacted.

Now under the enactment there are some basic principles that govern the

registration of the trademark83 since the 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 require by other traders for bonafide trading or business

purposes, certain restrictions are necessary on the class of the words or symbols

over which such monopoly right may be granted. Thus deceptive words, surnames

and geographical names are not considered prima facie registrable.84

2) Registration of a trade mark must not interfere with the bonafide use by

any person of his own name or that of his place of business, or the use of

any bonafide description of the character or quality of the good.85

3) Property rights in a trade mark acquired by use are superior to similar

rights obtained by registration under the enactment. It, therefore, follows

83
P.NARAYAN, INTELLECTUAL PROPERTY LAW (3rd edn.)(162)
84
Trade Marks Act,1999,s 9
85
Trade Marks Act, 1999, s.35

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 that prior users of trademarks must be protected against any monopoly

rights granted under the statute. 86

4) 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 trade

mark ought not to be registered if it its use will be apt to mislead the public

as to the origin of the goods as they are purchasing. And other is interests

of other traders who are eligible to use of the trade mark proposed for

registration..

5) It may so happen that a trader honestly used a trade mark for a number

of years although an identical or similar mark has been registered or used

by another.

6) A trade mark is recognised as a form of property. The term ‘proprietor

of a trade mark’ is used in the definition of a trademark and also in various

other provisions of the enactment.

Infringement and Passing off Action in Trademark:

A trademark owner has right either to use himself or assign others the use of his

trademark. Any unlawful use of registered trademark is come in to the meaning of

infringement of trademark and in case if the mark is not registered but even by

any person it s use that person liable for passing off action. In English law there

are various provisions given for protection of both registered and unregistered

mark What are the various grounds on which infringement and passing off action

86
Trade Marks Act, 1999 s.34

109
is determined. How the case law has developed the parameters of judging

infringement and passing off action, is also define in this chapter.

5.8. Infringement of Registered Trademark:-

Infringement of registered trademark means use of trademark by that person who

is not a registered proprietor or authorised user or use of any trademark which is

identical or deceptive similar with registered trademark..

5.8.1. Essential Conditions of Infringement:

In order to constitute infringement following must be fulfilled:

i) The person is not authorized to use the trademark.

ii) The infringing trademark is either similar or identical or deceptively similar

to the already registered trademark.

iii) The infringing trademark must be used in the course of regular trade in

which the registered proprietor or user is already engaged.

iv) Using either whole of the registered trademark or an adopted one by making a

few addition and alteration.

5.8.2. Test for determining Infringement:-

For the purpose of decide any infringement of a trademark or not, it is depending

on the consumers and his knowledge. The impression of trademark is creates

confusion or deception in the mind of purchaser, it is comes in to meaning of

infringement. Tangible charges of confusion by a substantial proof are the main

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test to find out whether the infringing mark is deceptively similar to the infringed

mark. If the similarity and confusion not able to prove it would amount to

infringement.87 It means similarity and confusion from the side of infringer is

sufficient to say that he is committed infringement.88

5.8.3. Common forms of Infringement:-

A trademark can be infringed in different ways. Some common forms of

infringement is observed by supreme court of India is as under:89

i) Using of mark identical or similar to trademark by unauthorized person in

relation to similar or same trade. Use of identical or similar marks in trade not

similar or same may also amount to infringement.

ii) Advertisement of registered trademark of another for promotion of one’s trade

also amounts to infringement.

iii) A registered trademark is also infringed when a person makes unauthorized

application of such trademark to a material intended to be used for labelling or

packaging his goods.

iv) A registered trademark is also infringed by the verbal use of words as well as

their usual representation in cases where the distinctive elements of that mark

consist of or include such work.

87
Astra IDL Ltd. V. TTK Pharma Ltd., AIR 1992 Bom.35.
88
ITC Ltd. V. Rakesh Behari Srivastava and others, AIR 1997 All 323
89
Bombay Oil Industries v. Ballarpur Industries., AIR 1989 Del.77

111
v) Use of deceptive similar mark as to goods or services and as to trade origin

which results into confusion or deception in the mind of buyer.

vi) Taking substantial features of already registered trademark which is in use,

amounts to infringement.

vii) Unauthorized use of registered trademark on reconditioned or second-hand

articles may constitute infringement.

viii) Unauthorized printing of label of registered trademark would also amount to

infringement. If the label has copyright, it will cause infringement of copyright.

ix) When the owner of trademark gets the goods manufactured by third party

solely for mark, sale of goods bearing that mark by third party manufactured to

other persons would constitute infringement.

5.8.4. When trademark is not infringed:

As per section 30(2) the use of a registered trademark is following manner would

not amount to infringement:

1) use of registered trademark by any person for the purposes of identifying goods

or services as those of proprietor provided the use is in accordance with honest

practices in industrial or commercial matters, and further the use is not such as to

take unfair advantage of or be detrimental to the distinctive character or repute of

the trademark.

