UNIT-2

A) INTRODUCTION TO TRADEMARK LAW

The development of law of trade marks can be traced back to the onset of the industrial revolution which
enabled large scale production and distribution of goods. With the emergence of competitive market
economy, manufacturers began to identify their products by certain symbols, marks or devices so as to
distinguish their goods from similar goods manufactured and marketed by others.

The necessity for protecting the goodwill and reputation of a trade mark was, therefore, felt in all the nations
which led to the adoption of trade mark law everywhere. At international level, the first multilateral
convention, i.e., Paris Convention for the Protection of Industrial Property was adopted in 1883.

A trade mark normally performs the following functions:

(i) It identifies the goods of one trader and distinguish them from goods sold by others,
(ii) It signifies that all goods bearing a particular trade mark come from a single source,
(iii) It signifies that all goods bearing a particular trade mark are of an equal level of quality, and
(iv) It acts as a prime instrument in advertising and selling the goods.

The trade mark law primarily serves two important purposes:

(i) It protects the public from confusion and deception by identifying the source or origin of particular
products as distinguished from other similar products, and
(ii) It protects the trade mark owner’s trade and business as well as goodwill which is attached to his trade
mark.

According to Section 2(1)(zb), a “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 colours; 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 provisions of this Act, a mark used or proposed to be used in relation to goods or
services for the purpose of indicating or so 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, 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.

There are three essentials of trade marks:

(i) It should be a mark:
Section 2(1)(m) defines mark to include ‘a device, brand, heading, label, ticket, name, signature, word,
letter, numeral, shape of goods, packaging or combination of colours or any combination thereof’.The
definition of mark is an inclusive definition. It may also include other things which may fall within the
general and plain meaning of the definition.
(ii) It should be capable of being represented graphically:
A trade mark is required to be capable of being represented graphically. Graphical representation means the
representation of a trade mark for goods or services represented or capable of being represented in paper
form and include representation in digitized form.
(iii) It should be capable of distinguishing the goods or services of one person from those of others:
A trade mark is required to be capable of distinguishing the goods or services of one person from those of
others. To be distinctive or capable of distinguishing the goods, there may be some inherent qualities or
distinguishing characteristics in the mark itself which make it so distinctive or capable of distinguishing the
goods or services of one person from others.
Apart from the aforesaid marks, there is a new category of modern marks which are protectable only in
some countries. These marks include three-dimensional marks such as the shape of goods or their packaging,
colors, per se, sound marks, motion marks, position marks, hologram marks, slogans, smell marks, feel
marks and taste marks. Graphically representation of some of the modern marks is a serious problem.

Smell is said to be one of the most potent types of human memory. The manufacturers are adding pleasant
scent to their products. To obtain registration of a smell mark applicants must be able to visually represent
the product’s scent and must show it is distinctive from the product itself. Writing down the chemical
formula for a smell is problematic as it is deemed to represent the substance rather than the smell of that
substance. Any written description of a smell would not be confused with any other.

It is noteworthy that smell must not result from the nature of the goods itself. For example, an application by
Chanel to register its well-known No. 5 fragrance as a smell mark in the United Kingdom was unsuccessful
on the count that the scent of the perfume is the very essence of the product. However, some smell mark
descriptions have met the distinctiveness test and been successfully registered, such as a Dutch company’s
tennis balls with the scent of newly mown grass, and UK registrations for tyres with a floral fragrance/smell
reminiscent of roses and darts with the strong smell of bitter beer.

In the case of sound marks, alternative methods have emerged for their visual representation: depictions by
oscillogram, spectrum, spectrogram and sonogram are now being accepted. In India, the first sound mark
has been registered on August 18, 2009. The mark was registered in favour of California based Internet firm
Yahoo Inc.’s for its three-note Yahoo yodel.

For the representation of taste mark graphically, the WIPO Standing Committee on the Law on Trademarks,
Industrial Designs and Geographical Indications (SCT) reports that “the graphic representation requirement
was satisfied by using a written description of the taste and an indication that it concerns a taste mark”. The
test of distinctiveness, however, is harder to satisfy.

Single colours or shades of colours have attracted a lot of attention in the business circle in contemporary
times. Colour is a powerful and effective tool for creating brand identification. Colours per se are normally
registered as trade marks in exceptional cases only and that too when they are used extensively and acquired
secondary meaning by becoming distinctive.

In India, the definition of trade mark under Trade Marks Act, 1999 include combination of colours. An
application for registration of a trade mark consisting of a combination of colors is considered only when it
contains a statement to that effect. A trade mark as a combination of colour require the consideration of
certain important factors such as evidence of factual distinctiveness or acquired distinctiveness, extent of
third party use in terms of advertising and sales, studying consumer trends, assessment of the media
coverage of the product that highlights the colour in question, e.g., Cadbury.

Multimedia production has opened the way for even more non-traditional trademarks: holograms, gestures
and motion or moving image trade marks. Their registration usually requires the use of a sequence of
pictures or drawings to depict how the trade marks functions. To meet the graphical representation
requirements in case of hologram, it is necessary that the application form must contain representations of
each of the various views depicted in the hologram. Motion marks are probably the most common of the
multimedia marks.

In India, “shape of goods” and “their packaging” have been included in the definition of trade mark for the
first time by the Trade Marks Act, 1999 which came into force in 2003. In the case of three-dimensional
mark, the reproduction of the mark shall consist of a two dimensional or photographic reproduction as
required in Rule 26(3) of Trade Marks Rules, 2017. normally, the reproduction furnished is to consist of
three different views of the trade mark. Where the particulars of the three-dimensional mark are not clear,
the Registrar may ask up to five further different views of the mark and a description by words of the mark.
If the clarity still lacks, he may call upon the applicant to furnish a specimen of the trade mark.
B) BRIEF INTRODUCTION TO RELATED INTERNATIONAL TREATIES AND
CONVENTIONS

The rules and regulations governing trademarks and related issues were established by multilateral treaties
and agreements like the Paris Convention, the Madrid Agreement and Madrid Protocol, TRIPS, the
Trademark Law Treaty, and the Singapore Treaty on the Law of Trademarks. These accords lay forth the
worldwide, local, and national legal framework for the protection of trademarks. The protection of rights,
harmonisation of legislation, and multilateral filing are the fundamental goals of these treaties affecting
trademarks.

