1.

Introduction, Definition, concept of mark,

2. smell marks, taste marks (Section 2),

B. Registration of Trade marks for goods and services- Procedure (Ss. 18-23),

C. Grounds of Refusal

(i) Absolute grounds (Section 9)

(ii) Relative (Section 11),

D. Prior/ Vested Rights, Rectification of register (S. 57).

TRADE MARKS

“What’s there in name!

That which we call a rose

By any other name would smell as sweet!”

--- Shakespeare: Romeo & Juliet 11.2
 • Distinctiveness,

• Deceptive Similarity

• Similarity of Goods or Services

 Patents/ Copyrights/ Design/ Trade Marks
Patent gives a monopoly right to make and sell and use the patented invented product
or process for a limited period.
Owner of registered design gets the monopoly right to apply the design to the class of
articles covered by registration for a limited period.
Copyright: Author is granted the exclusive right to make copies or reproduction of the
subject matter for a certain period of time.
Trade Marks: it is not necessary that TM chosen by a trader should be result of
inventive skill or intellectual labor. The word or device adopted may be some common
place thing. But subject to minimum conditions, the owner of mark geta a perpectual
right to exclusive use of goods or services in respect of which it is registered or not.
Limits of IP:

Sir Herbert Cozen- Hardy M. R. in Joseph Crosfield Appln. 1909 RPC 854:

“Wealthy traders are habitually eager to enclose part of the great common of
English Language and to exclude the general public of the present day and of
the future from access to this enclosure”

HMJ Dr. Mukundakam Sharma:

“ I believe to continue to learn from each other’s experience not only in relation
to substantive law but also in relation to practice and procedure”.
OBJECTIVE OF TRADE MARK LAW:
• To deal with the rights of a person who has acquired qua Trade Marks.

• The mode of acquisition of such rights.

• The method of transfer of those rights to others.

• The precise nature of infringement of such rights.

• The procedure for enforcement of those rights.

• The remedies available.

• Product Mark: Product mark is a mark that is used on a good or on a product
rather than on a service. This this type of trademark is used to recognize the
origin of the product and helps in maintaining the reputation of a business.
Trademark applications filed under trademark class 1-34 could be termed as a
product mark, as they represent goods.

• Service Mark: Service mark is similar to the product mark but a service mark
is used to represent a service rather than a product. The main purpose of the
service mark is that it distinguishes its proprietors from the owners of other
services. Trademark applications filed under trademark class 35-45 could be
termed as a service mark, as they represent services.
• Collective Mark: Collective mark is used to inform the public about certain distinguished
features of a product or service used to represent a collective. A group of individuals can use
this mark so that they are collectively protecting a goods or service. In a collective mark,
normally the standards of the products are fixed by the regulator owing the mark.

• Certification Mark: Certification mark is a sign that denotes a products origin, material,
quality or other specific details which are issued by the proprietor. The main purpose of
certification mark is to bring out the standard of the product and guarantee the product to
the customers. A certification mark can also be used to uplift the product’s standard amongst
the customers by showing that the product had undergone standard tests to ensure quality.
Certification marks are usually seen on packed foods, toys and electronics.
• Shape Mark: Shape Mark is exclusively used to protect the shape of the product so that the
customers find it relatable to a certain manufacturer and prefer to buy the product. The shape
of a particular product can be registered once it is recognized to have a noteworthy shape.
An example of a shape is the Coca-Cola bottle or Fanta bottle, which have a distinctive
shape identifiable with the brand.

• Pattern Mark: Pattern marks are those products that have specific designed patterns that
come out as the distinguishing factor of the product. Patterns which fail to stand out as a
remarkable mark is generally rejected since it does not serve any purpose. For a pattern to be
registered, it has to show evidence of its uniqueness.
• Sound Mark: Sound mark is a sound that can be associated with a product or
service originating from a certain supplier. To be able to register a sound
mark, when people hear the sound, they easily identify that service or product
or a shows that the sound represents. Sound logos are called as audio
mnemonic and is most likely to appear at the beginning or end of a
commercial. The most popular sound mark in India is the tune for IPL
History of Trade Marks Law:

GATT (I and II) (https://www.jstor.org/stable/45072634),

TRIPS (-do-), Well known trade marks: Art. 16, 18.

• Tokyo Round (12-13 September 1973), The Tokyo Round was a multi-year multilateral trade negotiation (MTN) between
the 102 states which were parties to the General Agreement on Tariffs and Trade (GATT). The negotiations resulted in reduced tariffs and established new regulations
aimed at controlling the proliferation of non-tariff barriers (NTBs) and voluntary export restrictions. The aim was further to harmonize government policies. Concessions
were made on $19 billion worth of trade, and were scheduled to enter effect over eight years from 1980. The Tokyo Round concluded in April 1979.
• The Tokyo Round was held to be "the most comprehensive of all the seven rounds of negotiations held within the GATT since its founding in 1948". Developing countries
were given more say in this round than had been the case in past MTNs

WTO.
Prior to 1940, no protection as such, except the first registration act passed in England in 1875.

The Trade Marks Act 1940

Trade and Merchandise Act 1958

Trade Marks Act 1999

World Trade Organization.

Prior to 1940, no protection as such, except the first registration act passed in England in 1875. The
famous Bass “red triangle” design, which is still registered for “beer.

The Trade Marks Act 1940

Trade and Merchandise Act 1958

Trade Marks Act 1999

World Trade Organization.

First trade mark registered in India: In 1942 for the mark BLACK AND WHITE (Device) to James
Buchanan & Company Ltd. It is a British company involving in the manufacture of Whisky.

The Trade Marks Act 1940

Trade and Merchandise Act 1958

Trade Marks Act 1999

Mark: (m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging or combination of colors or any combination thereof.

(LIST IS NOT EXHAUSTIVE)

Oxford word dictionary “a sign affixed or impressed for distinction”.

Marks must be used visually and not orally.

“A MARK MUST BE DIFFERENT FROM THE THING MARKED. A THING CANNOT BE

MARKED IN ITSELF”.

SERVICE MARK: Sec. 2 (1)(z):

Classes 35 to 42 of Fourth Schedule to the Trade Marks Rule, 2002 are the classification for the
Service marks.
Trade Mark: (zb) “trade mark” means a mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person from those of others and may include
shape of goods, their packaging and combination of colors: and–

(i) in relation to Chapter XII (other than section 107), 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 connection in the course of
trade between the goods or services, as the case may be, and some person having the right as
proprietor to use the mark: and

(ii) in relation to other provision 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 as the case may be, and some person having the right, either as proprietor or by way
of permitted user, to use the mark whether with or without any indication of the identity of that
person , and includes a certification trade mark or collective mark:
K. R. Krishna Chettiar v. Sri Ambal & Co, AIR 1970 SC 146

Respondents were the proprietors of the registered mark consisting of a label containing a device of a goddess Sri Ambal seated
on a globe floating on water enclosed in a circular frame with the legend ‘Sri Ambal parimala snuff’ at the top of the label, and the
name and address ‘Sri Ambal & Co., Madras’ at the bottom. The Respondents were in the snuff business for more than five
decades.

The mark of which the Appellant sought registration consisted of a label containing three panels. The first and the third panels
contained in Tamil, Devanagari, Telugu and Kannada the equivalents of the words ‘Sri Andal Madras Snuff’. The center panel
contains the picture of goddess Sri Andal and the legend “Sri Andal”. Sri Andal and Sri Ambal were separate divinitie.
K. R. Krishna Chettiar v. Sri Ambal & Co, AIR 1970 SC 146

• The Supreme Court observed:

• There can be no doubt that the word “Ambal” is an essential feature of the trade marks. If the proposed mark is used in a normal
and fair manner the mark would come to be known by its distinguishing feature “Andal”.. There is no evidence of actual
confusion, but that might be due to the fact that the Appellant’s trade is not of long standing.

• There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The
resemblance between the two marks must be considered with reference to the ear as well as the eye.

• There is a close affinity of sound between Ambal and Andal. The name Andal does not cease to be deceptively similar because it is
used in conjunction with a pictorial device.
K. R. Krishna Chettiar v. Sri Ambal & Co, AIR 1970 SC 146
• The Supreme Court observed:

“The Hindus in the south of India may be well aware that the words Ambal and
Andal represent the names of two distinct goddesses. But the respondent’s
customers are not confined to Hindus alone. Many of their customers are
Christians, Parsees, Muslims and persons of other religious denominations.
Moreover, their business is not confined to south of India. The customers who are
not Hindus or who do not belong to the south of India may not know the difference
between the words Andal and Ambal. The words have no direct reference to the
character and quality of snuff. The customers who use the respondent’s goods will
have a recollection that they are known by the word Ambal. They may also have a
vague recollection of the portrait of a benign goddess used in connection with the
mark. They are not likely to remember the fine distinctions between a Vaishnavite
goddess and a Shivaite deity.”
• Yahoo INC v. Akash Arora 78 (1999) DLT 285

• The plaintiff Yahoo INC. was the owner of the trademark 'Yahoo' and the domain
name 'yahoo.com', and both of these were famous marks that had a distinct identity
and reputation in the eyes of the global public. Additionally, Yahoo was also a
registered company since 1995 and possessed a registered trademark in 69 countries
except for India.
• The defendant, Akash Arora, started a company with the domain name 'Yahoo India',
with a similar purpose of providing internet services as Yahoo INC. As a result,
Yahoo INC. applied for an interim injunction to prevent the defendant from using the
domain name 'yahooindia.com' or any other name bearing its likeness. It sued Akash
Arora for using a deceptively similar trademark as itself and for passing-off of his
services as those under Yahoo INC.
•
• Pepsi Co Inc v. Hindustan Coca Cola Ltd. 2003(27) PTC 305 (DEL)
• In this case, the petitioner filed an application against the respondent for infringing its copyright and trademark. It was contended that
the advertisement made by the respondent was degrading for the plaintiff and therefore infringing its trademark in regard to its trademark

‘PEPSI’, ‘GLOBE DEVICE’ and “ye dil mange more.”