2) A registered trademark is also not infringed where-

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a) the use in relation to goods or services indicates the

kind,quality,auantity,intended purpose,value,geographical origin, the time of

production of goods or of rendering of services or other characteristics of goods or

services; and

b) a trademark is registered subject to any conditions or limitations, the use of the

trademark in any manner in relation to goods to be sold or otherwise traded in, in

any place, or in relation to goods to be exported to any market or in relation to

services for use or availability or acceptance, to which, having regard to those

conditions or limitations, the registration does not extend.

The use by a person of a trademark:-

I) in the matter of goods connected in the course of trade with the proprietor or a

registered user of the trademark, as so those goods or bulk which they form part,

the registered proprietor or the registered user conforming to the permitted use has

applied for the trademark and has not subsequently removed or obliterated it, or

has at any time expressly or impliedly consented to the use of the trademark; or

II) in the matter of services to which the proprietor of such mark or of a registered

user conforming to the permitted use has applied the mark, where the purpose and

effect of the use of the, mark is to indicate, in accordance with the fact, that those

services have been performed by the proprietor or a registered user of the mark;

iii) The use of a trademark by a person in relation to goods adapted to form part

of, or to be accessory to other goods or services in relation to which the trademark

has been used without infringement of the right by registration under Act.

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iv) The use of a registered trademark, being one of two or more trademarks

registered under this Act which are identical or nearly resemble each other.

v) Where a registered trademark is used by a person who has acquired it through

assignment or is authorized under a licence, such use would obviously not

constitute infringement.

5.8.5. Illustrative Cases on Infringement:

Nature and form of infringement as laid down under the Act have been discussed.

Now, few selected important case-laws demonstrating whether the trademark was

infringed or not.

Cases of Infringement:

1) In Pidilite Industries Ltd. V. S.M.Associates90, the plaintiff was registered

proprietor of trademark “M-SEAL”. The defendant adapted and used mark ‘SM

SEAL’, with all essential characters of trademark ‘M-SEAL’. The Bombay High

Court ruled that defendant’s use of impugned mark was causing confusion and

deception. The Court restrained defendant from using trademark “SM-SEAL”.

2) Marked degree of phonetically similarity between the two arks would cause

confusion and deception. In Bombay Oil Industries Pvt.Ltd. v. Ballarpur

Industries.91, the Delhi High Court found that use of trademark ‘SHAPOLA’ for

edible oil which is similar to the registered trademark ‘SAFFOLA’ is an act of

infringement. The Court held that both the marks are in respect of edible oil,

90
2004(28) PTC 193( Bom)
91
AIR 1989 Del.77

114
therefore, the nature of goods is same. There is marked degree of phonetic

similarity. The Court restrained defendant to use trademark “SHAPOLA”.

3) In Playboy Enterprises, Inc, v.Bharat Malik,92 the Delhi High Court restrained

defendant from using trade name “PALY WAY” on the ground that defendant

have adopted word ‘PLAY’ which is the soul of the name of plaintiff’s magazine

PLAYBOY with the sole object to exploit the trade on its goodwill and

widespread reputation.

4) In Bhavnesh Mohan Lal Amin v. Nima Chemical, 93 the respondent was a

registered proprietor of two trademarks ‘NIRMA’and ‘NIMA’ for detergent

powder. The trademark NIMA was not being used. Appellant started using

trademark NIMA which was already registered in favour of respondent. The court

rejected this contention that use of trademark is a condition precedent for claiming

legal protection.

The appellant file appeal before Supreme Court. Disposing the appeal, the court

while upheld the grant of interim injunction in favour of respondent, it also

directed respondent not to initiate any action for user of mark NIMA by appellant

without leave of trail court. The court further directed to dispose of the suit

expeditiously.94

92
2001 PTC 328(Del).
93
(2005) (2) XLVI GLR 1557
94
Bhavnesh Mohan Lal Amin v. Nima Chemical Works Ltd., (2006) 1 SCC 185)

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5) Use of trademark “LIKE ME” by defendant is similar to the mark “LAKME”

which is a registered trademark of plaintiff. In Lakme Ltd.v. Subhash Training,95

the Delhi High court held that both the trademarks were, apart from dealing with

the same range of cosmetic products, phonetically also similar. There was,

therefore, every possibility of deception and confusion being caused in the minds

of prospective buyer. The court imposed restriction for use of the mark “LIKE

ME”.

6) In M/s. Ramdev Food Products Pvt. Ltd. V. Arvindbhai Patel and others,96 the

plaintiff company owned the trademark, Ramdev, in connection with their

business in spices, and the defendants had a partnership firm, Ramdev Masala.

The plaintiff and the defendants were the members of one family. When dispute

arose, the plaintiff was to continue to be the owner and user of trademark

Ramdev. Later the defendants, besides selling Ramdev Masala from the permitted

outlets, also began selling a variety of spices under the trademark ‘swad’ but they

wrote on these ‘swad’ products the words ‘Ramdev Masala’, in a manner

deceptively similar to the plaintiff’s trademark. The Supreme Court holding the

permission to sell the products of the plaintiff did not restrain the defendants from

manufacturing their own spices; but by virtue of it they could not become entitled

to use the trademark registered in the name of the plaintiff.

A permitted user does not have right to institute proceedings against infringer of

the registered trademark which he is permitted to use.