Paris Convention, 1883

An international agreement known as the Paris Convention for the Protection of Industrial Property was
originally signed in Paris, France, in 1883. A framework for the protection of industrial property rights, such
as patents, trademarks, and industrial designs, among member nations was established by the agreement.
The Paris Convention has undergone numerous revisions, the most recent of which was in 1979, to take into
account technological advancements and new concerns around intellectual property. One of the most
commonly ratified international treaties relating to intellectual property rights, the Paris Convention now
includes 177 member nations. The key principles of this convention are as follows: –
1. National treatment: Every member nation is expected to accord foreign trademarks the same level of
protection as it does its own trademarks. The same rights and legal safeguards are thereby provided to
domestic and foreign trademark owners.
2. Priority: Within a certain timeframe, an applicant who has submitted a trademark application in one
member nation may assert priority for the same trademark in other member countries.
3. Registration – Establishing a system for trademark registration and publishing information about
registered trademarks in an official gazette or comparable publication are requirements for member
countries.
4. Non-use and invalidation: The Paris Convention allows for the cancellation or invalidation of
trademarks that have either fallen into generic status or have not been used for a predetermined amount
of time.
5. Prohibition of confusing or immoral trademarks: Members of the European Union are forbidden from
registering trademarks that are likely to be confused with already-existing trademarks or that are
immoral or harmful to public order.

Nice Agreement, 1957

A convention initially signed in 1957 in Nice, France, is the Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the Registration of Marks. In order to facilitate the
international protection of trademarks and streamline the trademark registration process, the agreement aims
to offer a standardised framework for categorising goods and services for trademark registration. Since it
was first approved, the Nice Agreement has undergone multiple revisions, the most recent of which was in
2019. The World Intellectual Property Organisation (WIPO) presently oversees its administration. More
than 150 nations utilise the nice categorization for trademark registration and categorization as of 2021.
According to the Nice Agreement, the following guidelines must be followed when classifying goods and
services for trademark registration:
 45 classes: There are 45 classes for products and services, with classes 1-34 covering goods and 35-45
covering services.
 System of classification: Each class is described by a particular collection of phrases that specify the
kind of commodities or services that fall under its umbrella. Class 35, for instance, deals with
advertising and business management services, whereas Class 25 deals with apparel, footwear, and
headgear.
 Mandatory classification: In trademark applications, trademark applicants must list the goods and/or
services they seek to register, using the relevant class or classes from the Nice Classification.
 Consistency: The Nice Classification aids in ensuring that trademarks are registered and protected
uniformly throughout various legal systems and language types.
 Revision- The Nice Classification is periodically updated to take into account modifications to
technology, business procedures, and consumer behaviour. 2019 marked the most recent revision.
Vienna Agreement, 1973
 The “Vienna Agreement Establishing an International Classification of the Figurative Elements of
Marks,” which was approved in Vienna, Austria in 1973, is a legal document. The classification of
figurative aspects of marks, such as logos, symbols, and designs, is standardised by this treaty.
Trademark offices all throughout the world search, register, and categorise figurative components of
marks using the Vienna Classification. The World Intellectual Property Organisation (WIPO), which
oversees its administration, has a database of all the figurative components of marks that fall under the
system’s classification. The worldwide protection of trademarks is made easier by the Vienna
Agreement and Vienna Classification, especially for marks that contain figurative features. By giving
these parts a standardised classification system, the Agreement and classification assist to make
trademark law more uniform and understandable while also easing the administrative burden associated
with trademark registration and protection.

Trademark Law Treaty, 1994

An international agreement known as the Trademark Law Treaty (TLT) was approved in 1994 in Geneva,
Switzerland. The agreement intends to standardise and simplify the formalities involved in trademark
registration processes in all signatory nations. The TLT’s main clauses are as follows:
 Standards for filing: The TLT specifies uniform standards for filing trademark applications, including
the minimal data needed for the application, the categories of products and services that may be covered
by the mark, and the kind of mark that may be registered.
 Examining trademark applications: The TLT defines uniform examination methods, including the
timing of the inspection and the reasons for rejecting a trademark application.
 Publication and opposition procedure: The TLT lays out guidelines for the publication of trademark
applications, the right of third parties to oppose a trademark application, and the steps to take when
filing an objection.
 Renewal procedures: The TLT outlines the conditions for and duration of trademark registration
renewals. It also outlines the prerequisites for renewal.
 Record of trademark assignments and licenses: The TLT specifies processes for the record of trademark
assignments and licences, including the kinds of information that must be included in the record and
how the record affects the assignment’s or license’s ability to continue in use.

Trips Agreement
Trademark enforcement and protection are covered by the TRIPS Agreement’s requirements. In particular,
the agreement mandates that member nations guarantee the protection of trademarks, including collective
marks and certification marks, and make sure that both domestic and foreign citizens have access to this
protection. The TRIPS Agreement lays out guidelines for the enforcement and protection of trademarks,
such as:
 The meaning of trademarks: Trademarks are any signs that can differentiate the goods or services of one
person from those of another, according to the TRIPS Agreement.
 Trademark protection: According to the TRIPS Agreement, member nations must provide the protection
of trademarks, including collective marks and certification marks, and make sure that both domestic and
foreign citizens have access to this protection.
 Scope: The TRIPS Agreement mandates that member countries protect both registered trademarks and
well-known marks that are not registered, as long as those trademarks are recognised in the member
state in question.
 Trademark enforcement: According to the TRIPS Agreement, member nations must offer both civil and
criminal penalties for trademark infringement, as well as injunctions, monetary fines, and the
confiscation of infringing goods.
 Border controls: According to the TRIPS Agreement, member nations must establish procedures for the
detention of items suspected of violating intellectual property rights at the border and for the destruction
of such goods if they are determined to be infringing.
 Trademark usage restrictions: The TRIPS Agreement forbids the use of any trademarks that are
misleading or deceptive, including those that falsely imply a connection to a specific area.
 Administrative processes: The TRIPS Agreement mandates that member nations create procedures for
the cancellation or revocation of trademarks as well as for the publishing and evaluation of trademark
applications.