• Whether using ‘GLOBE DEVICE’ and phrase ‘Ye dil mange no more’ is an infringement of copyright as per section 29(1) of the
Copyright Act? Whether use of rollercoaster is an infringement by the respondent?

• Intention of respondent and the way commercial was conducted was considered by the court. It was observed that respondent
called “PEPSI” as “PEPPI” and also said some derogatory comments to uplift his own brand
“THUMBS UP.”

• The court observed that trademark ‘PEPSI’, ‘GLOBE DEVICE’ and “ye dil mange more” are copyrightable as they
have acquired distinctiveness and petitioner has spent heavy amount for their publicity and advertisement. However, the court
further added that use of color combination and the phrase Ye dil mange no more is not an infringement as per section 29(1) of the
Copyright Act, 1956. The court held that comparative advertisements are allowed in India and such use of phrases is not an
infringement.
SATYAM INFOWAY LTD. V. SIFFYNET SOLUTIONS PVT.
LTD. (2004) 5 SCALE 635
The appellant had registered various domain names in 1995 such as:

www.sifynet,
www.sifymall.com,
www.sifyrealestate.com

The respondent started their business of internet marketing in 2001 under the domain names:

www.siffynet.net.
www.siffynet.com.
• SATYAM INFOWAY LTD. V. SIFFYNET SOLUTIONS PVT.
LTD. (2004) 5 SCALE 635
By looking at the evidence of sales and prior use and similarity in the domain names and other factors, the Supreme Court
held that domain name has the same characteristics as that of trademark and hence the rules of passing off as laid down in the
Trademark Act, 1999 will apply in this case.

If a person uses the same domain or phonetically similar name that is used by another person, it may lead to loss or diversion
of consumers due to confusion in their mind about the services provided and can be construed by them as misrepresentation.

The Supreme Court also made a very pertinent observation that the use of similar domain names has similar essentials of
passing off like protection of Goodwill, the reputation of the business in the market, and not misguiding the public by creating
confusion in their minds, and lastly the loss thereby.

Thus, on the issue of applicability of passing off, the SC concluded that domain names are to be protected under the same law
of passing off as described under the Trade Marks Act, 1999.
• PARAMOUNT SURGIMED LTD. V. PARAMOUNT BED INDIA PVT. LTD.
(2017) 241 DLT 31
The center of dispute is the use of the trademark PARAMOUNT for hospital beds. In the instant suit, it was
pleaded by the Plaintiff that the word PARAMOUNT was first adopted in the year 1993 as part of its corporate name
and it has been engaged in manufacturing and supplying intensive care hospital beds in India. The Plaintiff also
obtained the trademark registration for PARAMOUNT label under class 10 (surgical, medical, dental etc.) as well as in
class 20 (furniture, mirrors, picture frames etc.) and its first registration dated back to January 14, 2000.

It was put forth by the Defendant that the Plaintiff had filed an opposition in the year 2009 against the Defendant’s
trademark application seeking registration of the trademark PARAMOUNT for the sale of hospital beds. It was argued
by the Defendant that it is the prior user of the mark PARAMOUNT which it adopted as early as in the year 1950 and
that its trans-border reputation has travelled to various parts of the world including India. In order to establish trans-
border reputation and use, the Defendant placed on record old newspaper clippings, audited balance sheets, and invoice
for supply of 50 beds.

The Court held that the Defendant has been promoting his business of the sale of hospital beds under the name of
PARAMOUNT in India since the year 2002, his publicity campaigns date back to the year 2007, and his actual sales
were affected from the year 2010. It was held that the opposition filed in the year 2009 and emails exchanged clearly
established that the Plaintiff was fully aware of the presence of the Defendant in the Indian market.

The Court held that a minuscule sale of five single beds in one current year and there being a gap of almost seven years
between 2010 to 2017 when there was no sales effected of any hospital bed, established that Plaintiff is not really into
the business of sale of hospital goods.
• PARLE PRODUCT PVT. LTD. V. FUTURE LTD & ORS. CS (COMM) 64/ 2021 BOM.
HC
The plaintiff company is involved in the business of manufacture of fast-moving consumer goods (FMCGs), and its
flagship biscuit product, “PARLE-G”. The company had also been selling biscuits under the following brands –
“MONACO”, “KRACKJACK” and “HIDE & SEEK” – for which it had secured the statutory recognition of its
trademarks under the Trade Marks Act, 1999.

In second week of September 2020, the plaintiffs noticed striking similarities between packaging of their products
and that of the brands marketed by the defendants, i.e., “CrackO”, “Kracker King” and “Peek-a-Boo”.
• Retail Royalty Company v. Pantaloons Fashion & Retail Limited, 2015 Del HC

Pantaloons was found to be riding on the goodwill of the Plaintiff in respect of its trade mark
‘American Eagle Outfitters’ and ‘American Eagle’, the Delhi High Court held Pantaloons could
continue to sell its line of clothing with the trade mark ‘Urban Eagle’.

It noted that the trade mark was sufficiently different to Plaintiff’s and the public interest
involved was low; the Court may have taken a different stand if pharmaceutical goods or
medicines were involved. Though sufficient distinction was also found between Plaintiff’s
device of a swooping eagle and Defendant’s “taking off or a flying eagle”, it was said to not be
an original artistic work sufficing for copyright vesting in the Plaintiff.
KNITPRO INTERNATIONAL V. EXAMINER OF TRADE MARKS THROUGH
REGISTRAR OF TRADE MARKS (C.A. (COMM.IPD-TM) 110/2022).

Section 2(m) of the Trade Marks Act, 1999 (‘Act’), a ‘mark’ also includes the shape of
goods.
Sec. 9(3) A mark shall not be registered as a trade mark if it consists exclusively of (a) the
shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
An objection under 9(3) of the Act cannot be overcome by demonstrating that the mark
has acquired a distinctive character.
The question of distinctiveness can be positive only if the shape alone bereft of the
packaging and trademark can identify the product.
“…. the novel shape of a product which has aesthetic appeal is protectable under
the law of designs if the requisite conditions are satisfied. However, under the law
of trademarks, the threshold for extending exclusive rights to the shape of a
product is quite high. The shape by itself should immediately be identifiable with
the source of the product. For trade mark registration of the shape of a product,
the same can only be granted if it has acquired a secondary meaning.’ Therefore
shape marks ought to have acquired a secondary connotation to be able to be
registered.”
…for a shape trademark to be registered, it has to be shown that the said shape is
not the generic shape of the product. It has to be a distinctive shape that
associates the mark with the source by itself without anything further like a name
or logo appended to it. The shape must have lost its inherent or generic meaning
and ought to have acquired a secondary connotation. The standard of
distinctiveness required to be acquired would be quite high.”
Essential requirements of Trade Marks:

1. TM is a visual symbol used in relation to any goods or services to indicate some kind of
trade connection between goods or services and the person using the trade marks.

2. Must be a device, brand, heading, label, ticket, name, or an abbreviation of a name,

signature, word, letter, or numeral shape of goods, packaging or con=mbination of colors
or any combination thereof,

3. Must be graphically represented

4. Must be capable of distinguishing goods or services from one person to other

5. Must be for the purpose of indicating a connection between goods or services and some
person having right to use the mark either as proprietor or by way of permitted user as the
case may be.
 SMELL MARKS: OLFACTORY MARKS

John Lewis of Hungerford Ltd’s tade Marks Appln. 2001 RPC 575

TM comprises the smell, aroma or essence of cinnamon in respect of furniture.

Appln. Was refused on the ground that the wording “smell, aroma or essence of cinnamon”
lacked precision as a result of the degree of subjectivity it allows in the description.

Challenged.

Findings:

1. TM not able to represented graphically, cannot be said eligible for registering as TM.

2. The requirements of graphical representability was not satisfied by chemical formula. Or

color sample.
TODAY IN IP HISTO®Y 2000 The word mark 'AMUL' skims its way to the
top of the Principal Register in the USA.

Kaira District Co-operative Milk Producers' Union, formerly Anand Milk Union
Limited (“Amul”) is an Indian state government-owned society founded in 1946, as
a co-operative to purchase (and sell) the milk and dairy products supplied by
nearby farmers in Anand, Gujarat.
• Capital Food Private Limited v. Radiant Indus Chem Pvt. Ltd
Capital Food Private Limited (Capital Food) filed an application seeking a temporary
injunction restraining Radiant Indus Chem Pvt. Ltd. (Radiant Indus) to use their registered
trademarks ‘Schezwan Chutney’ and ‘Szechuan Chutney’.
Capital Food pleaded that it was a leading food company in India engaged in the
production of a wide variety of condiments, spreads, dips etc and was the first in the
market to coin ‘Schezwan Chutney’.
Capital Food brought an action of trademark infringement and passing off against
Radiant Indus’s trademark ‘Mrs. Foodrite Schezwan Chutney’.
It was argued the trademark of the plaintiff ‘Schezwan Chutney’, had been adopted for an
identical product and bore a similar artistic impression, trade dress and get-up as of the
plaintiff’s trademark.
On the contrary, the defendant primarily argued that the plaintiff cannot claim an exclusive
right to the mark ‘Schezwan Chutney’ as it is devoid of any distinctive character and is
descriptive of the kind, quality, and geographic origin of the product sold. The
defendant further contested the validity of the registration of the plaintiff’s trademark.
It was observed by the Single Judge that the plaintiff’s trademark is a descriptive term
used in a bonafide manner by the defendant to describe the quality and kind of goods
being sold by them.
HMJ Chawla particularly noted that the plaintiff’s trademark is being used across the
market by multiple manufacturers to market the food product in a generic sense.
The plaintiff’s product can in fact be differentiated from the defendant’s product through
the usage of the plaintiff’s trademark ‘Ching’s’ being used along with ‘Schezwan Chutney’
to sell the product.
Elaborating further on the validity of the trademark ‘Schezwan Chutney’, it was held that
usage of two generic terms ‘Schezwan’ and ‘Chutney’ (the Hindi word for
‘dip/sauce’)‘Schezwan’ finds its origin from the Szechuan territory in China, make the
plaintiff’s trademark completely descriptive. Therefore, the usage of a descriptive term by
the defendant does not disentitle it from selling its product under the said trademark.
An action of infringement of a descriptive trademark is most likely to succeed only in
circumstances where the descriptive trademark is far from suggestive of the product in
question.
GENERIC WORDS CANNOT BE USED AS TRADEMARKS
CADILA HEALTHCARE LTD. V. GUJARAT CO-OPERATIVE MILK
MARKETING FEDERATION LTD. AND ORS.
‘Sugar Free’ is so descriptive of the food product in question that it is inherently
capable of being distinctive as a trademark.
It was further held that a business enterprise always runs a risk while adopting a
descriptive trademark that directly describes the product as other competitors in the
market are entitled to use such a descriptive trademark to describe the kind and
quality of their goods.
 CADILA HEALTH CARE LTD. V. CADILA PHARMACEUTICAL LTD.
There were three important tests that were listed out that must be considered in
adjudging deceptive similarity cases.
First, the similarity and not the dissimilarity is the main thing to be tested.
Second, when there is structural dissimilarity, the phonetic similarity cannot be
ignored and must be taken into account irrespective.
Third, the consumer to be kept in view is the Indian consumer who has “average
intelligence and imperfect recollection.”
Decision: They are similar in nature.
SECTION 9(2)(a) AND 11(1)
Sec 9(2)(a): ‘Pure Ghee’ is used for the Vanaspati product. The latter is
made of hydrogenated vegetable fat, which has harmful effects on the
human body, as opposed to ghee which has proven health benefits for
humans.
So the use of the term Pure Ghee would be considered deceptive as it is
suggestive of something it is not.