95
1996 ptc(16)567 Delhi.
96
2006(33) PTC (SC) p.251

116
7) No one can use the trademark which is deceptively similar to the trademark of

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

Pharmaceuticals Pvt.Ltd,97 the plaintiff contended that that opponents are selling

products under the trademark ‘FEXIM’ that is deceptively similar to the plaintiffs

mark ‘PHEXIM’, which is used for pharmaceutical preparations. The defendants

are selling anti-biotic tablets with the trademark ‘FEXIM’ with the packing

material deceptively similar to that of the plaintiff. The court imposed restriction

on the defendant from the trademark ‘FEXIM’ or any trademark deceptively

similar to the trademark of the plaintiff ‘PHEXIM’ any Label/packaging material

deceptively similar and containing the same pattern as that of the plaintiff.

8) If the trademark is not registered by any party but one party started using it

before the other then first one would have the legal authority on that particular

mark. in the Dhariwal Industries Ltd. And Anr. V. M.S.S. Food Products98case,

where appellants were using the brand name MALIKCHAND for their product

and the respondents were using the name ‘MANIKCHAND’ which is similar to

the previous one and both parties have not registered their trademark they are

using it from long-time back and hence Court granted perpetual injunction against

the respondents.

9) Even, if a company is not doing business in country, but if it is a well known

company or well known goods, then also it would be entitled to get authority over

its trademark. As given in case of N.R.Dongre v. Whirlpool Corp.Ltd99, where the

defendants have failed to renew their trademark ‘WHIRLPOOL’ and in the mean

97
MANU/DE/2840/2005
98
AIR2005SC1999
99
(1998) 5SCC 714

117
time the plaintiffs have got registration of the same. In this case court said that

though there was no sale in India, the reputation of the plaintiff company was

travelling trans-boarder to India.

5.8.6. Cases on which Infringement does not apply:

1) In Amir Chand Om Prakash v. Hari Dorshan Sevashram,100 the plaintiff’s

trademark MAHABIR with device of Lord Hanuman and defendants mark HARI

DARSHAN with Photographs of 12 different Gods and Goddesses, one of which

is that of Hanuman was not found similar. The Delhi High Court held that there is

no likelihood of confusion or deception.

2) in S.M. Dyechem Ltd. V.Cadbury (India)Ltd., 101 the Supreme Court held that

the plaintiffs trademark PIKNIK and defendant’s mark PICNIC, though they are

phonetically similar but on facts, there was dissimilarity in essential features and

chances were more in favour of defendant and therefore, plaintiff was not entitles

o injunction.

However, in Cadila Health Care Ltd. V. Cadila Pharmaceutical Ltd.,102the three-

judge Bench of Supreme Court disagreed with the ruling in S.M.Dyechem case.

The Court observed:

“The deceptive similarity is not only facto for violation of trademark,there must

be consideration of other relevant factors for infringement of trademark which

creat confusion in to the minds of the person”

100
2002)(24)PTC86 Del 1
101
(2000)5 SCC 573:AIR 2000SC2114
102
(2001)5 SCC 73: AIR 2001 SC1952

118
3) Similarly, in Vinayak Tea Co. V. Kothari Products Ltd.103, the plaintiff is the

manufacturer and seller of pan masala unregistered trademark ‘ Parag’ Defendant

is dealing in tea, prefixing the words of goods manufactured and sold by it. The

Allahabad High Court vacated the injunction on the ground that there is no prima

facie evidence to show confusion or deception.

The cases discussed herein above thus reveal the judicial trends in applying the

yardsticks to ascertain whether trademark has been infringed or not.

In Subhash Chand Bonsal v.Khadim and Another104, the plaintiff was the

manufacturer of shoes and slippers under the trademark KHAZANA, since

1990.the same was also registered. The defendant applied for trademark

.Khadim’s KHAZANA, which he has been using since 2004. The plaintiff not

only opposed the registration of Khadim’s KHAZANA but also filed suit for

infringement and claimed damages to the extent of Rs.20 lakhs, besides delivery

up of the infringing material and rendition of accounts.

Delhi High Court held that there was strong possibility of customer finding the the

shoes and slippers being sold under trademark Khadim’s KHAZANA as

confusing the same with the plaintiff trademark KHAZANA. The impugned

trademark was found deceptively similar to the registered trademark of plaintiff.

Similarly, in Metro Tyres Limited v. M/s AS. Traders and others, 105 the Delhi

High Court held that the defendants trademark VELO though written in simple

103
2002 (25)PTC721
104
(2012)IX A.D.(Delhi)448.
105
2011) 6 Raj.184 (Del)

119
words was deceptively similar to the plaintiff’s trademark VELO represented in

special and artistic manner.

5.9. PASSING OFF:-

Passing off a concept derived from English law it is like law of tort.Passsing off is

such action available to a person where the remedy is not available to original

mark in any codified law in passing off the person whose trademark is not

registered he can get remedy through passing off action.

Further, an action in passing off not only covers the mark itself, but can also be

sought when the general look/getup or the advertisement in which the mark is

included are copied.