C) DEFINITIONS (S2), REGISTRATION OF TRADEMARKS, PROCEDURE,

GROUNDS OF REFUSAL AND WELL KNOWN TRADEMARKS (SS9-12, SS18-23
AND S33)

A trade mark may be registered for goods and services. ‘Goods’ according to Section 2(1)(j) means
anything which is the subject of trade or manufacture. ‘Service’ according to Section 2(1)(z) means service
of any description which is made available to potential users and includes the provision of services in
connection with business of any industrial or commercial matters such as banking, communication,
education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing,
supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair,
conveying of news or information and advertising.

According to Section 2(1)(zg) ‘well known trade mark’, means a mark which has become so to the
substantial segment of the public which uses such goods or receives such services that the use of such mark
in relation to other goods or services would be likely to be taken as indicating a connection in the course of
trade or rendering of services between those goods or services and a person using the mark in relation to the
first-mentioned goods or services.

The very concept of “well-known trade mark” has been incorporated in the Trade Marks Act, 1999 for the
purpose of protecting not only a trade mark which has come to be identified with a particular types of goods
or services, but also for protection of the same mark from being used in relation to other goods and services,
if a substantial segment of the public which uses the first mentioned goods or services is likely to be misled
to believe that there is a connection in the course of trade between the second mentioned goods and the
proprietor of the trade mark in relation to the first mentioned goods or services.

ABSOLUTE GROUNDS FOR REFUSAL

Section 9 lays down absolute grounds for refusal of registration of trade marks under the Act. Section 9(1)
provides that following trade marks are not registerable:
(i) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or
services of one person from those of another person;
(ii) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality,
quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering
of the service or other characteristics of the goods or service;
(iii) which consist exclusively of marks or indications which have become customary in the current language
or in the bona fide and established practices of the trade.
It is, however, provided that a trade mark is not to be refused registration if before the date of application for
registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade
mark.

The expression “distinctive” was defined to mean, ‘adapted to distinguish goods with which the proprietor
of the trade mark is or may be connected in the course of trade from goods in the case of which no such
connection subsists either gradually, or where the trade mark is proposed to be registered subject to
limitations, in relation to use within the extent of the registration’. However, a trade mark could be
registered in Part B even if it was not ‘distinctive’ but was ‘capable of distinguishing’ the goods of its
proprietor from the goods of others.

The meaning of “invented word” was explained by Parker, J., in Diabolo case, as, follows: “to be an
invented word within the meaning of the Act a word must not only be newly coined, in the sense of not
being already current in the English language, but must be such as to not convey any meaning, or, at any rate,
any obvious meaning, to ordinary Englishman. It must be a word having no meaning or no obvious meaning
until one has been assigned to it.”

The trade mark “Dropovit” which was coined from the words “Drop of Vitamin” was considered as an
invented word in F. Hoffmann-La Roche & Co. Ltd., vs. Geoffrey Manner & Co. (P) Ltd.

The expression “may serve in trade” means that there exists a reasonable likelihood that other persons may
use the mark in question to designate characteristics of the goods/services. The term “may” is to be
construed as meaning “reasonably likely to” come into descriptive use in the foreseeable future.

The expression “kind” would include the name of the goods or services claimed and any words recognised
as indicating size or type.

The expression “quality” many include laudatory words such as “Good” or “Best” which are not registerable
for any goods or services since all traders should be equally free to use them in the course of advertising
their products.

The expression “quantity” may refer to numerals such as “12”, which may not be acceptable for wine (12
bottles = one case of wine), or “20” or numeral “200” as a pack of cigarettes. The expression “intended
purpose” may refer to those words which refer directly to the use of which the goods are put or which
describe the consequences of providing the service.

The expression “value” may refer to those words or symbols which merely serve to indicate the worth, merit
or importance of the goods or services. For examples words like “Two for One” or “Worth their Weight in
Gold” may not be registered.

In the Motorine case, Warrington, J., observed that the word “Motorine” as trade mark for lubricating oils
had to direct reference to the quality or character of the goods and was therefore registerable. It was
observed that though the word “Motorine” suggested that in some way they were oils which had to be used
in connection with a motor, but beyond that it had no reference either to the character or quality of the goods
in question. Motorine could suggest motors, but it did not suggest lubricating oil which was not exclusively
used on motors but was used for various other purposes as well.

The name of a place applied in relation to goods/services will prima facie be taken to indicate their origin,
and hence they are considered non-distinctive. The principles applied to registration of geographical names
are the same as those applicable for registration of descriptive words. A geographical name would be
registered as a trade mark on the evidence of its distinctiveness.

In Liverpool Electric Cable Co. Ltd.’s case, registration was sought for trade mark “Liverpool” in respect
of electric cables in both Parts A and B of the register. Rejecting the registration of “Liverpool” as a trade
mark, it was held that the name of an important commercial centre such as Liverpool even though it might in
fact be distinctive of the goods in respect of which it was sought to be register, was not registerable.
Liverpool being a well-known city was a geographical name and not capable of distinguishing the goods of
any particular trader and such registration would tend to embarrass traders who were in the trade or who
might hereafter so trade as they would have difficulty in describing their goods if prevented from using the
word “Liverpool”cables.

In The Imperial Tobacco Co. of India Ltd., vs. The Registrar of Trade Marks, the trade mark sought to
be registered was a label, used as wrapper of packets of cigarettes bearing the device of snow clad hills in
outline with the word “Simla” written prominently in various panels of the label. The Calcutta High Court
while disallowing the registration of trade mark held that in view of the imprint of snow clad hills in outline
in the trade mark “Simla” the ordinary geographical signification was obvious and patent. The Court further
stated that “Simla” was too prominent a city, the capital of Himachal Pradesh, well known in the country
and abroad and in its ordinary or geographical significance it was inherently neither distinctive nor adapted
to distinguishing the goods of the appellant as a particular trader from those of others.
Only those geographical names may be registered under the Trade Marks Act, 1999 which do not serve in
trade to designate the geographical origin of the goods, such as the use of geographical names of small and
insignificant places, or where they have been used in arbitrary or fanciful manner, etc.

A generic name is a word used by a majority of the relevant public to name a class or category of product or
service. The words which have become publici juris or generic cannot be appropriated as a protectable trade
mark as they belong to the public at large.