Sec 11 (1): “Black Magic” for laxative goods and “Black Magic” for
chocolate that contains a laxative may lead to confusion.
• A particular mark has to be compared with another trademark to determine
the cause of confusion. When examining the deceptive similarity, it is
essential to consider each mark’s goods and/or services.
• ‘PUMA’ and ‘COMA’ for sports apparel, sports goods, etc., will be termed
‘deceptively similar.’ However, if ‘COMA’ is registered under any other
class, such as restaurant services, it may not be considered deceptively
similar.
Nature of deception or confusion
1. As to goods
2. As to trade origins
3. As to trade connection
Principles for the comparison of marks
1. Likelihood sufficient, actual effect not necessary.
2. Meticulous comparison not the correct way
3. Words must be compared as a whole
4. Similarity in structure, sound and idea
5. Distinguishing and essential features to be considered
6. Surrounding circumstances to be considered
Modi Oil Mills V. tata Oil Mills 1943
Words “Cocogem” and “Kotogem”, though phonetically similar, were held not
deceptively similar on:
1. Tin’s shape and weighing were different
2. On label, “Cocogem” was written in red with name of Tata Mills, while
“Kotogem” written on a flag holded by a Rajput
3. Both were made from different fruits
4. Both appeal to different types of customers and dealers.
N K FAIRBANK V. COCOA BUTTER MFTG. CO. –
Word “Cottolene” was in use for butter, Word “Cocosoline” also applied for
butter. Held no deceptive similarity as both were made from different fruits, the
former cotton seeds and the latter from coconut.
Sec 11(3): Protection by law of Passing off/ Copyright
a. By virtue of any law in particular, the law of passing off
b. By virtue of copyright
11(3) does not laid down any condition on the nature of goods and services.
11(3)- registrar himself hypothetically presumes that would the court had given
the relief of passing off.
Copyright protection:
When any latter mark similar to existing mark label enjoying the copyright
protection, is sought to be used on any goods or services, then by virtue of sec
11(3), such a latter trade mark shall not be registered.
There is no need of procuring any order from copyright authorities for restraining,
but registrar can himself restrict the latter trade mark proprietor.
WELL KNOWN TRADE MARKS
Carrefour v. V. Subburaman, 2007(35) PTC 225 (Mad.)
Plaintiff claimed using CARREFOUR as trade mark since 1960 and has 7000 stores
in 30 countries with 436000 employees.
Respondent raised no objection on the authenticity of above claim, rather they
said that plaintiff is using the trade mark since 2000 only and only in retail sector.
The respondent used the name Carrefour for furniture.
The court found that they had developed a goodwill in several countries as well as
in India and had over 2500 registrations of their trade mark in several countries
including furniture. so their claim was justified.
(List of Well Known Trade Marks)
• K. R. Krishna Chettiar v. Sri Ambal & Co, AIR 1970 SC 146
WELL KNOWN TRADE MARKS
Kaira District Co-Operative Milk Producers Union Ltd & Gujrat Cooperative
Milk Marketing Fed. Ltd. V. Amul Canada, Mohit Rana and Ors. 2021 FC 63
Plaintiff alleged that Defendant-AMUL Canada had been advertising, marketing, offering for
sale, selling, and providing goods identical to the Plaintiffs’ goods in Canada with the trademarks
and trade names AMUL and Amul Canada Ltd.
Defendant also purported to have employees in Canada even though the Plaintiffs had never
licensed nor provided consent for either Amul Canada or any of the four individual Defendants to
use the Plaintiffs’ trademarks and copyrights in any manner.
The Plaintiffs deposed that Gujarat and Kaira had offered for sale, advertised, sold, and
distributed certain AMUL trademarked goods in Canada since 2010. Specifically, Kaira was the
registered owner of the Canadian Trademark “AMUL” since 2014, which had been used in
Canada since 30-06-2020.
Plaintiff also owned the Canadian trademark design having the expression “Amul the Taste of
India”, which had been used in Canada, in association with the goods “coffee, tea, cocoa, coffee
substitutes, sugar, milk etc.
Similarly, Kaira also owned the mark and design having the expression “Amul Pasturized Butter
utterly butterly delicious”.
WELL KNOWN TRADE MARKS
Kaira District Co-Operative Milk Producers Union Ltd & Gujrat
Cooperative Milk Marketing Fed. Ltd. V. Amul Canada, Mohit Rana
and Ors. 2021 FC 63
Passing off has been statutorily codified in section 7(b) of the Trademarks Act, RSC 1985,
c T-13 [Trademarks Act].
The elements for establishing passing off are:
• the existence of goodwill;
• the deception of the public due to misrepresentations;
• and actual or potential damages to the plaintiff [Ciba-Geigy Canada Ltd v Apotex Inc,
1992 SCC Online Can SC 85]
the Bench stated,
“Not only has the Amul brand existed for well over 50 years and is advertised globally
through online and other channels – and thus acquired distinctiveness over time – and
the volumes of milk and cheese distribution illustrate that Amul products have a
reputation within at least a certain segment of consumers of its dairy products in
Canada.”
WELL KNOWN TRADE MARKS
HEALTH AND GLOW RETAILING PVT. LTD V. DHIREN KRISHNA PAUL, TRADING AS
HEALTH AND GLOW CLINIC,2007(35) PTC 471(MAD)
The Plaintiff Health and Glow Retailing Pvt. Ltd. filed a suit before the Madras High
Court seeking to restrain the Defendants Dr. PB’s Health and Glow Clinic from
using its registered trade mark and name by “health and glow”.
Sec 29(4)
Deception created by using the identical words and the words used it considered
as detrimental to the distinctiveness of the trade mark.
Sony Kabushuki Kaisha v. Samrao Masker, AIR 1985 Bom 327

Sam rao Masker- “Sony”- Nail Polish

Sony Kabushuki kaisha- alleges that he is using the identical mark.

Court affirms in positive and decided that

Emphasis must be on “Nature of goods and Trade channels.”
Electronic goods and nail polish are items are poles apart and are not sold under
one roof.
Classes of customers who purchase these items are different and distinctive.
(As per 1999 act, this case is not valid as today similar/ identical trade marks
cannot be registered.)
Bloomberg Finance LP v. Prafull Sacklecha and Ors. (2014 207 DLT 35)
the Plaintiff claimed that their trademark (Bloomberg) was being used in 100
countries and the same was in use in India through their associate companies
from the year 1996. It was claimed that the Plaintiff was reaching millions of
people worldwide through Bloomberg Television and Bloomberg Radio
Programming.
the Defendant No. 4, Bloomberg Realty (India) Private Limited, was carrying on
business from Indore and Madhya Pradesh.
The contention raised before the Delhi High Court by the Plaintiff was that if the
Defendants continue use of the name 'Bloomberg' for their real estate business
(though completely different from the business of the Plaintiff), it would affect the
reputation and distinctive character of the registered mark of the Plaintiff.
The court held that the element of having to demonstrate the likelihood of
confusion is absent when the goods are different.
Larsen & Toubro Ltd. (L&T) v. Lachmi Narain Trades and Ors.
(2015 (64) PTC 386 Del)
Appellant (Larsen and Toubro Ltd.) was engaged in diverse business activities, with subsidiaries
using the prefix ‘LandT’ for over half a century. It applied for registering the marks ‘Larsen and
Toubro’ and ‘LandT’, the applications of which were pending consideration.