According to Salmond passing off is use of any unregistered trademark by making

it similar.definately it is use with the guilty intention and cause loss to other

person.106 The concept passing off is not defined in the Trade Marks Act, 1999 but

its reference found in some of the provisions of the Act.

As seen above, a passing off action prevents Trader A from passing off his goods

a of Trader B in the market. In Cadila Healthcare Ltd. V. Cadila

Pharmaceuticals Ltd,107 the Supreme Court laid down certain factors in order to

decide an action of passing off on the basis of unregistered trademark. The Court

observed that, whether the marks are word marks or label marks, the degree of

resemblances between the marks have to be check.

106
(Salmond Law of Tort, 17th ED.,at.p.401),
107
JT 2001(4) SC 243

120
In Satyam Infoway Ltd,108case, it held the following three elements to be

established for an action of passing off:

a) According to supreme court first element in an action for passing off itself

according to term ‘passing off’ the other person is restrain to use the goods and

services of the registered person or plaintiff.

b) Misrepresentation is second element it must have to prove by the plaintiff

against the defendant and against any person who involve in the act of

misrepresentation.

c) Third element is relation to Loss or the likelihood of loss is also ingredient for

passing off action as under circumstances.

There are three basic constitutes in action for passing off. They are:

a) Goodwill for goods/services in the market;

b) Misrepresentation by the defendant; and

c) Misrepresentation must have caused damage to the reputation or goodwill of

the plaintiff.

5.9.1. Passing off Action:-

So far, we have discussed the issues relating to infringement of registered

trademark. But in case of unregistered trademark the remedy based on passing off

action has been provided under section 27(2). Section 27 is reproduced hereunder:

Section 27: provides as under:

121
1) The person can not entitled to institute any proceedings for prevent, or for

recover damages for the infringement of an unregistered trademark.

2) Nothing in this Act shall be deemed to affect the right of action against any

person for passing off goods or services as goods of another person.

5.9.2. Essential Features of Passing off Action

The object of this remedy is to protect the goodwill and reputation of a business

from encroachment by dishonest competition. The basis of passing off action is

misrepresentation. It is actionable wrong for any person to pass off his goods or

business as and for the goods or business of another person. In an action based on

passing off the plaintiff must show that-109

i) There is a misrepresentation made by defendant in the course of trade, to

prospective customers or ultimate customers of goods or services supplied by

him;

ii) There is a misrepresentation calculated to injure his business or goodwill; and

iii) The plaintiff has suffered damage to business or goodwill.

In K.Narayonan and Anr. V. S.Murali,110 the Supreme Court held that mere

filling of an application for registration of a trademark does not constitute a part of

cause of action in a suit for passing off. In this case according to observation of

supreme court The appellants has not right to file the petition before the High

109
Lord Diplock in Erven Warnik v. Towned.(1980)RPC 31
110
AIR 2008 SC3261:(2008) 10 SCC 479

122
Court for seeking an order of injunction to impose the restrictions on the

respondent from passing off his goods using the trademark, the plaintiff can only

make the application before the Trademark Registry against the respondent. In

other words the high court directly not considers the matter of passing off.

5.9.3. Modes adopted for Passing Off:-

The modes for passing off may include-111

i) Direct false representation,

ii) Adoption of trademark which is same or colourable imitation of trademark of

rival trader,

iii) Adoption of essential parts of rival trader’s name,

iv) Copying the get-up or colour scheme of the label used by a trader,

v) Imitating the design or shape of the goods, or

vi) Adopting the word or name by which the rival traders goods or business is

known in the market.

Passing off Domain Name:-

Because of development in the information technology its need of hour to provide

the protection for domain names of any IT developer. The concept domain name

is relating to IP address of the computers which is used from the particular places.

111
P.Narayan:Intellectual Property Law(2001),2001,p.94

123
it is very difficult o find out infringement of domain name in the field of internet

and cyber matters or any act relating to information technology. Thus, the domain

name falls under the term services within meaning of Section 2(z) of the

Trademarks Act, 1999

5.9.4. Difference between Passing off and Infringement:-

The difference between passing off and infringement is very little in the sence. In

an action for passing off there is no requirement of registration of trademark.only

if the property of plaintiff is connected with goodwill and reputation the passing

off action can be initiate by that person. In case of passing off action, the

defendant’s goods need not be same as that of the plaintiff, they may be allied or

even different and case of an action for infringement, and the other persons use

the registered trademark may be in respect of the goods for which the mark is

registered or similar goods. In the claims of infringements based on well-known

trademarks, the barrier of goods stands further diluted in view of the provisions of

the Trademarks Act, 1999. The difference between the passing off action and

infringement again consider not only with the identity or similarity of marks but

also subject matter is likelihood of confusion. But in case of infringement, if the

mark is identical and further proof is required.

In Kavi Raj Pandit Durga Das Sharma v. Nav Rattan Pharmaceutical112 the

Supreme Court laid the difference between the two held that “an action for

passing off is a common law remedy, being in substance and action for decent,

that is, and passing off by a person of his own goods as those of another.

112
AIR 1965 SC 980

124
In this case Supreme Court said that, the action for passing off is very different

from the infringement. Provisions of infringement are found in the codified law

but the provisions of passing odd are not available in the codified law.