A word may be generic qua a specific business or trade or industry but not across the board for all
businesses or trades or industries. For instance, the word “Arrow” is a generic word qua archery business but
is an arbitrary word qua shoes. Similarly, “Pearl” is a generic word qua gems and jewellery business, but not
with regard to educational business, as the said expression has no connection or correlation with education
or training services.

Section 9(2) makes a mark non-registerable if:

(i) it is of such nature as to deceive the public or cause confusion;
(ii) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section
of the citizens of India;
(iii) it comprises or contains scandalous or obscene matter;
(iv) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

To “deceive” means deceiving a person by telling him a lie or making a false representation and making him
to believe that a particular thing is true which in fact is false. “To cause confusion” may mean causing
confusion without telling a person a lie or making a false representation to him.

The use of names and pictures of God and Goddess as trade mark may be allowed in normal circumstances.
However, in certain cases, such use may offend the religious sentiments of the people. For example, use of
names/device of deities or religious heads on underwear, footwear, contraceptives, meat products, etc., may
be considered distasteful and may not be registered.

Objections may be raised against trade marks which explicitly full frontal nudes and offensive (scandalous)
back views in relation to goods other than contraceptives. In case of contraceptives, the rule may be relaxed
to some extent.

Section 4(b) of the Emblems Act prohibits generally registration as trade mark or design which bears any
emblem or name the use of which is in contravention of Section 3 of the Emblems Act. The prohibited name
or emblem is specified in the schedule of the said Act. The schedule inter alia contains the name or emblems
or official seal of the UNO, WHO, Govt. of India or any State Government or of a department of any
Government or the President or Union of India.

In addition, as per Geneva Convention Act, 1960 the marks consisting of words “Red Cross” or “Geneva
Cross” are not accepted for registration. The Olympic Symbol, the Olympic Motto and the word Olympic
are ordinarily not registerable.

According to Section 9(3), a mark is not to be registered as a trade mark if it contains exclusively of:
(i) the shape of goods which results from the nature of the goods themselves; or
(ii) the shape of goods which is necessary to obtain a technical result; or
(iii) the shape which gives substantial value to the goods.

The nature of goods or services in relation to which the trade mark is used or proposed to be used shall not
be a ground for refusal of registration.

SECTION 10
According to Section 10, a trade mark may be limited wholly or in part to any combination of colours and
any such limitation shall be taken into consideration by the tribunal having to decide on the distinctive
character of the trade mark. So far as a trade mark is registered without limitation of colour, it shall be
deemed to be registered for all colours.

RELATIVE GROUNDS OF REFUSAL

Section 11 lays down relative grounds for refusal of registration of a trade mark. The relative grounds for
refusal are applicable only when there already exists a trade mark, in comparison to which the new trade
mark is not registerable.

According to Section 11(1), a trade mark shall not be registered if, because of (a) its identity with an earlier
trade mark and similarity of goods or services covered by the trade mark; or (b) its similarity to an earlier
trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a
likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier
trade mark.

In BDH Industries Ltd., vs. Croydon Chemical Works Pvt. Ltd., the Bombay High Court held that apart
from the structural, visual and phonetic similarity or dissimilarity, the question has to be considered from the
point of view of man of average intelligence and imperfect collection. Secondly, it is to be considered as a
whole and thirdly, it is the question of his impression. In this case, the trade mark of petitioners “PV-DINE”
in respect of medicinal and pharmaceutical preparations for human use was found to be deceptively similar
to the trade mark of respondent “PIODIN” in respect of similar medicines.

Further, according to Section 11(2), a trade mark which— (a) is identical with or similar to an earlier trade
mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier
trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the
earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would
take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.

In Yahoo Inc. Vs. Firoz Nadiawala, the court stated that YAHOO! had become a household name in India
and had acquired the status of a well-known trade mark by virtue of long and continuous use and that the
defendant by making a film under the title YAHOO! would cause the members of the public believe that the
defendants’ production was in some way endorsed, sponsored and associated with the plaintiff.

Section 11(6) provides that the Registrar shall, while determining whether a trade mark is a well-known
trade mark, take into account any fact which he considers relevant for determining a trade mark as a well -
known trade mark including:
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge
in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or
publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
(iv) the duration and geographical area of any registration of or any application for registration of that trade
mark under this Act to the extent that they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark, in particular the extent to which the
trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

According to Section 11(7), the Registrar shall, while determining as to whether a trade mark is known or
recognised in a relevant section of the public for the purposes of sub-section (6), take into account:
(i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or services;
(iii) the business circles dealing with the goods or services, to which that trade mark applies.
Section 11(8) provides that where a trade mark has been determined to be well known in at least one
relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark
as a well-known trade mark for registration under this Act.

In Ford Motor Company vs. C.R. Borman, Ford was considered to be well-known trade mark on the basis
of knowledge of the mark to the general public, the long duration of the use of mark, the wide extent of
geographical area of use, its goodwill and reputation due to extensive promotion, publicity and
advertisement, extensive sales under the mark in India and abroad, and the numerous registrations obtained
of the mark.

According to Section 11(9), the Registrar shall not require as a condition, for determining whether a trade
mark is a well-known trade mark, any of the following, namely:
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has been filed in India;
(iv) that the trade mark:
(a) is well-known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been filed in, any jurisdiction other than India,
or
(d) that the trade mark is well-known to the public at large in India.

Section 11(10) provides that while considering an application for registration of a trade mark and opposition
filed in respect thereof, the Registrar shall (i) protect a well-known trade mark against the identical or
similar trade marks; (ii) take into consideration the bad faith involved either of the applicant or the opponent
affecting the right relating to the trade mark.

As per Section 11(11), Where a trade mark has been registered in good faith disclosing the material
informations to the Registrar or where right to a trade mark has been acquired through use in good faith
before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration
of that trade mark or right to use that trade mark on the ground that such trade mark is identical with or
similar to a well-known trade mark.

According to Section 11(3), a trade mark shall not be registered if, or to the extent that, its use in India is
liable to be prevented:
(a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the
course of trade; or
(b) by virtue of law of copyright.