Appellant filed a suit for injunction. At the stage of interim relief, the Learned
Single Judge of the Delhi High Court ordered that the Respondents can use the
words ‘LandT’ only in an extended form as – “LNT/ELENTE – Lachmi Narain
Traders” – so as to avoid any confusion. The Appellant appealed against the same
before the Division Bench of the Delhi High Court.
Larsen & Toubro Ltd. (L&T) v. Lachmi Narain Trades and Ors. (2015 (64) PTC 386 Del)
Questions to be decided:
(i) Whether the use of the words ‘LNT/ELENTE’ by the Respondents is bona fide? If the
answer is in the negative, can these words become permissible simply by adding the
expression ‘Lachmi Narain Traders’?
The abbreviation ‘LNT’ does not appear to be bona fide because even when the
Respondents have been in business for a number of years, they started using the said
abbreviation as late as in the year 2001.The trademark ‘LandT’ is identified with the
goods marketed by the Appellant and the use of a similar trademark‘ LNT’ is likely to
create confusion.
(ii) Whether the fact that the products of the Respondents are nowhere related to those of the
Appellant grant them the right to use a similar trademark?
The passing off action would lie where a wrong impression is created as if the product
was of someone else, even if the Respondents were not producing any goods similar to
that of the Appellant. Even if the Respondents’ activities are remote, they are likely to
be presumed a possible extension of Appellant’s activities by the buyers.
Hennes & Mauritz AB (H&M) & Anr. v. HM Megabrands Pvt. Ltd. &
Ors. (2018 (74) PTC 229)

Plaintiff, was a well-known designer, marketer, and seller of wide and varied fashionable clothing
collection and ancillary product and services for women, men, teenagers, and children. To firmly and
formally establish its presence in India, Plaintiff No. 1 claimed to have incorporated its subsidiary H & M
Hennes & Mauritz Retail Pvt. Ltd., Plaintiff No. 2, in 2013 and launched its first store in a very prominent
mall in Saket. Plaintiff No. 1 had been manufacturing in India the garments in the name of “H &M” for
the purpose of export since 1972.
In 2011, Defendant no. 4, Mr. Hashim Merchant started the HM enterprise to carry out the business for
various FMCG products. In May 2012, Defendant No. 4 along with his brother Defendant No. 3, Mr.
Hamza Merchant considering the initials of their name, honestly and bonafidely adopted the trademark
“HM Megabrand”.
 Hennes & Mauritz AB (H&M) & Anr. v. HM Megabrands Pvt. Ltd. & Ors. (2018
(74) PTC 229)
• Defendant no. 1 was incorporated in 2012 of which other Defendants were
officers/directors. Defendants were engaged in the business of marketing, supplying,
and selling of the garments under the trade mark ‘HM’ since 2011.
• Defendants had also registered the domain name comprising ‘HM’ viz.
‘www.hmmegabrand.com’. The said website was offering the goods or services similar
to that of the Plaintiff. Further, Defendants were also offering the good under the
tradename ‘HM’ through their online shopping portals such as amazon, jabong and
myntra etc.
• DECISION:
• Mere presence of the mark on the register or on the records of the registrar of the
companies does not prove the use of the mark and proprietor of the trademark is not
expected to pursue each and every infringer. Even if any entity is using ‘HM’ or ‘H &
M’, it cannot deprive the Plaintiffs, if otherwise found entitled to interim injunction
against the Defendants of such injunction.
• In a suit for infringement, it is the right of the two parties before the Court only which
are to be examined and not qua others
 Hennes & Mauritz AB (H&M) & Anr. v. HM Megabrands Pvt. Ltd. & Ors.
(2018 (74) PTC 229)
• On similarity of marks
• Defendant’s main argument is that addition on the word ‘Megabrands’ distinguishes the marks.
‘Brand’ is a name given to a product and/or service such that it takes on an identity by itself.
‘Mega’ means very big or huge or excellent.
• Thus, the word ‘Megabrands’ would mean a brand which is very big or huge or which is
excellent. Thus, the addition of suffix ‘Megabrands’ to the alphabets ‘HM’, only connotes that
‘HM’ is a megabrand. The brand of the Defendants was thus ‘HM’ as ‘megabrands’ is
descriptive and generic word to describe successful brands.
• Anyone familiar with ‘H & M’ on seeing ‘HM Megabrands’ is unlikely to differentiate the
Defendants from the Plaintiffs. The suffix ‘Megabrands’ rather than distinguishing, reinforces
the impression in the mind of the consumer that the business of the Defendants is the business
of the Plaintiffs.
Hennes & Mauritz AB (H&M) & Anr. v. HM Megabrands Pvt. Ltd. & Ors. (2018
(74) PTC 229)
• On ‘H & M’ as a mark; On protection of alphabets and acronyms
• ‘H&M’ or ‘HM’ however are not generic or publici juris to the trade or business for which they are
being used by the Plaintiffs and the Defendants. The said alphabets are alien to the trade / business of
clothing / garments / accessories and were applied thereto by the Plaintiffs, admittedly much prior to the
Defendants.
• A word, even if generic, if applied to a business with which the word is unrelated, is indeed to be
protected. Merely because it is alphabets or acronym, is immaterial.

• On Defendant’s plea that Plaintiffs having not acquired any distinctiveness in India and/or of the
Plaintiffs having no reputation in India
• For a mark/brand to have a reputation or goodwill in India, setting up a shop in India or sale in India is
no longer a necessity. The introduction of web-based sales which enables Indians to shop for whatever
brands/goods available wheresoever, has further increased the familiarity in India with the marks and
brands essentially sold/marketed outside.
• Worldwide prior user is given preference over registered trade mark in India.
• for the purpose of establishing reputation, visibility in India of webpages displaying the product is
sufficient to show that buyers or Indians travelling abroad are aware of the product and are likely to
associate it with Plaintiffs
 Sunder Parmanand Lalwani & Ors v. Caltex (India) Ltd AIR 1969 Bomb 24
The Bombay High Court held that CALTEX (a well-known mark) is capable of creating
confusion and deception in the minds of people even though the two disputed parties’
goods and services are registered under different classes.
Thus, the violation of someone’s goodwill due to the deceptive use of a well-known
trademark is considered to be a serious issue by the courts.

Bata India ltd. V. Deputy Registrar of Trade mark, [2004] 29 PTC 468 (IPAB)
Registration of a trademark containing an “Artistic device with letters BSC” in respect
of sewing machine parts was allowed when the appellant- opponent had been using
“BATA” as well as “BSC” as combined trademark in respect of footwear.
The respondent had adopted BSC in 1975 and built up goodwill and reputation of the
mark confine to the state of Punjab.
Appellate board said that BSC mark was not been used by the appellant independently
the nature of goods were also completely different and therefore there was no question of
confusion or deception.
Caterpiller Inc. V. Jorange [1999] 570 PTC (Mad)
Plaintiff was the proprietor of the trademark ‘CATERPILLER’ and ‘CAT’ for
heavy machinery, construction and agriculture industry equipment. From year
1996 they sold wide range of garments, sweaters, jackets, sunglasses, sporting
goods.
The plaintiff had not introduced the trademark in India on garment till then but
relied on the transborder reputation emerging from its use of the trademark in other
countries.
They also claimed that in case of reputed brand names, the confusion could arise
when grant was used on different goods.
The court restrained the defendant from using ‘CAT’ and ‘CATERPILLER’
trademark.
Bach v Bach flower remedies TM V. Registry 2000
HHL applied for a declaration that BFR’s marks were invalid on the ground that
BACH had become generic. In the High Court, it had been ruled that the
expression BACH FLOWER REMEDIES was used to mean, and was understood
to mean, the flower remedies generically and not merely the flower remedies made
by the Bach center. This was so from before 1979 until at least the mid to late 80s.
It therefore ruled that the marks were invalid.

Proctor and Gamble Co. V. Office for harmonization in the internal marks
2002
Procter & Gamble filed an application to OHIM to re-register 'BABY-DRY' as
trademark of baby diapers. The OHIM examiners refused the registration on the
terms that 'BABY-DRY' was too descriptive a name.
Procter & Gamble argued that the purpose of diapers is to keep babies dry,
therefore this name would be suitable in trademark. OHIM insisted that 'BABY-
DRY' was also devoid of distinctive character and thereby could not be registered
The ECJ held that while the mark is registered based on a “Syntactical change,”
and each of the two words in the combination may form part of expressions used
in everyday speech to describe the function of diapers, their juxtaposition is not a
familiar English expression with respect to diapers and that the "BABY-DRY"
mark was sufficiently distinctive and could be trademark subject matter.
Geep Flash Light Industries v. Registrar of Trade Marks, AIR 1972 Del 179
• The appellants filed an application for registration of the trademark consisting of the word ‘Janta’ in
respect of electric torches before the Assistant Registrar of Trademarks, Delhi.
• The appellants contended that the word 'Janta' meant knowledge in Hindi and was distinct from the
word ‘Janta’ (meaning people).
• The Assistant Registrar held that the word 'Janta' was equivalent to ‘Janta’ and had a direct reference to
the character or quality of the goods (indicating cheap price for common people).
• The Court held that the word ‘Janta’ did not have a direct reference to the character or quality of
the goods and was not disqualified for registration under Section 9(1)(d) of the Trade and
Merchandise Marks Act, 1958. However, the Court found that the word 'Janta' was not inherently
distinctive or capable of distinguishing the appellant's goods under Section 9(4) and 9(5)(a) of the Act.
• The Court held that although the appellant's 'Janta' torches had acquired reputation, the word 'Janta' was
not adapted to distinguish or capable of distinguishing the appellant's goods. The Court also upheld the
Assistant Registrar's exercise of discretion under Section 18(4) to decline registration, citing valid
grounds that the word 'Janta' should be kept open for public use and the appellant should not have a
monopoly over it.
• Consequently, the Court dismissed the appeal and upheld the Assistant Registrar's order refusing
registration of the trademark 'Janta' for electric torches.
Avtar Singh & Ors. v. Sakshi Srivastava & Ors.
(2021 88 PTC 282)
Plaintiff: WOODLAND, WOODLAND (Styled), and
other WOODLAND marks on different dates
Respondents: WOODLEY for clothes
The court held that if a trademark imitates essential features of another trademark but has
other features that indicate a different trade origin, then it is invalid. if the dominant part
of a trademark has similarity, then it is considered an infringement.
The Court also observed that the dominant features of a trademark are likely to be
remembered by consumers and relied upon for identification purposes.
G.D. Pharmaceuticals Private Limited V. M/S Cento Products (India) 2024 Del HC
 G.D. Pharmaceuticals Private Limited V. M/S Cento Products (India)
2024 Del HC
‘BOROLINE’ V. ‘BOROBEAUTY’.
A Single Bench of Justice Mini Pushkarna observed,
“… this Court is of the view that the plaintiff’s trademark qualifies as a well known trademark.
There is no denying the fact that “BOROLINE” has attained the status of a household name,
and is one of the oldest trademarks, which has been in continuous use, preceding the
independence of India.
The Bench declared the trademark ‘BOROLINE’ as a well-known trademark under Sections
2(1)(zg) and 11(2) of the Trade Marks Act, 1999 and directed the Registrar of Trademarks to
add the same to the list of well-known trademarks, upon the plaintiff completing the requisite
formalities.
• Shri Rajesh Chugh v. Mehruddin Ansari & Anr. C.O. (COMM.IPD-TM)
28/2024
The Delhi High Court has ordered the cancellation of the trademark registered to
the food outlet “Andaaz-e-Nizaam” in Nizamuddin, following a case filed by the
Indian restaurant chain “Nizam’s”.
Justice Mini Pushkarna instructed the Registrar of Trademarks to revoke the
trademark “Andaaz-e-Nizaam,” which was registered in November 2021 under
Mehruddin Ansari. The court granted the plea of Rajesh Chugh, owner of Nizam’s,
who argued that the trademark was deceptively similar to that of his restaurant
chain.
• Independent News Service Private Ltd & Anr. v. Ravindra Kumar
Choudhary & Ors. 2024 Del HC 20