In American Home Products Corp. V. Lupin Laboratories Ltd.113, the Court

held that it is well settled law that when considering the infringement of a

registered trademark. Again court observed that difference between passing off

and infringement is depend on circumstances of the case.

In Satyam InfowayLtd. V. Sifinet Solutions (p) Ltd114.it was held by the Court

that to establish an action for passing off three elements are needed to be

established, which are as follows:

1) Misrepresentation by the defendant; and

2) Misrepresentation must have caused damage to the reputation or goodwill of

the plaintiff.

5.9.5. Grounds for Determination of Deceptive Similarity in

Passing off Action:

In Cadila Health Care Ltd. V. Cadila Pharmaceuticals Ltd.115 following factors

have been stated by Supreme Court in determining deceptive similarity in action

based on passing off:

a) The nature of the marks, i.e. words and label marks.

113
1996 PTR 7(Bom.)
114
2004(6)SCC145
115
2001 PTC 300 (SC):AIR 2001 SC 1952

125
b) The nature of the goods in respect of which they are used as trademarks.

5.9.6. Selected Cases on Passing off:-

1) in one of the famous case of pan masala the Supreme Court confirm the

contention of respondent to use trademark ‘MALIKCHAND’ for pan masala on

the basis of prior user and restrained the appellant from using trade name

‘MANIKCHAND’116 based on passing off action. In this case plaintiff-respondent

was using trademark ‘MALIKCHAND’ since 1959,whereas,the defendant-

appellant started selling his product (pan masala and guthka) in the name of

‘Manikchand’ in the year 1988 only.

2) In Laxikant Patel v. Chetan Bhat,117 the plaintiff appellant was running a

studio in the name of ‘MUKTIVAN COPOUR’. The defendant respondent who

was running the studio in the name Gokul Studio later changed the name as

“MUKTI JIVAN COLOUR LAB STUDIO” with the intention to make use of

business of plaintiff. Since the plaintiff had acquired goodwill as to quality of

service being rendered, there is likelihood of injury which could be caused to him.

In this case Court restrained to the respondent from using the name “MUKTI

JIVAN COLOUR LAB STUDIO”

3) In Midas Hygiene Industries v. Sudhir Bhatiya118 the Supreme Court allowing

the appeal found that use of name “MAGIC LAXMAN REKHA” by defendant

respondent was an attempt to pass off the goods by using the goodwill of the

116
Dhariwal Industries v. M/s S.S. Food Products,2005(2)Scale,p.407
117
2002 (3) SCC 65:2002 (24)PTC 1(SC)
118
(2004) (2) Scale, p231.

126
plaintiff trademark “LAXMAN REKHA”. The Court further held that mere delay

is no ground to refuse injunction.

4) In cases relating to internet domain names, defendant’s internet domain name

‘YAHOO INDIA’ was found deceptively similar to plaintiff’s domain name

YAHOO. The defendant was restrained from using YAHOO INDIA. (Yahoo Inc.

V. Akash Arora,1999 PTC (19)201.),similarly, in Rediff Communication Ltd. V.

Cyberbooth119 the court restrained defendant from using domain name ‘RADIF’

which was sought to be passed as the trademark ‘REDIFF’ of the plaintiff.

5) In the case of International Association of Lions CLUB V. National

Association of Indian Lions120 where the defendants, a club at Ajmer, were using

the word ‘Indian Lions’ with the emblem of a tiger, the plaintiff’s the

International Association of Lions Clubs, brought an action for passing off their

services. The view of the court is that the plaintiff’s were entitled to get injunction

for passing off services rendered by them.

6) In Rupa & Co. Ltd. V. Awn Mills Co. Ltd.121 the court observed that the use of

the word ‘DON’ by Rupa Company was amounts to an infringement of other

registered name ‘DAWN’ owned by Dawn Mills Ltd. The court observed this was

a fit case for grant of an injunction.122

119
AIR 2000 Bom.27
120
(2006 (33) PTC 79 (Bom.)
121
AIR 1998 Guj.247
122
Mishra J.P., ‘Intellectual Property Law’, Central Law Publications p. 229-330.)

127
7) In Spolding v. Gamage123, the House of Lords observed that “the requirement

of the passing off action is it to be a false representation by the defendant, and it

must be proved as false representation was made”.

8) In case of Reckitt and Colman v. Borden124, The House of Lords held that the

appellant’s use of a packaging similar to the defendant’s for selling lemon juice

amounted to misrepresentation on the part of the appellant and declined to vacate

the injunction order in favour of the defendant.

9) In Honda Motor Co.Ltd. v. Mr.Charanjit Singh & others125,Respondents

company was using the trademark HONDA for ‘Pressure Cookers’ which they are

manufacturing in India even when their application for registration o this

trademark has been rejected by the registrar, they continued using it and applied

for registration and hence plaintiff has brought this plaint. In this case the plaintiff

is very reputed company and owner of Motor Cars, Motor Cycles, Generators and

other electronic appliances in many parts of the world.

In this case the Court impose various restrictions on the Respondent from using

the trademark HONDA for pressure cookers or any goods or any other trademark,

which are identical with and deceptively similar to with the trademark .