As per Section 11(5), a trade mark shall not be refused registration on the grounds specified in (2) and (3) of
Section 11, unless objection on any one or more of those grounds is raised in opposition proceedings by the
proprietor of the earlier trade mark.

Section 11(4) provides that the registration of a trade mark shall not be prevented where the proprietor of the
earlier trade mark or other earlier right consents to the registration, and in such case the Registrar may
register the mark under special circumstances under section 12.

SECTION 12

Section 12 provides for the registration of identical or similar trade mark by more than one proprietor in the
case of honest concurrent use or other special circumstances. It provides that in the case of honest concurrent
use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may
permit the registration by more than one proprietor of the trade marks which are identical or similar
(whether any such trade mark is already registered or not) in respect of the same or similar goods or services,
subject to such conditions and limitations, if any, as the Registrar may think fit to impose.
Concurrent use may be established by documents which may include bills, invoices, transportation and sales
proofs, etc. Use includes physical and non-physical use. Advertisements and other promotional activities and
materials relating to a trade mark are covered under non-physical use.

REGISTRATION PROCESS

Section 18(1) provides that any person claiming to be the proprietor of a trade mark used or proposed to be
used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed
manner for the registration of his trade mark.

According to Section 18(2), a single application may be made for registration of a trade mark for different
classes of goods and services and fee payable therefor shall be in respect of each such class of goods or
services.

As per Section 18(3), every application under sub-section (1) shall be filed in the office of the Trade Marks
Registry within whose territorial limits the principal place of business in India of the applicant or in the case
of joint applicants the principal place of business in India of the applicant whose name is first mentioned in
the application as having a place of business in India, is situate.
It is however, provided that where the applicant or any of the joint applicants does not carry on business in
India, the application shall be filed in the office of the Trade Marks Registry within whose territorial limits
the place mentioned in the address for service in India as disclosed in the application, is situate.

Sections 18(4) and (5) provide that the Registrar may, subject to the provisions of this Act, refuse the
application or may accept it absolutely or subject to such amendments, modifications, conditions or
limitations, if any, as he may think fit. In the case of a refusal or conditional acceptance of an application,
the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials
used by him in arriving at his decision.

According to Section 22, the Registrar may, on such terms as he thinks just, at any time, whether before or
after acceptance of an application for registration under section 18, permit the correction of any error in or in
connection with the application or permit an amendment of the application.
However, if an amendment is made to a single application referred to in sub-section (2) of section 18
involving division of such application into two or more applications, the date of making of the initial
application shall be deemed to be the date of making of the divided applications so divided.

As per Section 19, where, after the acceptance of an application for registration of a trade mark but before
its registration, the Registrar is satisfied (a) that the application has been accepted in error; or (b) that in the
circumstances of the case the trade mark should not be registered or should be registered subject to
conditions or limitations or to conditions additional to or different from the conditions or limitations subject
to which the application has been accepted, the Registrar may, after hearing the applicant if he so desires,
withdraw the acceptance and proceed as if the application had not been accepted.

Section 20(1) provides that when an application for registration of a trade mark has been accepted, whether
absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance,
cause the application as accepted together with the conditions or limitations, if any, subject to which it has
been accepted, to be advertised in the prescribed manner.
The Registrar, however, may cause the application to be advertised before acceptance if it relates to a trade
mark to which sub-section (1) of section 9 and sub-sections (1) and (2) of section 11 apply, or in any other
case where it appears to him that it is expedient by reason of any exceptional circumstances so to do.

According to Section 20(2), where an application has been advertised before acceptance under sub-section
(1) or after advertisement of an application, (i) an error in the application has been corrected; or (ii) the
application has been permitted to be amended under section 22, the Registrar may in his discretion cause the
application to be advertised again or in any case falling under clause (b) may, instead of causing the
application to be advertised again, notify in the prescribed manner the correction or amendment made in the
application.

As per Section 21(1), any person may, within four months from the date of the advertisement or re-
advertisement of an application for registration, give notice in writing in the prescribed manner and on
payment of such fee as may be prescribed, to the Registrar, of opposition to the registration.

Sections 21(2) and (3) provides that the Registrar shall serve a copy of the notice on the applicant for
registration and, within two months from the receipt by the applicant of such copy of the notice of
opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the
grounds on which he relies for his application, and if he does not do so he shall be deemed to have
abandoned his application. If the applicant sends such counter-statement, the Registrar shall serve a copy
thereof on the person giving notice of opposition.

According to Section 21(4), any evidence upon which the opponent and the applicant may rely shall be
submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall
give an opportunity to them to be heard, if they so desire.

As per Section 21(5), the Registrar shall, after hearing the parties, if so required, and considering the
evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be
permitted, and may take into account a ground of objection whether relied upon by the opponent or not.

Section 21(6) provides that where a person giving notice of opposition or an applicant sending a counter-
statement after receipt of a copy of such notice neither resides nor carries on business in India, the Registrar
may require him to give security for the costs of proceedings before him, and in default of such security
being duly given, may treat the opposition or application, as the case may be, as abandoned.

According to Section 21(7), the Registrar may, on request, permit correction of any error in, or any
amendment of, a notice of opposition or a counter-statement on such terms as he thinks just.

A trade mark is registered under Section 23. As per Section 23(1), when an application for registration of a
trade mark has been accepted and either (a) the application has not been opposed and the time for notice of
opposition has expired; or (b) the application has been opposed and the opposition has been decided in
favour of the applicant, the Registrar shall, unless the Central Government otherwise directs, register the
said trade mark within eighteen months of the filing of the application and the trade mark when registered
shall be registered as of the date of the making of the said application and that date shall be deemed to be the
date of registration.

Section 23(2) provides that on the registration of a trade mark, the Registrar shall issue to the applicant a
certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry.

According to Section 23(3), where registration of a trade mark is not completed within twelve months from
the date of the application by reason of default on the part of the applicant, the Registrar may, after giving
notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed
within the time specified in that behalf in the notice.

As per Section 23(4), the Registrar may amend the register or a certificate of registration for the purpose of
correcting a clerical error or an obvious mistake.