An application was filed by Independent News Service Private Limited (plaintiff), a company
incorporated in 1997, and its Chairman and Editor-in-Chief, Shri Rajat Sharma, seeking permanent
injunction restraining defendants and all those acting for and, on their behalf from using the mark/logo or
‘Baap Ki Adalat’ or any other trademark/logo deceptively like the trademark/logo of the plaintiff ‘Aap
Ki Adalat‘.
Anish Dayal, J., restrained the defendants from using/dealing in any manner with the impugned
trademark/logo and ‘Baap ki Adalat or any other trademark/logo deceptively similar to the
trademark/logo of the plaintiff ‘Aap Ki Adalat‘, either as trademark/trade mark/logo/trading style, domain
name, social media posts, audio video content, or in relation to any services so as to result in violation of
statutory and common law rights of plaintiff.
• Karim Hotels Pvt Ltd & Anr v. Nizamuddin & Anr. 2024 Del HC

The proprietors of the registered trademark “KARIM’S” filed a suit contending that by using a nearly identical
mark/name “KARIN’S”, the defendants were infringing their mark.
A Single Bench of Justice Sanjeev Narula said:

“Undoubtedly, the trademarks/ names of the parties are indistinguishable. Defendants

have entirely imitated Plaintiff No. 1’s registered trademarks, replicating all aspects such
as font of the letters, design of the logo, color scheme, size, style, and placement of letter
and the taglines. Both the marks are also used for identical services. Given the prior
business relationship between the parties, this appears to be a deliberate effort by the
Defendants to deceive consumers into believing that their commercial partnership with the
Plaintiffs continues.”
• Rahul Mishra & Anr. v. John Doe & Anr. 2025 Del HC
Justice Amit Bansal restrained the sale, manufacturing and advertising counterfeit dresses and
outfits, replicas of Mishra's designs, under the registered trademark “Rahul Mishra”, in any
manner including internet and e-commerce platforms.
The Court passed ad interim ex parte injunction order in favour of Mishra in his suit against john
doe- unknown individuals, engaged in selling counterfeit dresses through website
'www.rahudress.com' at low discount prices.
The Court noted that Mishra was the registered proprietor of trademark “Rahul Mishra” and is
also the owner of copyright in the original artistic works and also the copyright in the designs of
the dresses under the Copyright Act, 1957.
“This court therefore is of the opinion that the plaintiffs have been able to make out a prima
facie case for grant of an ex-parte ad-interim injunction, which is also a dynamic injunction.
The balance of convenience lies in favor of the plaintiffs and against the defendants.
Irreparable injury shall be caused to the plaintiffs if the interim injunction is not granted,”
-the Court said.
PRIOR RIGHTS Vs. Vested Rights (Sec. 34/ 28)
RAs per Section 28, it is clear that the registered proprietor of a trademark will be vested with
exclusive rights to use the trademark in relation to the goods/services, stop other parties using
the identical or similar mark being used in relation to the identical/similar goods/services.
Protection of the rights of the prior user under Section 34 clearly provides that the rights of a
prior user shall be protected under the Act from being violated by a registered user, i.e., the
registered proprietor of an identical or deceptively similar mark granted registration for
identical/similar goods/services.
The rights of a prior user of the mark are thus kept on a higher ground than that of the
registered proprietor of a trademark who was granted registration later.
However, in order to benefit from the provisions under Section 34, the prior user needs to meet
the following key requirements:
1. The trademark must be ‘used’ by the owner to qualify as the prior user;
2. The trademark must be in continuous use within the geographical boundaries of India by
its owner;
3. The use of the trademark must be in relation to the goods or services covered in the
application by the registered proprietor; and
4. Trademark must be in use from a prior date as compared to the date of use by the
subsequent user/ registered proprietor.
Meaning of ‘use’, ‘user date’ and their relevance
‘Use’ refers to the continuous use of a trademark in relation to the goods or services for
which the trademark is applied.
User date is the date from which the trademark is actually being used in trade with
respect to the goods or services.
Mere adoption, (creation of the mark for future use) is not enough to claim use/right
over the mark.
Few examples of evidentiary documentation that can be used in establishing the use of
the trademark in commerce
1. Documents evidencing advertising expenditure vis-à-vis goods/services under the
trademark;
2. Sales turnover of goods/services under the trademark;
3. Brochures, purchase orders, invoices for the sale/purchase of the goods/services
under the trademark;
4. Domain names and websites reflecting the use of the trademark vis-à-vis
goods/services.
Sec 34/28:
1. Toyota Jidosha Kubushiki Kaisha v. Prius Auto Industries Ltd. and Ors.
The Supreme Court of India held that the prior use, if not in the same territory as the Defendant and the jurisdiction of the
passing off action, cannot be claimed as prior use.
Toyota filed a suit of infringement against Prius Auto Industries Ltd., for using the mark PRIUS when Toyota was a prior adopter
and user of the mark since 1997.
However, based on the documents produced before the Court by Toyota, it was observed that Toyota did not start using the
mark PRIUS in India until 2010 which was after the use of the same by Prius Auto Industries in 2006.
Thus, the Court concluded that Prius Auto Industries had all the rights to use the mark PRIUS in India without any interruptions.
2. Sociétédes Produits Nestlé, S.A and Another v. Kaira District Cooperative Milk Producers Union Ltd. and Another
In this case, Nestle was assigned the mark ‘A+’ by an individual proprietor for use under Class 29 and Kaira was using an
identical mark ‘A+’ for cheese under the same class.
The Division Bench of the High court decided in favor of Nestle, the Appellants, giving them the rights to use the mark ‘A+’ for
milk and milk products under class 29 even though Kaira was a registered proprietor for an identical mark ‘A+’ in the same
class, i.e. class 29.

CONCLUSION:
While the trademark registration act as prima facie evidence of the ownership, the bona fide use of the trademark in parallel to
the registration is equally important.
Many times, companies/individuals despite having used the trademark prior to filing an application for registration are forced to
file the application on ‘proposed to be used’ basis due to lack of proper documents or records evidentiary of the use.
Registration Procedure of Trade Mark (Sec 18-23)
 RECTIFICATION OF REGISTER
GROUNDS
1. NON USE OF REGISTERED MARKS: SEC 47
2. CONTRAVENTION OR FAILURE TO OBSERVE A CONDITION ENTERED ON THE
REGISTER: 57(1)
3. ENTRY MADE TO THE REGISTER WITHOUT SUFFICIENT CAUSE: 57(2)
4. ENTRY WRONGLY REAMAINING ON THE REGISTER, OR ANY OTHER ERROR OR
DEFECT IN ANY ENTRY IN THE REGISTER: 57(2)

PROCEDURE: RULES 92-95

TRIPLICATE FORM OF ANY APPLICATION.
RAKESH KUMAR GUPTA V. GORESH DOMESTIC APPLIANCES, 2003 (26) PTC 517 BOMB
No period of limitation has been prescribed under sec 56, rather Art. 137 limitation act
will apply according to which the period is 3 years from the date when the right to apply
accrues. Implementation of this principle may be difficult in actual practice.
• PERSONS WHOSE TRADING INTERESTS ARE AFFECTED
• LOCUS STANDI AND PUBLIC INTEREST: TOSHIBA CORPORATION V. TOSHIBA
APPLIANCES 1994 PTC 53 (CAL)
Locus Standi is determined on principles akin to those in public interest litigation than in
private ones because a rectification application seeks to achieve the object of purifying
the register which is public purpose.
• GRIEVANCE MUST BE LEGAL, NOT BE SENTIMENTAL
• PRIOR USE OF THE MARK: A person who has used the registered trade mark prior to
the registration is a person aggrieved.
LT OVERSEAS NORTH AMERICA INC & ANR. V. KRBL LIMITED
Infringement and passing off of the plaintiff’s trademark registrations for marks
that include the word ‘Royal’, by the defendant’s mark ‘Zabreen Royal’.
Plaintiffs are in the business of processing, marketing and exporting rice and were
aggrieved by the adoption of the Impugned Mark “Zabreen Royal” by the
defendants for the manufacture, sale and distribution of its Basmati rice.
They asserted that the first plaintiff owns a number of registrations for the
trademark ‘Royal’ and associated marks and by dint of prior adoption, long and
continuous use, marketing network, enormous global sales and painstaking quality
control maintained by the plaintiffs, their marks have acquired formidable goodwill
and reputation.
Defendant argued that, in their reply to the examination reports at the time of
registration of their marks, the plaintiffs had indicated that they were seeking
protection for the word ‘Royal’ in a label/logo/device format.
The defendant also argued that the plaintiff does not enjoy any registration over the
word mark “Royal”.
Second argument of the defendant was that it is using the word ‘Royal’ in a
laudatory/descriptive sense along with the mark “ZABREEN’ in order to describe
the royal quality of the rice having extra-long grain and royal taste. Thus, the
Impugned Mark was unlikely to cause confusion.
Court commenced its analysis by dealing with the issue as to whether the word
‘Royal’ is a descriptive mark?
It set out the 2 key tests formulated by McCarthy to determine if a trademark is
descriptive or suggestive:
[a] whether connecting the mark with the product or service in question requires
imagination; and
[b] whether the mark is one that competitors need to use to describe their
offering.
Applying these tests to the case at hand, the Court held that the word ‘Royal’ is not a
descriptive term with reference to its use for Rice.
This is because connecting the term ‘Royal’ with rice requires a high degree of
imagination and reasoning process, thereby not meeting the first test.
Further, Royal is not a natural attribute or synonym for rice, and so competitors do not
have to use the word ‘Royal’ to refer to rice.
Court further noted: “Though it has been held hereinabove that the word “ROYAL” is
not descriptive of the product-rice, at the same time it cannot be disputed that it is a
laudatory word”.
The word Royal was both descriptive and laudatory or that it was neither.
If it was the former, the plaintiff would not have been entitled to claim any rights over
the word Royal.
If it was the latter, the defendant would not have been able to seek advantage from its
laudatory use and should have been found liable for using the word Royal.
Injunction granted.
Sec. 29 Trademark Disparagement, Free Speech and Bullying: The Case of Dabur v.
Dhruv Rathee 2023 DEL HC