10) In the case of Smithkline Beecham v. V.R. Butaria126, the plaintiff applied for

permanent injunction to restrain the defendant from infringing the trademark,

passing off, dameges, delivery etc.

123
(1915) 32 R.P.C. 273 (H.L.)
124
1990 1 W.L.R. 491 (HL)P.453
125
2003(26)PTC 19(Del.)
126
MANU/DE/2890/2005

128
Court said that mere publication of an advertisement cannot establish a trans-

border reputation.

5.10. Legal Remedies against Infringement and Passing off a

Trademark:

The remedies may be classified into civil remedies and criminal remedies.

In Intel Corporation v. Divakaran Nair and others127where the defendant had

added the word ‘art’ to the plaintiff’s trademark ‘Intel’ to coin a new word ‘art

intel’ for his trademark. In this case court made the order of permanent injunction

against the opposite party.

In the case of Sarillo Perfumery v. Jure Perfect,128 where the plaintiff had a

trademark and its essential feature was word ‘jure’ written in a special style, the

use of the words ‘Jure Hair Curler’ by the defendant in its products like setting,

Shampoo etc. It was held to be an infringement of the trademark owned by and

registered in the name of the plaintiff at the court. The House of Lords upheld the

decision in Appeal.

In M/s Bengal Waterproof Ltd. V. M/s Bombay Waterproof Manufacturing Co.

And another129 the Apex Court held that the respondent’s trademark ‘Dackback’

was similar to appellants trademark ‘Duckback’ and that the respondents were

guilty of the infringement of the appellants trademark. The Court ruled that the

respondents were also guilty of passing off their goods as those of the appellant.

127
2006(33)PTC345(Del.)
128
1941) 58 R.P.C. 147 (C.A.H.L.)
129
AIR 1997 SC1398

129
5.10.1. Civil Remedies:-

I) who can file suit:-

Following persons can file suit for infringement or passing off:

i)the registered proprietor or his legal successor.

ii) the Registered user of a trademark subject to prior notice to registered

proprietor.(sec.52)

iii) an applicant for registration of trademark provided the suit shall sustain only

when his trademark is granted registration.

iv) legal heirs of deceased proprietor of trademark.

v) Any one of the joint proprietor of a trademark.

vi) A foreign proprietor of a trademark registered in India and the infringement

has taken place in India.

II) Against which persons the suit can be filed:-

The civil suit for infringement or passing off can be filed against following

persons:-

i)the person who directly infringes or passes off the trademark of plaintiff.

ii)the agent of infringer.

iii) The master in whose employment and whose authority the servant commits

infringement.

130
iv )the directors and promoters of a limited company can be joined as defendant

only when they have personally committed or directed infringement of trademark.

III) Place of filing suit:-

District and session court have power to adjudicate any matter of infringement

and passing off against the defendant or any person who use the mark which is

identical with or deceptively similar to the plaintiff’s trademark, and trademark is

registered or unregistered is immaterial.

IV) Limitation for filing suit:-

As per Limitation Act, 1963 the period of limitation for filling suit for

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

V) Burden of Proof:-

In a suit for infringement burden of proof lies on plaintiff. The plaintiff must

prove that trademark use by defendant is deceptively similar to the trademark of

plaintiff. Similarly, in action for passing off the plaintiff must prove that his mark

has become distinctive. He must further prove the defendant’s use of disputed ark

is likely or calculated to deceive or cause confusion or injury, actual or probable

to the goodwill of the plaintiff’s business.130

VI) Defences for defendant:-

130
East End Hosiery Mills v. Agarwal Textiles, AIR 1971(CAL.3).

131
 In a suit for infringement or passing off action the defendant may raise either of

the following defences:-

i) that the use of trademark is protected by the provisions of Section 30 of the Act

in which the acts which do not constitute infringement are listed out.

ii) that the defendant has been an honest and concurrent user.

iii) that the defendant has also obtained the concurrent registration.

iv) that the use complained is bona fide use of defendant’s own name, address and

description of goods protected by the Act.

v) That the plaintiff is debarred from suing or claiming relief by his own conduct

in the form of acquiescene, delay or latches.131

5.10.2. Criminal Remedies:-

In the Trademark Act, 1999, provisions have been made for punishment of

various offences which may be committed by person with regard to falsification

of trademark. The criminal proceedings can be initiated to civil suit.

1) Falsifying and falsely applying Trademark

Punishment:-Minimum imprisonment for six months and maximum of there years

and fine is ranging between Rs.50, 000 and Rs. 2 Lacs.

131
Kirloskar Proprietory Ltd. V. Kirloskar Dimension. AIR 1977 Kant I: see Rupa

and Company v. Dawn Mills Ltd., AIR 1993 Guj.247

132
2) Sale of goods or services to which is false trademark or false trade description

is applicable.

Punishment:- Minimum imprisonment for six months and maximum of three

years and fine ranging between Rs.50,000 and Rs.2 Lacs.

3) Removal of piece of goods contrary to section 81(which deals with stamping of

piece of goods, cotton yarn and threads.

