WHAT IS A TRADEMARK?

A trademark is defined under Section 2(1)(zb) of the Trade Marks Act, 1999. A
trademark is a unique symbol, word, name, logo, label, design, shape, or combination of
colours that helps people identify and distinguish a product or service of one company from
another.

SECTION 29: GROUNDS OF TRADEMARK INFRINGEMENT

Under Section 29 of the Trade Marks Act, 1999, trademark infringement means using
someone else’s registered trademark without permission. The following are the main grounds
for trademark infringement in India:

1. If someone uses a mark that is exactly the same as a registered trademark for similar
goods or services.

2. If the unregistered mark is similar enough to confuse customers.

3. If the mark is similar to a registered trademark that already has a good reputation.

4. If someone uses a registered trademark on product labels or packaging without

authorization.

5. If someone uses a registered trademark in advertising to take unfair advantage or to

harm its reputation.

SECTION 30: LIMITS ON TRADEMARK INFRINGEMENT

This section explains when using a registered trademark does not count as
infringement.

1. Fair Use Allowed

Using a trademark to refer to the original goods/services is allowed if:
 It’s done honestly in business, and

 It doesn’t harm the reputation or take unfair advantage of the trademark.

2. NO INFRINGEMENT IN THESE CASES

 Describing features: Like type, quality, value, origin, etc.

 Use within limits: If trademark is registered with specific conditions, using it outside
those doesn’t count as infringement.

 Connected goods/services: If the trademark was put on goods/services by the owner

or with their consent.
  Accessory goods: If the mark is used to show a product fits with another one already
using the mark.

 Similar registered trademarks: If two people have similar marks registered, they
can use their own.

3. RESELLING GOODS
If someone lawfully buys goods with a trademark, they can resell them. It won’t be
infringement even if:
 The trademark was later assigned to someone else.

 The goods were sold by the trademark owner or with consent.

4. EXCEPTION
Resale can be infringement if the goods’ condition is changed or damaged, and the
owner has a valid reason to object.

TEST FOR INFRINGEMENT

Some important court decisions have helped explain how to test if trademark infringement
has happened.

1. DURGA DUTT SHARMA VS. NAVRATNA PHARMACY LABORATORIES (AIR

1965 SC 980)
In this case, the appellant, Pandit Durga Dutt Sharma, was selling medicines under the name
“Navaratna Kalpa”. The other party, Navratna Pharmacy Laboratories, had already registered
the trademarks “Navaratna” and “Navaratna Pharmaceutical Laboratories” even before 1937.
In 1946, when Pandit Sharma applied to register “Navaratna Kalpa” for his medicines, the
Navratna company objected. They said they already had the trademark and that “Navaratna”
had become known as their brand. They also argued that using this name would confuse the
public.

Pandit Sharma appealed in the Travancore-Cochin High Court, saying that “Navaratna” is a
common word in Ayurveda and means “nine gems.” He said many Ayurvedic medicines use
this word and it cannot belong to just one company. The Supreme Court said that common
words cannot be owned by one person unless there is very strong proof that people only link
that word to that specific company. In this case, even though the company had used the word
for many years, the court found that the word still had its original meaning in Ayurveda and
people didn’t only associate it with the company. So, the company couldn’t stop Pandit
Sharma from using the word “Navaratna Kalpa” in good faith.
2. RUSTON AND HORNBY LTD. VS. ZAMINDARA ENGINEERING CO. (AIR 1970
SC 1649)
In this case, Ruston and Hornby had a registered trademark “RUSTON”. The respondent,
Zamindara Engineering, started selling their engines using the name “RUSTAM INDIA”.
Ruston filed a case asking for a permanent injunction, saying “RUSTAM” was too similar to
“RUSTON”. The trial court said there was no visual or sound similarity, so it dismissed the
case. But the High Court later said the words were deceptively similar. However, it said that
adding “INDIA” made it clear the engines were different since Ruston’s engines were made
in England and Zamindara’s in India.

The Supreme Court, however, said that in trademark infringement cases, if the marks are
exactly the same, the court doesn't need to check if it causes confusion. But if the marks are
just similar, then the court must check if they are likely to confuse people. In this case, the
Court said that adding “INDIA” was not enough to avoid confusion. So, it ruled in favor of
Ruston and said this was a case of trademark infringement.

3. PEPSICO INC. VS. HINDUSTAN COCA COLA LTD. (2001 PTC 699 DEL)
This case was about disparagement. Pepsi filed a case against Coca Cola for showing an ad
that mocked Pepsi’s drink. In the ad, an actor asked some kids which drink they liked. The
kids chose a drink that looked just like Pepsi (the packaging was almost the same). The actor
then said that drink was too sweet and for kids, and that Coca Cola was better for grown-ups
because it was stronger. Later in the ad, the actor revealed that the drink they liked was
actually Coca Cola, and the other bottle (meant to look like Pepsi) had “PAPPI” written on
the cap in a way that looked similar to the Pepsi logo.