Dabur alleged that by comparing carbonated drinks with “ready to serve” (RTS) fruit
beverages, Rathee has made unfair comparisons between the two products and has thus
caused a generic disparagement of all packaged drinking fruit juices.
Dabur further contended that the video specifically targets its ‘Real’ fruit juices by using
partially blurred ‘Real’ logo and promotional advertising clips.
The court has refrained from invoking this section. While it can be argued that a co-joint
reading of section 29(9) and 30(1) may make a prima facie case against Rathee for
disparagement. However, it is also pertinent to note that the impugned video does not
utter the words “Dabur” “Real” and in fact, by Dabur’s own admission, shows its mark in
a blurred manner.
• In the case of Hindustan Unilever Limited v. Gujarat Co-operative Milk Marketing
Federation, the Bombay HC stated that the disparagement would be constituted
if the following elements are met:
1.The information provided is false
2.The said act is done with malicious intent
3.The decimation of such information leads to special damage to the plaintiff.
• It is a well-settled principle that there are three essential elements that courts
have to look at to grant interim injuction in intellectual property matters:
1.Establishment of Prima Facie case
2.Balance of Convenience in whose favour
3.Irreparable Injury caused to the plaintiff
Hamdard National Foundation & ... vs Hussain Dalal & Ors. on 7 June, 2013
Sec. 29, Art 19 (1)(a)
ROOHAFZA YEH JAWAANI HAIN DEEWANI

a) Son: "Yeh Roohafza Bahut Bekaar Hai!"

b) Mom : "Sab Thik Ho Jayega!"
Son: "Siwaye Is Roohafza Ke.... Bahut Bura Hai"
Mr. Anand also submitted that the same Hero (actor of the film) on one hand is
promoting the PEPSI drink and in the present movie he is speaking dialogues
which are detrimental to the product i.e. ROOHAFZA drink against the interest of
his client.
GLAXOSMITHKLINE PHARMACEUTICALS LTD Vs HORIZON BIOCEUTICALS PVT. LTD
& ANR. (DHC 10.04.2023)
Plaintiff registered COBADEX as a Trademark under the Trade Marks Act, 1999,
under 5 (pharmaceutical goods), with effect from 18th July 1958.

Defendant is using the mark “COMODEX”, COMODEX Plus

• The plaintiff alleges that using the mark COMODEX is infringement of
the plaintiff‘s registered COBADEX mark. The Counsel for the plaintiff summited
that the trade dress, as well as the brand name, of the defendants‘
product are so deceptively similar to plaintiff mark, which clearly disclose case
of bad faith adoption, both structural as well as phonetic.
• It was observed that there is every likelihood of a person of average intelligence
and imperfect recollection who, at one point of time, encounters the plaintiff‘s
COBADEX tablets and, at a later point of time, comes across the
defendants‘ COMODEX tablets, confusing the two, and of wondering whether
she had not, earlier, come across the same product.
• Even, the composition of two products are same expect one additional
ingredient “Zinc” in COBADEX. After hearing all the arguments and submission
to the Court, court convinced that prima facie, that the defendant‘s mark
COMODEX infringes the plaintiff‘s registered mark COBADEX.
• SPP PUMPS LIMITED & ANR. V. SP PARVATHY INDUSTRIES
(10.10.2022 DHC)
1. The present suit has been filed for permanent injunction against infringement
of trademark, passing off, dilution and other reliefs. Plaintiff No.1- SPP Pumps
Limited is a company based in England which is the owner and the registered
proprietor of the mark ‘SPP PUMPS’. The mark ‘SPP PUMPS’ was adopted by
the Plaintiffs in the year 1961. The Plaintiffs have also used the mark in a logo
form which is extracted below:
• The sales in India for the corresponding period is to the tune of Rs.10 crores. The
Plaintiffs have registration for the mark ‘SPP PUMPS’ in India since 2021 in class
9 with the user claim from November 2011. The Plaintiffs have several trademark
applications for the said mark in classes 37 and 7 which are pending registration.
The Plaintiffs have used the mark ‘SPP PUMPS’ extensively in India and
promoted the same including through their websites www.spppumps.com and
www.kirloskarpumps.com.
• The Defendant started using the mark ‘SPP PUMP’ for products including screw
pumps. For the said products, the Defendant had adopted the mark ‘SPP PUMP’
in different logo forms which are set out below:
KHADI & VILLAGE INDUSTRIES COMMISSION v. RAMAN GUPTA
AND OTHERS Date of decision: 26.06.2022
The plaintiff is a registered statutory body established by the Khadi and Village
Industries Commission Act of 1956 and the registered proprietor of the mark
‘KHADI’ since 1956.
One of the popular means in which the plaintiff operates business is through the
Company’s registered websites- ‘www.kviconline.gov.in’, ‘www.Khadiindia.gov.in,
‘https://www.kviconline.gov.in/khadimask/’ and the latest,
‘www.ekhadiindia.com’.
The defendant brand ‘KHADI BY HERITAGE’ also hosts websites for the operation
of business under the domain name of ‘https://khadi-by-
heritage.business.site/’,among others.
The Defendants, through their website, amongst other products, sell medical
products that are also available on the plaintiff’s website.
 STARBUCKS CORPORATION Vs TEAQUILA A FASHION CAFE & ANR
Pronounced on: 06.05.2022
Starbucks holds Trademark for “FRAPPUCCINO“, which is registered over 185
countries and territories under different classes in relation to various goods and
service.

Starbucks submitted that : without permission, authorization or license

Defendant (Cafe Tea Quila– A Fashion Cafe) was selling/serving beverages under
the name ‘BUTTER SCOTCH FRAPPUCCINO’ and ‘HAZEL NUT FRAPPUCCINO’.
 Court agreed with the submissions made by plaintiff, stated that Mark
“FRAPPUCCINO” have acquired reputation and goodwill in India and the
Defendants have used identical marks with respect to similar goods and the trade
channels and the customer base are also common. As prayed by the plaintiff
Permanent injunction is granted.
WALMART APOLLO LLC. vs AAYUSH JAIN & ANR. 2022
WALMART/WAL-MART
www.wmartretail.com
• In this case, the Plaintiff owns a registered trademark for WALMART / WAL-
MART.
• The Defendant applied for WMART and allegedly used since April, 2019.
• The Plaintiff filed an infringement suit against the Defendant, who was using
‘WMart’ and www.wmartretail.com. The Plaintiff prayed for an injunction during
the pendency of the suit, which the Court granted until the next date of hearing.
MEHER DISTILLERIES PRIVATE LIMITED V SG WORLDWIDE INC
AND ANOTHER, November 29, 2021 Bombay HC
section 2(h) of the Trademarks Act, 1999, a mark “likely to deceive or cause
confusion” due to similarity to another mark is deceptively similar.
plaintiff/appellant Maher Distilleries dealt with alcoholic beverages and had
trademarked the brand as THE ASWA, based on the name of the village where the
distillery was located.
The defendant/ respondent Radico Khaitan exported a single malt whiskey under
the trademark ASĀVA.
 OBSERVATION: SIMILARITY OF THE MARKS
The marks were to be evaluated on their structural, visual and phonetic similarities. For
this purpose, the division bench applied the rule of first impression. The single judge
bench pointed to how the syllables were not all same in the two situations. However, in
determining phonetic similarity, the consumer is assumed to be one with imperfect
recollection, and thus, there cannot be a letter-by-letter analysis of the difference
between the words, rather an overall sound is to be taken into account.
In taking this into account, the division bench set aside the previous order that deemed
ASWA and ASĀVA to be dissimilar.
The defendant contended that the word ASĀVA was never used as a standalone mark but
always accompanied by RAMPUR.
The former was only the Sanskrit description of the process in which the single-malt
whiskey was produced. RAMPUR was deemed the house brand while ASĀVA was the
sub-brand.
On the face of it, the anti-dissection rule seemed to be applicable. According to it, the
trademark of RAMPUR ASĀVA was to be looked at as a whole.
BALAKRISHNA HATCHERIES V. NANDOS INTERNATIONAL LTD, 2007(35) PTC 295(BOM)