Punishment:- Forfeiture of goods and fine up to Rs.1,000.

4) Falsely representing a trademark as registered.

Punishment:-Imprisonment up to three years or fine or both

5) Improper description of a place of business as connected with Trademark

Office.

Punishment provides in law is Imprisonment up to two years or fine or both.

6) Falsification of entries in the Register (Sec.109)

Punishment: - Imprisonment up to two years or fine or both.

In case of offence under Section 103 and 104 if the offence is repeated, the

minimum imprisonment of six months shall be enhanced to one year and the

minimum fine will be raised to Rs. 1 Lac. Further, when a person is convicted

under Section 103 and 104 or even if he is acquitted on the ground that he acted

without intention to defraud, the government may direct forfeiture of goods (see

section 111).

133
In case of offence by the companies, the company as well as every person in

charge of, and responsible to the company for conduct of its business at the time

of commission of offence shall be liable to be proceeded and punished

accordingly(sec.114)

5.10.3. Relief in cases of an action for passing off:-

Essentially, an action for passing off lies where misrepresentation is likely to be

caused or wrong impression created in the minds or ordinary customers causing

injury to the owner of the mark.132.

The main question is not the intention of the alleged infringer in using trademarks

but the probable effect of such action on the minds of the customers. According to

provisions of Indian Trademark Act District Court having jurisdiction may grant

an injunction as a relief in a suit for passing off.133

Two tests are applied for determining the question whether the plaintiff is entitled

to an injunction or not In the cases of passing off action, Viz

1) If the words used in the trade name of plaintiff are mere descriptive

words of common use or they have come to acquire a distinctive or

secondary meaning in connection with the plaintiff’s business.

132
Bata India v. Pyarelal & Co., AIR 1985 ALL242
133
Section 135 of the Trade Marks Act,1999)

134
 2) If there is a reasonable opportunity that the use of the name adopted by

the defendants was likely to mislead the customers of plaintiff by reason of

similarity of the two trade names.134

5.11. Authorities under the Trademark Act:-

The Trademarks Act is mainly implemented through two important functionaries,

namely, Registrar and Intellectual Property Appellate Board. These bodies are

empowered with necessary powers for proper discharge of their duties. In this

chapter their powers and role is described.

Powers of Registrar:-

The Central Government appoints Controller General of Patents, Designs and

Trademarks as Registrar of Trademarks. Registrar is the main functioning under

the Act. The Central Government empowered by the provisions of the Act to

appoint any other officers with such designation as it thinks fit under the

superintendence and direction of the Registrar, for the purpose of discharge of

such functions of Registrar. As may be authorised. (see Sec.3)the Head Quarter of

Trademark Registry is at Mumbai with branches at Kolkata,Delhi,Chennai and

Ahmadabad135. The Registrar of Trademarks mainly deals with registration of

trademarks and issues related to registration. He is vested with wide ranging

discretionary powers. In all proceedings under the Act, before the Registrar, he

134
Victory Transport v.Dist Judge Ghaziabad, AIR 1981 ALL421)
135
(See Govt. Of India Gazette notification dated 21.08.1990.)

135
shall have all the powers of a Civil Court for purposes of receiving evidence,

administering oath, enforcing the attendance of withness,compelling discovery

and production of documents and issuing commission for the examination of

witness.(see sec.127) he can also review his decisions.136

Functions of Registrar:-

According to the provisions of Trademark Act Registrar can dischrage various

functions relating to following matters –

i) Classification of goods and services for purpose of registration(section

7);

ii) Granting or refusing to register a trademark(sections 8 to 160;

iii) Correction and amendment of register(section 22);

iv) Renewal, removal and restoration of registration(section 25);

v) Registration of assignments and transmission of trademark (section 45)

The appeal against the decision of Registrar shall lie to Intellectual

Property Appellate Board within ninety days from the date on which

the order or decision sought to be appealed against is communicated to

such person preferring appeal (see.sec.91)

Appellate Board (Sections 83 to 100)

(The Board has come into existence and became effective w.e.f. 15-09-2003 with

HQ. At. Chennai)

136
ibid

136
Establishment of Intellectual Property Appellate Board (to be referred as

Appellate Board hereinafter) under Trademarks Act, 1999 is a novel experiment

for effective management and enforcement of Trademark law in India. The

Appellate Board is empowered with necessary powers as quasi-judicial body with

objective to speedy disposal of disputed issues relating to registration, and lessens

the burden of regular Civil Courts. It has been composed and empowered on the

lines of Tribunals like, Income tax Appellate Tribunal and Customs and Excise

Tribunal (CEGAT)

Composition of Appellate Board (Section 84 to 86)

In Appellate Board there should be Chairman, Vice-Chairman and such other

members as the Central Government may deem fit. Only a person who is or has

been a Judge of a High Court or who has held office of Vice-Chairman for two

years shall be qualified for appointment as Chairman. For the post of Vice-

Chairman the person must have held the office of a judicial member or technical

member for at least two years or has been a member of Indian Legal Services for

at least five years. The Chairman, Vice-Chairman and other members shall be

appointed by the President of India after consultation with the Chief Justice of

India. The term of the office of Chairman, Vice-Chairman and members will be

five years or the attainment of 65 years for Chairman and Vice-Chairman and 62

years for members, whichever is earlier.