D) PASSING OFF, INFRINGEMENT AND EXCEPTIONS TO INFRINGEMENT

ACTIONS, REMEDIES (SS27-30, S34, SS134-135)

EFFECT OF REGISTRATION
Section 27 provides that no person is entitled to institute any proceeding to prevent the infringement of an
unregistered trade mark. Neither such person is entitled to recover damages from such infringement.
It, however, recognises the common law rights of the trade mark owners to take action against any person
for passing off goods as the goods of another person or as services provided by another person or the
remedies thereof.

Sections 28(1) and (2) provide that the registration of a trade mark shall, if valid, give to the registered
proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or
services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the
trade mark in the manner provided by this Act. The exclusive right to the use of a trade mark given under
sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

Section 28(3) of the Act enacts that where two or more persons are registered proprietors of trade marks,
which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade
marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on
the register) be deemed to have been acquired by any one of those persons as against any other of those
persons merely by registration of the trade marks but each of those persons has otherwise the same rights as
against other persons (not being registered users using by way of permitted use) as he would have if he were
the sole registered proprietor.

In Dabur India Ltd., vs. Real Drinks Pvt. Ltd., the Court stated that although the defendant had a
registration for the marks REAL MANIK and REAL SODA (with the words REAL CAFE written below it),
it used only REAL for its beverages. It was using a part of the mark and not the whole mark for which it had
registration. Further, it had recently changed the writing style of the word REAL on the label of its products
thus bringing it closer to the plaintiff’s manner of writing REAL. There was no satisfactory explanation as to
why the defendant chose to do so. The defence under section 28(3) of the Trade Mark Act, 1999 would be
available only if defendant was using the entire mark for which it held registration and not only a part of it.

INFRINGEMENT OF REGISTERED TRADE MARKS

Section 29 explicitly states various acts which constitute infringement of trade mark. A trade mark may be
infringed in the following seven ways:
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using
by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to,
the trade mark in relation to goods or services in respect of which the trade mark is registered and in such
manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using
by way of permitted use, uses in the course of trade, a mark which because of (a) its identity with the
registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b)
its similarity to the registered trade mark and the identity or similarity of the goods or services covered by
such registered trade mark; or (c) its identity with the registered trade mark and the identity of the goods or
services covered by such registered trade mark, is likely to cause confusion on the part of the public, or
which is likely to have an association with the registered trade mark.
(3) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using
by way of permitted use, uses in the course of trade, a mark which (a) is identical with or similar to the
registered trade mark; and (b) is used in relation to goods or services which are not similar to those for
which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of
the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute
of the registered trade mark.
(4) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name
or part of his trade name, or name of his business concern or part of the name, of his bu siness concern
dealing in goods or services in respect of which the trade mark is registered. For the purposes of this section,
a person uses a registered mark, if, in particular, he (a) affixes it to goods or the packaging thereof; (b) offers
or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered
trade mark, or offers or supplies services under the registered trade mark; (c) imports or exports goods under
the mark; or (d) uses the registered trade mark on business papers or in advertising.
(5) A registered trade mark is infringed by a person who applies such registered trade mark to a material
intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services,
provided such person, when he applied the mark, knew or had reason to believe that the application of the
mark was not duly authorised by the proprietor or a licensee.
(6) A registered trade mark is infringed by any advertising of that trade mark if such advertising (a) takes
unfair advantage of and is contrary to honest practices in industrial or commercial matters; or (b) is
detrimental to its distinctive character; or (c) is against the reputation of the trade mark.
(7) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark
may be infringed by the spoken use of those words as well as by their visual representation and reference in
this section to the use of a mark shall be construed accordingly.

The Supreme Court in Parle Products (P) Ltd., vs. J.P. and Co., held that in order to come to the
conclusion whether one mark was deceptively similar to another, the broad and essential features of the two
were to be considered. They should not be placed side by side to find out if there were any differences in the
design and if so, whether they were of such character as to prevent one design from being mistaken for the
other. It would be enough if the impugned mark bore such an overall similarity to the registered mark as
would be likely to mislead a person usually dealing with one to accept the other if offered to him.

In Prem Nath Mayer vs. Registrar of Trade Marks, the appellant was registered proprietor of the trade
mark “Lion Brand” bearing a picture of lion for chaff-cutter blades and knifes. The respondents registered a
trade mark “Maa Durga Brand” bearing a picture of lion with a Goddess seated upon it for agricultural
implements especially for chaff-cutter blades. The Calcutta High Court stated that it was for the court t o
decide upon looking at the two marks, whether the respondent’s mark was likely to deceive a purchaser of
average intelligence. It was to be borne in mind that such a purchaser was not likely to have the appellant’s
mark before him when he was offered a chaff-cutter bearing the respondent’s mark of a lion with a Goddess
seated upon it. It was true that phonetically the words written under the appellant’s mark and those written
under the respondent’s mark were altogether different. But in judging a question of deception and confusion,
it should not be overlooked that a purchaser of goods such as this might not necessarily be literate person,
able to read and write. The Court was of the opinion that the dominant feature in both the trade marks was
the picture of lion. The picture of Goddess in the trade mark of respondent was small and almost
insignificant in comparison to the picture of lion. The trade mark of the respondent was found deceptively
similar to the trade mark of the appellant.

In Cadila Health Care Ltd., vs. Cadila Pharmaceuticals Ltd., the Supreme Court observed that public
interest would support lesser degree of proof showing confusing similarity in the case of trade mark in
respect of medicinal product as against non-medicinal products. The Court referred many American
judgments which dealt with deceptive similarity between the trade marks dealing with the medicinal
products.

In Kabushiki Kaisha Toshiba Trading as Toshiba Corp. vs. S.K. Sil, the court stated that a well-known
trade mark is accorded a statutory protection irrespective of whether it is an Indian mark or foreign mark. In
an infringement action, the court held TOSHIBA as a well-known trade mark after considering:
(i) The duration for which the mark was used,
(ii) The geographical extent of trading area in which the market was used,
(iii) The volume of business,
(iv) The extent of knowledge of the mark in India,
(v) The extensive advertisement and promotion of the mark throughout the world, including India,
(vi) The number of registration of the mark throughout the world including India, and
(vii) The number of consumers buying the goods bearing the mark.