• Balakrishna's processed or frozen meat products are uncooked and are bought for cooking at home. Nando's
services are those of "hospitality, entertainment and social interaction, in addition to the specialized Afro-
Portuguese cuisine at a restaurant" where cooked food is to be selected from a menu.
• The respective users of the goods and services were different. Balakrishna's products are bought by people to be
consumed at home; Nando's services are enjoyed by those who wish to go outside their homes and to socialize and
enjoy the ambience of a specialized restaurant (usually of a higher-middle or upper income bracket).
• The trade channels through which the goods/services reach the market were different. Balakrishna's products are
sold at cold storages, wholesale distributors and supermarkets, and have to be cooked to be eaten. Nando's serves
food at its restaurants, which is chosen by customers from a menu.
• Balakrishna's goods do not compete with Nando's restaurants and food outlets. Balakrishna's products are frozen and need to be heated
and consumed at home, whereas Nando's provides restaurant services for those not wishing to eat at home. Its menus also stipulate that
it uses fresh (not frozen) meat.
• Balakrishna additionally invoked Section 29(4) which accords further protection to marks having a reputation in India. Under this
section, a registered mark is infringed even if another uses, without authorization, the same or a similar mark on goods or services that
are not similar to those for which the mark is registered, provided that the registered mark has a reputation in India, and the use of the
impugned mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered
trademark.
• The court rejected Balakrishna's claim under Section 29(4) for the following reasons:
• Balakrishna had failed to establish sufficient reputation in its mark even for processed or frozen food products so as to be entitled to
invoke this section.
• Balakrishna had no reputation at all in the restaurant business.
• Nando's had commenced its restaurant business under the mark NANDO'S in 2005 and there was pre-launch publicity prior to the
commencement of business.
• Nando's had registered the mark NANDO'S for its restaurant business in more than 100 countries and it carried on business in more
than 30.
• In addition to transborder reputation penetrating into India, Nando's had acquired further reputation through its Nando's restaurant
business in India.
• Balakrishna had failed to establish in what way the use of the NANDO'S mark was taking unfair advantage of the distinctive character
or repute of the NANDU'S mark
• The passing off claim was also rejected on the basis that Balakrishna did not have sufficient reputation in the NANDU'S mark so as to
cover restaurant services.
M/S HINDUSTAN DEVELOPMENT CORPORATION LTD V. THE DEPUTY REGISTRAR
OF TRADE MARKS, AIR 1955 CAL 319
Facts
A type of cooking material made mainly from hydrogenated vegetable oil has started being used in India,
often referred to by the inappropriate name 'Vanaspati’. The Hindustan Development Corporation Ltd.
has its own product called 'Rasoi', which they introduced in 1948.
It is made from groundnut oil. Before introducing their product to the market, the company applied to
register the word 'Rasoi' in English and all Indian languages as their trademark for the 'refined
deodorized groundnut oil for cooking purposes' they manufactured. However, the registration of the
trademark was refused and communicated to the company.
As a result, the company filed an appeal against the decision of the Deputy Registrar. They based their
opinion on the grounds that Section 6(1)(d) of the Trademark Act, 1940 states that a trademark cannot
be registered if it directly refers to the character or quality of the goods. The terms "character" and
"quality" were defined and examined in the context of the case.
Issues Involved
Whether the term ‘Rasoi’ directly referred to the character or quality of the oil product?
Whether the term ‘Rasoi’ needed to be distinctive to be eligible for registration under the Trademark
Act, 1940?
Whether granting a trademark for a common word like ‘Rasoi’ would unfairly monopolize language and
restrict others from using it?
OBSERVATION:
The Calcutta High Court concluded that the term ‘Rasoi’ did indeed directly refer
to the character and quality of the oil product. Thus, it was ineligible for
registration under Section 6(1)(d) of the Trademark Act, 1940.
Even if the term did not directly refer to the product's character or quality, the
court ruled that it still needed to be distinctive for registration.
Finally, the court held that common words like ‘Rasoi’ could not be monopolized
as trademarks unless they had lost their primary meaning and become associated
with specific products through long usage, which wasn't the case here.
CONCLUSION:
The court's judgment rejected the registration of ‘Rasoi’ as a trademark, citing its
direct reference to the product's character and quality, the necessity of
distinctiveness, and the principle against monopolizing common words.
The Imperial Tobacco Co. of India v. The Registrar of Trade Marks, AIR 1977 Cal 413
'Simla' is not an invented word; and though it has no reference to the character or a place
of origin of the goods sought to be registered it is not inherently distinctive or adapted to
distinguish "as there is no sufficient distinguishing characteristic in the mark itself so that
distinctiveness might be expected to result whatever the type and scale of user and thus
secure an estimation of the positive quality in the mark.
he propositions of law in respect of geographical names have been referred to above and
in view of the imprint of snow clad hills in outline in the trade mark 'Simla' the ordinary
or geographical signification is obvious and patent even though it has no reference to the
quality or place of origin of the goods as at present advised.
Further, registration of such trade mark may hamper or embarrass the trade or traders in or
around the locality in future as held by judicial authorities cited earlier in similar cases.
Also 'Simla' is too prominent a city, the capital of Himachal Pradesh, well known in the
country and abroad and in its ordinary or geographical significance it is inherently neither
distinctive nor adapted to distinguish also nor capable of distinguishing the goods of the
appellant as a particular trader from those of others.
S.9(2): Nature of mark as to deceive the public or cause confusion Wide power –
no mention of marks or goods
SUNDER PARMANAND LALWANI V. CALTEX (INDIA) LTD, AIR 1969 BOM 24 22
The Deputy Registrar rejected the Opponent’s contention that the Applicant had
applied for the mark ‘CALTEX’ in bad faith.
The Deputy Registrar held that the competing goods and trade channels were
different. Further, it held that the Opponent’s reputation was established only with
respect of the goods for which its marks were used and did not extend across all
classes of goods.
However, on appeal, the Court was of the view that the potential market for goods
under the competing marks is similar in the sense that the goods of both the parties
are not special goods. Further, since the Opponents are a large company known by
many as having large resources, and therefore, capable of starting any new industry
or trade, there shall be a likelihood of confusion between the goods under the
competing marks and therefore, an increased probability of the public believing that
any goods with the mark “CALTEX” on them would be the goods of the
Opponents.
BATA INDIA LTD. V. PYARELAL & CO., MEERUT CITY & ORS. AIR 1985 All. 242,
the issue was over the use of the mark ‘BATAFOAM’ for ‘rubber foam used in
manufacturing mattresses, sofas, cushions, and automobile seats’.
The Defendants contended that the parties’ respective businesses were different, and
that the Plaintiff had no registration for the mark BATA for mattresses, sofas, cushions,
automobile seats, etc.
Further, the Defendants contended that since their mark ‘BATAFOAM’ was not identical
in appearance to the Plaintiff’s mark BATA, there could be no passing off.
However, while ruling in favor of the Plaintiff, the Court observed that BATA is a famous
brand in India for quality footwear and that the Defendants had no plausible reason for
adopting a ‘BATA’ comprising mark as the same is the name of the founder of the
Plaintiff.
The Court held that the use of the mark “BATA” on any product shall create an
association in the mind of the unwary purchaser of average intelligence and imperfect
recollection between the goods of the Plaintiff and the Defendants, which was not the
case.
Section 29: GROUNDS OF INFRINGEMENT:
According to Section 29 of the Trade Marks Act, 1999, the followings are the
grounds to trademark infringement in India:
1. If the unregistered mark is identical to a mark registered for similar goods and
services.
2. The similarity of an unregistered mark with the infringed mark is likely to create
confusion in the minds of consumers.
3. The unregistered mark is similar to a registered trademark having a reputation in
the market.
4. The registered trademark is used on labelling or packaging without authorization.
5. The registered trademark is used in advertising, taking unfair advantage
detrimental or against the reputation of trademark.
Section 29:
• Coca Cola Vs. Bisleri International Pvt Limited & Others
The defendant (Bisleri International Pvt Ltd) by agreement transferred trademark
rights of MAAZA to the plaintiff (Coca-Cola Company) and also gave away the
formulation rights, IPR, and know-how along with the goodwill for India for
bottling and selling a mango fruit drink MAAZA to Coca Cola.
In 2008, the defendant subsequently filed an application to register trademark
"MAAZA" in Turkey and begin exporting the same fruit drink under name
"MAAZA". Coca Cola claimed a permanent injunction and infringement damages
for passing off and trademark since it was given to them by Bisleri.
The Hon'ble Delhi High Court in this case upheld the injunction against defendant
"Bisleri" for using trademark "MAAZA" and passed an interim order of permanent
injunction to prevent the plaintiff from irreparable loss and injury.
Section 29:
TEST FOR INFRINGEMENT