The kids were shown as feeling embarrassed about choosing the “wrong” drink. The actor
also made fun of them. The Court said this ad disrespected and harmed the image of Pepsi,
and Coca Cola had infringed Pepsi’s trademark rights by mocking it and confusing
customers. So, Coca Cola was held guilty of trademark infringement through disparagement.
DEFINITIONS (SECTION 2), CONCEPT OF INDICATION OF SOURCE,
GEOGRAPHICAL INDICATION (GI), AND APPELLATIONS OF ORIGIN
The main purpose of a Geographical Indication (GI) tag is to show that a product has special
features because it comes from a specific place. It helps protect the reputation of such
products from fake versions. For example, India and Bangladesh are having a dispute over
the GI tag for ‘khadi’. India believes khadi is part of its traditional handloom culture, and a
group called IPRAA has asked Bangladesh to take back its GI application. Instead of fighting
with each other, countries should work together to protect their cultural heritage from outside
threats.

But getting a GI tag also comes with responsibility. The people or groups who get the tag
must make sure it is not misused. For instance, Darjeeling tea has a GI tag, and its authorized
sellers are very careful. They have taken legal action in different countries to protect the tea's
name. Because of this, tea farmers in Darjeeling are able to earn better from their unique
product.

Case: Mount Everest Mineral Water Ltd. v. Bisleri International Pvt. Ltd., 2011 IPAB
(DEL) 697 – HIMALAYAN

DEFINITION (SECTION 2):

In Indian law, a Geographical Indication (GI) is a sign used on goods like farm products,
natural items, or manufactured goods that come from a particular place. These goods are
special because of the place they come from. For manufactured goods, at least one step like
making, processing, or preparing the item must happen in that place.

INDICATION OF SOURCE:
This is just a sign or label that shows where a product or service comes from. It doesn't tell us
anything about the quality of the product.
For example, “Made in India” or “Made in China” are signs of source. Using a country’s flag
is also an indication of source.
There’s also an international agreement called the Madrid Agreement that tries to stop people
from lying about where products come from.

APPELLATIONS OF ORIGIN VS. GI:

Appellation of origin only tells us where a product is made, like “Made in India.” It doesn’t
say anything about the quality or uniqueness of the product. Anyone can use it if their product
is really made in that place.
Famous places like the Taj Mahal or the Statue of Liberty can also act as signs of origin.

If a product made in India becomes well known for its quality, that reputation should be
protected. If someone in another country (like Singapore) wrongly uses “Made in India” on
their product, it is misuse—but only if India and Singapore have an agreement under the
Lisbon Agreement (WIPO treaty).

But appellation of origin is not intellectual property. It doesn’t need registration. It’s just a
label.
GI, on the other hand, is protected under the TRIPS Agreement (a global IP treaty). Every
country under TRIPS must have a law to protect GIs.
India’s law is called The Geographical Indications of Goods (Registration and
Protection) Act, 1999.

TYPES OF GI-TAGGED PRODUCTS IN INDIA:

1. Agricultural – Example: Darjeeling Tea (West Bengal)

2. Handicrafts – Example: Chanderi Sarees (Madhya Pradesh)

3. Manufactured goods – Example: Mysore Sandal Soap (Karnataka)

4. Food items – Example: Bikaneri Bhujia (Rajasthan)

RASGULLA CASE – ODISHA VS. WEST BENGAL:

There was a fight between Odisha and West Bengal about who made rasgulla first.
In 2017, West Bengal got a GI tag for “Banglar Rasogolla.”
Later, Odisha also got a GI tag for “Odisha Rasagola,” which is made in a village called
Pahala.

CASE: SCOTCH WHISKY ASSOCIATION V. GOLDEN BOTTLING LTD. (2006):

To get GI protection, two things are needed:

1. The product must come from that place.

2. Its qualities or reputation must be because of that place.

For example, Scotch whisky must be made in Scotland.

In this case, the company used the name “Red Scot” to confuse buyers. They didn’t even
come to court. The court ruled against them and said using “Red Scot” was wrong. It broke
both the WTO-TRIPS Agreement and India’s GI Act, 1999.

CASE: TEA BOARD OF INDIA V. ITC LTD. (2011):

The Tea Board of India had GI rights and trademarks for “Darjeeling” and a logo of a woman
holding tea leaves.

In 2005, ITC wanted to use “Darjeeling Lounge” for its hotel. The Tea Board filed a case in
2010 asking to stop this.

The Calcutta High Court said the case was too late (the lounge opened in 2003), and the time
limit under the GI Act had passed.

The court also said that GI protection only applies to products, not to services like hotel
lounges. “Darjeeling Lounge” wasn’t selling tea, so there was no GI violation.
The court dismissed the case and fined the Tea Board Rs. 10 lakhs.