DISPARAGEMENT

Section 29(8) provides for this infringement as a form of disparagement. Disparagement means matter
which is intended by its publisher to be understood or which is reasonably understood to cast doubt upon the
existence or extent of another’s property, whether tangible or intangible, or upon its quality. It is a falsehood
that tends to denigrate the goods or services of another party. Similarly, dispara gement of goods is a
statement about a competitor’s goods which is untrue or misleading and is made to influence or tends to
influence the public not to buy.

Disparagement may be direct, clear and brazen. They may also be subtle, clever or covert. The dut y of the
court in cases of disparagement is to analyse and decide how the statement made by a rival trader belittles,
discredits or defame the reputation of another’s property, product or business.

In Pepsi Co., Inc. and Ors. v. Hindustan Coca Cola Ltd. and Anr, a Division Bench of this Court had
held that factors which are required to be considered while deciding the question of the disparagement are
(1) Intent of the commercial
(2) Manner of the commercial
(3) Story line of the commercial and the message sought to be conveyed by the commercial.

These factors were further clarified by a Division Bench in the case of Dabur India Ltd. v. Colortek
Meghalaya Pvt. Ltd. & Anr, wherein the court held as under:-
(1) The intent of the advertisement: this can be understood from its story line and the message sought to be
conveyed.
(2) The overall effect of the advertisement: does it promote the advertiser’s product or does it disparage or
denigrate a rival product? In this context it must be kept in mind that while promoting its product, the
advertiser may, while comparing it with a rival or a competing product, make an unfavourable comparison
but that might not necessarily affect the story line and message of the advertised product or have that as its
overall effect.
(3) The manner of advertising: is the comparison by and large truthful or does it falsely denigrate or
disparage a rival product? While truthful disparagement is permissible, untruthful disparagement is not
permissible.

Another notable case dealing with comparative advertising is Reckitt & Colman of India Ltd. v. M.P.
Ramchandaran & Anr, wherein it has been held that the law on subject is as follows:
I) A tradesman is entitled to declare his goods to be best in the world, even though the declaration is untrue.
II) He can also say that his goods are better than his competitors', even though such statement is untrue.
III) For the purpose of saying that his goods are the best in the world or his goods are better than his
competitors' he can even compare the advantages of his goods over the goods of others.
IV) He however, cannot, while saying that his goods are better than his competitors', say that his
competitors' goods are bad. If he says so, he really slanders the goods of his competitors. In other words he
defames his competitors and their goods, which is not permissible.
V) If there is no defamation to the goods or to the manufacturer of such goods no action lies, but if there is
such defamation an action lies and if an action lies for recovery of damages for defamation, then the Court is
also competent to grant an order of injunction restraining repetition of such defamation.

EXCEPTIONS TO INFRINGEMENT

Section 30 specifically excludes certain acts as not constituting infringement of a registered trade mark.
According to Section 30(1), the use of a registered trade mark by any person for the purposes of identifying
goods or services as those of the proprietor is allowed provided the use (a) is in accordance with honest
practices in industrial or commercial matters, and (b) is not such as to take unfair advantage of or be
detrimental to the distinctive character or repute of the trade mark.

According to Section 30(2), a registered trade mark is not infringed in the following cases:
(a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value,
geographical origin, the time of production of goods or of rendering of services or other characteristics of
goods or services;
(b) a trade mark is registered subject to any conditions or limitations, the use of the trade mark in any
manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods to be
exported to any market or in relation to services for use or available for acceptance in any place or country
outside India or in any other circumstances, to which, having regard to those conditions or limitations, the
registration does not extend;
(c) the use by a person of a trade mark:
(i) in relation to goods connected in the course of trade with the proprietor or a registered user of the
trade mark if, as to those goods or a bulk of which they form part, the registered proprietor or the
registered user conforming to the permitted use has applied the trade mark and has not subsequently
removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade
mark; or
(ii) in relation to services to which the proprietor of such mark or of a registered user conforming to the
permitted use has applied the mark, where the purpose and effect of the use of the mark is to indicate, in
accordance with the fact, that those services have been performed by the proprietor or a registered user
of the mark;
(d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to,
other goods or services in relation to which the trade mark has been used without infringement of the right
given by registration under this Act or might for the time being be so used, if the use of the trade mark is
reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose
nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a
connection in the course of trade between any person and the goods or services, as the case may be;
(e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which
are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by
registration under this Act.

In Hawkins Cookers Limited vs. Murugan Enterprises, the Division Bench agreed with the observations
of single judge that if in the sale it becomes reasonably necessary for the manufacturer of adaptable goods,
to refer to the trade mark of the relatable goods, such reference would not amount to an infringement of the
trade mark under which the relatable goods are sold. The Bench, however, reversed the judgment of singl e
judge by stating that the defendants had given undue prominence of the word “Hawkins” by printing
“Suitable for Hawkins Pressure Cookers” in a distinct red color.

Section 30(3) recognises the principle of “exhaustion of rights”. It provides that where the goods bearing a
registered trade mark are lawfully acquired by a person, the sale of the goods in the market or otherwise
dealing in those goods by that person or by a person claiming under or through him is not infringement of a
trade mark by reason only of:
(a) the registered trade mark having been assigned by the registered proprietor to some other person, after
the acquisition of those goods; or
(b) the goods having been put on the market under the registered trade mark by the proprietor or with his
consent.

However, as per Section 30(4), the provision shall not apply where there exists legitimate reasons for the
proprietor to oppose further dealings in the goods in particular, where the condition of the goods, has been
changed or impaired after they have been put on the market.

In Kapil Wadhwa vs. Samsung Electronics Co. Ltd., the appellants were importing printers manufactured
by respondents (Samsung Co.) from abroad and selling them in Indian market. The Division Bench of Delhi
High Court applied the principle of international exhaustion of rights and stated that the principle took away
the right of respondents to control the further sale and further distribution of the goods. The respondents
argued about after sales services as they were not giving any warranty regarding those goods which were
imported by the appellants and sold in the Indian market. The court found some merits in the plea of
respondents that the ordinary consumer might form a bad impression of the product of respondents on not
receiving after sales services. This could cause a possible damage to the reputation of the respondent
company. The court, however, stated that this could be taken care of by passing suitable directions requiring
the appellants to prominently display in their shop that the Samsung printers sold by them were imported by
the appellants and that after sales services and warranties are not guaranteed, nor were they provided under
the authority and control of the respondents and that the appellants did so at their own end and with their
own efforts. This would obviate any consumer dissatisfaction adversely affecting the reputation of the
respondents. Once that was done, the respondents could claim no legitimate reasons to oppose further
dealing in SAMSUNG products in India. The court injuncted the appellants from meta-tagging their
websites with those of the respondents.