• Durga Dutt Sharma V. Navratna Pharmacy Laboratories AIR 1965 SC 980

• Ruston and Hornby Ltd. V. Zamindara AIR 1970 SC 1649

• Pepsico Inc V. Hindustan Coca Cola 2001 PTC 699 (Del) (sweet V. strong
flavor)
• DURGA DUTT SHARMA V. NAVRATNA PHARMACY LABORATORIES AIR
1965 SC 980
• Facts of the case
Appellant carried on business which involved and had been vending medicines prepared by
him under the name of “Navaratna Kalpa”.
• Respondent was a manufacturer of medicinal products and proprietor of two registered
trademarks “Navaratna” and “Navaratna Pharmaceutical Laboratories” from a period prior to
February 25, 1937.
• -The plaintiff's brought the original suit in 1946 when Pandit Sharma applied for the words
'NavaratnaKalpa' to be registered in respect of all his pharmaceutical preparations; and,
• the plaintiff firm on April 1, 1950, opposed the registration on the grounds that the plaintiff
already had the similar word registered in his name and that the word 'Navaratna' had
acquired them distinctiveness.
• The plaintiff also alleged that the continuance to use the word 'Navaratna' is likely to cause
confusion in the public minds or mislead the public into the belief of the business
• The Appellant made an appeal in the High Court of Travancore-Cochin making the prayer that
the word 'Navaratna' is ordinarily used by Ayurvedic physicians for medicines prepared out of
the nine precious stones, and it’s a generic word common to the Ayurvedic system of
treatment, therefore, plaintiff can’t claim that it had acquired them a distinctiveness.
• The word 'Navaratna' being descriptive its registration would be invalid and is likely to
deceive also the word is not invented as it is from Ayurvedic medical dictionary, or part
of the ancient language.
• Whether the use of the word “Navaratna” is bona fide and can the respondent succeed
in stopping Kaviraj pandit durga dutt sharma from using it?
• Decision
• It was held that a word which is common in use cannot be appropriated by a person
solely as his own, unless it be established by strong and irresistible evidence that the
original meaning of the word is lost and another acquired by the use of the word by the
person claiming the monopoly.
• The Supreme Court observed that the word "Navaratna" although has been registered
as its Trade Mark for a long time, and the plaintiff has gradually increased their
earnings from the sale of such preparations with the words printed in very bold types,
but that does not suffice to show that the word has lost the Ayurvedic medical
meaning or the general public in this country have come to recognize the word as only
the trademark of the firm's medicinal preparations.
• In these circumstances, the learned Judge rightly hold that the firm's claim to the word
being its trade mark is not justified and because the monopoly is not established, the
bench does not see how the firm is entitled to stop Pandit Sharma from its bona fide
use.
Ruston and Hornby Ltd. V. Zamindara AIR 1970 SC 1649
For the infringement of its registered trade mark "RUSTON“ by the respondent's
trade mark "RUSTAM", the appellant filed a suit for permanent injunction.
The respondent pleaded that "RUSTAM" was not an infringement of
"RUSTON" and stated that the words "RUSTAM INDIA" were used.
The trial court dismissed the suit holding that there was no visual or phonetic
similarity between "RUSTON" and "RUSTAM".
The High Court in appeal, held that there was deceptive resemblance between the
words "RUSTON" and "RUSTAM", but held that the use of "RUSTAM INDIA"
did not constitute an infringement because the appellant's engines were.
Manufactured in England and the respondent's in India, and the suffix 'INDIA'
was sufficient warning that the engine sold was not the engine manufactured in
England.
DECISION: In an action for infringement when the defendant’s trade mark is
identical with the plaintiff's mark, the court will not enquire whether the
infringement is such as is likely to deceive or cause confusion. But where the
alleged infringement consists of using not the exact mark on the Register but
something similar to it, the test of infringement is the same as in an action for
passing off. In other words, the test as to the likelihood of confusion or
deception arising from similarity of marks is the same both in infringement and,
passing off actions.
If the respondent's trade mark was deceptively similar to that of the appellant the
fact that the word "INDIA" was added to the respondent's trade mark was of no
consequence and the appellant was entitled to succeed in its action for
infringement of its trade mark.
• PepsiCo Inc V. Hindustan Coca Cola 2001 PTC 699 (Del) (sweet V. strong flavor)
(Disparagement)
• In this case, Pepsi filed a suit against Coca-Cola for using its trademark wrongfully and
disparaged their products in an advertisement. Here in the commercial, the actor asks
some kinds regarding their favorite drink and they all point out to a drink whose
packaging was very similar to Pepsi.
• Then the actor goes on to say that they like this better because it’s too sweet and meant
for kids. He says that Coca Cola is for grown-ups because it is strong. The kids are then
made to taste both of the drinks, and later on reveals that the drinks they liked were
actually Coca Cola. The packaging of the other bottle was very similar to Pepsi, and the
wordings ‘Pappi’ was written on the bottle cap in a similar pattern.
• The kids then feel embarrassed and disappointed with their wrong choice. The actor also
mentions how the kid made the wrong choice, and that the Coca-Cola drink is better.
• The court held on the grounds of disparagement and depreciating the goodwill of
PepsiCo. Inc.’s products under trademark protection have been infringed by the
defendant.
Section 30:
RED BULL AG VS PEPSICO INDIA HOLDINGS PVT LTD, CS(COMM)
1092/2018
The plaintiff has a registered trademark “Red Bull” manufacturing, marketing, and selling energy
drinks under this brand since 1987 which included the usage of the tagline “Vitalizes Body and
Mind”.
They contend that the defendant’s product “Sting” with the tagline “Stimulates Mind. Energizes
Body.” was brought in 2017 in India with an intention to deceive as the tagline is deceptively
similar to that of plaintiff. Plaintiff further contended that the words “Body and Mind” were
copied while the word “Stimulates and Energizes” are synonyms for “Vitalizes” and that they are
conceptually identical.
The defendants have highlighted that the cans of the energy drinks sold by the plaintiff and
defendants are different.
 The court has observed that “in an infringement case, there are two stages/tiers
of defence. The first is for registration cancellation under Section 57. Nothing will
sustain the infringement action if the registration is terminated. The second tier is
that even if the registration is genuine, there are still valid defence outlined in
Sections 30 to 35 of the Act that will bar the plaintiff from receiving relief in a
trademark infringement action.”
In the current case, the plaintiff has failed to demonstrate a prima facie case for
the award of an interim injunction in its favor. Both the plaintiffs and defendants’
taglines are used in a descriptive and complimentary manner. Only at trial can it be
determined if the plaintiff’s aforementioned slogan has gained distinctiveness or
secondary meaning in relation to the plaintiff’s products.
The defendants’ products have been selling in the market with the impugned
tagline for almost five years, so the balance of convenience favours them in not
granting an interim injunction.
• HAWKINS COOKERS LTD. V. MURUGAN ENTERPRISES (2012),

The Hon'ble Delhi High Court held that indicating on the packaging that the goods are adaptable only to

the goods of only one manufacturer is a violation of such manufacturer's trademark and Section 30(2)(d).

However, in certain situations, reference to the registered trademark of another person would not be

actionable. In a situation where the manufacturer of goods is entitled to indicate that the goods

manufactured by them form part of or are an accessory to other goods for which a trademark exists and it

is reasonably necessary for the manufacturer of the adaptable goods to refer to the trademark of the

relatable goods, such reference would not amount to an infringement of the trademark under which the

relatable goods are sold.

• ELOFIC INDUSTRIES LIMITED V. MOBIS INDIA LIMITED (2018), DHC

• the Hon'ble Delhi High Court allowed the plaintiffs to use the registered trademark of the
defendants only after substituting the words "Suitable for" with the words "Adapted to form
part of" on their products and immediately below that endorsing in the same font "WE HAVE
NO TRADE CONNECTION WITH HYUNDAI".

• This is because, in the view of the Hon'ble High Court of Delhi, Section 30(2)(d) of The Trade
Marks Act, 1999 only places limitations on the effect of registration and has no applicability to
the inherent common law rights of the defendants which cannot be trifled with.
• GOVT. E-MARKETPLACE V. UNILEX CONSULTANTS (2022), DHC

• The Hon'ble Delhi High Court opined that it is the settled position of law that nominative fair
use of a registered trademark is allowed as long as such use does not depict sponsorship
by the registered proprietor and the use is "reasonably necessary."

• KAPIL WADHWA V. SAMSUNG ELECTRONICS 194 (2012) DLT 23

• Samsung Electronics Co. Ltd. and Samsung India Pvt. Ltd. (now “Respondents”) are the brand
owners and registered proprietors of the mark “SAMSUNG” in India. The Respondents had
originally filed a suit against Kapil Wadhwa and a few other distributors (now “Appellants”)
who were importing Samsung printers from licensed dealers in foreign markets and selling it in
India without authorization at a cheaper price. The Respondents alleged that the Appellants
infringed their trademark rights in India and accordingly a Single Judge Bench of the Delhi
High Court passed a judgement in favour of the Respondents.
• Section 30(3) of the Trademarks Act, 1999 provides for the principle of territorial exhaustion of
trademark rights in India. It states that once lawfully acquired, the purchaser of the goods may
further sell those goods in the market without it constituting as trademark infringement.
• Seagate Technology LLC Vs. Daichi International [CS (Comm.)
67/2024]
• Seagate, a leading player in the data storage industry, accused defendant of importing
and rebranding end-of-life hard disk drives (HDDs) bearing Seagate’s trademark. This
illegal act of the defendant not only infringed upon Seagate’s intellectual property rights
but also deceived unsuspecting consumers who unwittingly purchased counterfeit
products.
• In response, Seagate relied on Section 30(4) of the Trademarks Act, which empowers
trademark owners to prevent further dealings of their goods if their condition has been
altered or impaired after being put on the market.
• Although Section 30 of the Trademarks Act relates to the fair and honest use of the
trademark by any party, the essence of Section 30(4) also lies in its ability to protect
brands and consumers alike. By prohibiting the unauthorized alteration or rebranding of
goods, this provision ensures that consumers can trust the authenticity and quality
associated with a trademark. In essence, it acts as a shield, guarding brands from
dilution and consumers from deception.
• Acknowledging the validity of Seagate’s claims, the Hon’ble Court issued an ex-parte
ad interim injunction, restraining the defendant from further infringing upon Seagate’s
trademark rights. Additionally, a Local Commissioner was appointed to assess the extent
of the infringement and identify unlawfully imported products.
• PATANJALI AYURVEDA LIMITED V. MASALA KING EXPORTS TRADING PVT. LTD. & ORS
CS(COMM) 107/2019,
• the Delhi High Court observed that a re-seller, who buys branded products for further sale in the market,
is obliged to sell them in the same condition as they were first sold to him. This is also known as the
‘principle of first sale’.
• Patanjali found that the products which were meant exclusively for the domestic market were being
procured and illegally exported to various countries for sale. Patanjali came across instances where the
exported products are tampered or altered. This posed a threat to the health of its consumers and also to
the goodwill and reputation of brand- Patanjali in the international market. Patanjali issued letters and
lodged a complaint with Custom Authorities to restrain such illegal export. However, the Customs
Authorities have stated that the Intellectual Property rules do not apply to exports and no action has
been taken on the complaint of the Plaintiff.
• Also, the packaging of products for export is different from that of the packaging of products for
domestic sale, as the former is required to be in accordance with the regulating standards of that country.
For instance, in the United States, the Food and Drug Administration (FDA) requires a far more detailed
description of the products if the products are to be imported there.
• The Court relied on the judgement of Philip Morris where the defendant illegally acquired and sold products
bearing registered trade mark of the plaintiff. In the suit for infringement, the court had held that the plaintiff need
not prove the difference in packaging or quality to constitute legitimate reasons. The sale of the product itself
results in infringement of plaintiff’s right and he is entitled to injunctive relief.
• The same has been observed in this case where the defendants have procured Patanjali’s products through
illegitimate sources and sold them in the international market.