Procedure and Powers of Appellate Board (Section92):

The procedure and powers of Appellate Board is as per Code of Civil Procedure,

1908 and as per the principles of natural justice.

137
The following matters may be heard by Appellate Board namely-

a) Receiving evidence;

b) Issuing commissions for examination of witness;

c) Requisitioning any public record; and

d) Any prescribed matter.

According to Sections 193 and 228 and for the purpose of Section 196 of the

Indian Penal Code Any proceeding before the Appellate Board shall be

deemed to be a judicial proceeding, the Appellate Board shall be deemed to be

a Civil Court for all the purposes as per Section 195 and Chapter XXVI of the

Code of Criminal Procedure, 1973 (2 of 1974)

Bar of Jurisdiction of Courts:-

According to section 93 no court or other authority shall have or be entitled to

exercise any jurisdiction, powers or authority in relation to the matters on which

appeals can be filed before Appellate Board.

Transfer of pending case:-

All cases of appeals against any order or decision of the Registrar and all cases

pertaining to rectification of register, pending before any High Court have been

transferred to Appellate Board(pending proceedings have been transferred to

Appellate Board from 6-10-2013 vide S.O.1150 (E))

5.12. Selective Cases decided by Appellate Board:-

138
It may be mentioned here that the Appellate Board has started functioning

effectively and deciding disputed claims of registration. A few selected decisions

of Appellate Board are narrated hereunder:

i) In New Nandi Seeds Corporation v. M.V. Subbaiah137the

Appellate Board directed to expunge the registration of respondent’s trademark

‘NANDI ‘on the ground that he was not honest and concurrent user of applicant’s

trademark.

ii) in E.I.Dupont De Neumors Co. USA v. Zip Industries Ltd.138,The Appellate

Board upheld the decision of Registrar in rejection opposition of opponent for

registration of trademark TUFFLON in respect of fasteners.

iii) in Beecham Group Plc. V. S.R.K. Pharmaceuticals,139 the Appellate Board

found that trademark AMOXIL and LYMOXYL both in relation to medicine are

phonetically and structurally similar, therefore, application for registration of

trademark LYMOXYL ought not have been accepted by Registrar.

Establishment of Appellate Board is a welcome step towards protection and

promotion of intellectual property rights in India. In time to come the Appellate

Board will prove its utility and provide cheaper and speedy remedy to litigants.

Assignment and Transmission of Trademark:

In this chapter the provisions relating to assignment and transmission of

trademark are discussed. Like other forms of intellectual properties, trademark is

137
2004(29) PTC 347(IPAB)
138
2004(28)PTC 174 (IPAB)
139
2004(28)PTC 391(IPAB

139
also capable of being transferred. The owner of trademark can assign with or

without goodwill his trademark to another person on receipt of consideration.

Similarly, a trademark can be transmitted to the successor of the owner upon his

death or by operation of law.

Conditions of Assignment:-

The assignment of trademark must be in writing and specify the conditions and

limitations to which the assignment is subject to. The assignment otherwise than

in connection with the goodwill of a business will not be effective unless the

assignee applies for direction with respect to the advertisement of the assignment

within six months of the assignment. If the assignment is accomplished by the

transfer of goodwill of the export business or of the business of goods or services

in respect of which assignment is made, the assignment of a trademark is not

deemed to have been done otherwise than in connection with the goodwill of the

business (see, section 42)

Registration of Assignment and Transmission:-

The Registration of assignment and transmissions necessary with Registrar. The

person is whose favour assignment or transmission is made will make an

application to the Registrar for registration of assignment or transmission as the

case may be. The Registrar shall, on receipt of application and on proof of title to

his satisfaction, register the person as the proprietor of trademark in respect of

goods or services in respect of which the assignment or transmission has been

effected (see section 45).

140
In Ratansi Mulsi v. Vinod Ratilal Gandhi140 the Bombay High Court has held

that it is abundantly clear that without registration of the assignment or

transmission, no rights can be pleaded on the ground that trademark has been

assigned or transmitted.

141
In case of CCE V.Vikshara Training and Investment (P) Ltd. the Supreme

Court has held that in case of non-registration of assignment of a registered

trademark, if on fact it is amply proved that assignment has taken place.

Thus, above discussion make it clear that Act permits assignment and

transmission of trademark, both registered and unregistered. But the assignment is

subject to certain conditions and the deed of assignment should be registered with

Registrar.

5.13. Duration of Registration:-

The duration of registration of a trademark under s.25 is 10 years. But it is subject

to renewal after prescribed time by law. The initial duration of registration of a

trademark under the Trade and Merchandise Act, 1958 was 7 years.

5.11. Renewal of Registration:-

On an application made by the registered proprietor of a trademark in the

prescribed manner and within the prescribed period and subject to the payment of

the prescribed fee, the Registrar renew the registration of the trademark for a

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AIR 1991Bom.40
141
2004)13SCC 49.

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period of 10 years from the expiry date of the original registration or of the last renewal

of registration.

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