According to Section 34, the proprietor or a registered user of registered trade mark is not entitled to
interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in
relation to goods or services in relation to which that person or a predecessor in title of his has continuously
used that trade mark from a date prior (a) to the use of the first-mentioned trade mark in relation to those
goods or services by the proprietor or a predecessor in title of his; or (b) to the date of registration of the
first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a
predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse on such use being
proved to register the second mentioned trade mark by reason only of the registration of the first -mentioned
trade mark.

PASSING OFF

Passing off is an actionable wrong, in which a person passes off his goods as the goods of another. The law
of passing off is preserved, notwithstanding any apparent conflict or overlap with the provisions of the Act.

An action for passing off will lie whenever the defendant company’s name, or its intended name, is
calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the
two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the
proceedings, the court will have regard to the way in which the business may be carried out in future, and to
its not being carried on precisely as carried on at the date of the proceedings. When there is probability of
confusion in business, an injunction will be granted even though the defendants adopted the name innocently.

In United Breweries Ltd., vs. Khodays Breweries Limited, the Karnataka High Court stated that the
factors required to be considered in passing off action were “the overall get up of the label of the two
products by putting oneself into the shoes of the consumer and examining it from his point of view as he is
likely to be deceived and whether he would be misled or in a given situation like the one present on hand
namely, a customer who by looking at the label of the defendant would get carried away or would be
deceived as being the label of the plaintiff or the product manufactured by the plaintiff and get carried away
and as such would buy the product of the defendant instead of buying the product of the plaintiff.” The
Court further stated that burden lay heavily on the plaintiff and he had to establish:
(1) Similarity of the marks,
(2) Similarity of the goods,
(3) The relationship between the parties channels of trade,
(4) Relationship between the parties advertising,
(5) Class of consumers and
(6) Evidence of confusion and defendant’s intention to deceive.

In N.R. Dongre vs. Whirlpool Corporation, the Supreme Court approved the following observations of the
Division Bench:
“A product and its trade name transcend the physical boundaries of a geographical region and acquire a trans
border or overseas or extraterritorial reputation not only through import of goods but also by its
advertisement. The knowledge and the awareness of the goods of a foreign trade and its trade mark can be
available at a place where goods are not being marketed and consequently not being used. The manner in
which or the source from which the knowledge has been acquired is immaterial.”

In Allergan Inc., vs. Milmet Oftho Industries, also the court analysed the interplay between the goodwill
and reputation in a case of passing off action and stated that courts in India had followed the third approach
which was a middle path wherein strict insistence of localised business was not necessary. However,
reputation which was sought to be protested had to be substantial one having global character.

REMEDIES
Section 134(1) provides that no suit (a) for the infringement of a registered trade mark; or (b) relating to any
right in a registered trade mark; or (c) for passing off arising out of the use by the defendant of any trade
mark which is identical with or deceptively similar to the plaintiff’s trade mark, whether registered or
unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

According to Section 134(2), a District Court having jurisdiction shall, notwithstanding anything contained
in the Code of Civil Procedure, 1908 or any other law for the time being in force, include a District Court
within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the
person instituting the suit or proceeding, or, where there are more than one such persons any of them,
actually and voluntarily resides or carries on business or personally works for gain.

As per Section 135(1), the relief which a court may grant in any suit for infringement or for passing off
referred to in section 134 includes injunction subject to such terms, if any, as the court thinks fit and at the
option of the plaintiff, either damages or an account of profits, together with or without any order for the
delivery-up of the infringing labels and marks for destruction or erasure.

In Cadbury UK Limited vs. Lotte India Corporation Ltd., the Delhi High Court stated that plaintiffs had
prima facie been able to show that their products and marks had a substantial spill over reputation in India
prior to the date the defendant recommended using the mark in India. The plaintiffs, therefore, had been able
to make out a prima facie case for making absolute the interim injunction granted in their favour.

Section 135(2) provides that the order of injunction under sub-section (1) may include an ex parte injunction
or any interlocutory order for any of the following matters, namely:
(a) for discovery of documents;
(b) preserving of infringing goods, documents or other evidence which are related to the subject-matter of
the suit;
(c) restraining the defendant from disposing of or dealing with his assets in a manner which may adversely
affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded
to the plaintiff.

According to Section 135(3), the court shall not grant relief by way of damages other than nominal damages
or on account of profits in any case:
(a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a
certification trade mark or collective mark; or
(b) where in a suit for infringement the defendant satisfies the court:
(i) that at the time he commenced to use the trade mark complained of in the suit, he was unaware and
had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the
plaintiff was a registered user using by way of permitted use; and
(ii) that when he became aware of the existence and nature of the plaintiff’s right in the trade mark, he
forthwith ceased to use the trade mark in relation to goods or services in respect of which it was
registered; or
(c) where in a suit for passing off, the defendant satisfies the court:
(i) that at the time he commenced to use the trade mark complained of in the suit, he was unaware and
had no reasonable ground for believing that the trade mark for the plaintiff was in use; and
(ii) that when he became aware of the existence and nature of the plaintiff’s trade mark he forthwith
ceased to use the trade mark complained of.

In Disney Enterprises Inc., vs. Rajesh Bharti, the court was of the view that before the award of damages,
it was not necessary that the plaintiff must show that some particular benefit had accrued to the defendant or
that the plaintiff must satisfy the court by leading evidence that it had suffered actual loss.

In Time Incorporated vs. Lokesh Srivastava, the court stated that the time had come when the courts
dealing actions for infringements of trade marks, copyrights, patents, etc., should not only grant
compensatory damages, but award punitive damages also with a view to discourage and dishearten law
breakers who indulge in violations with impunity out of lust for money so that they could realise that in case
they were caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay
punitive damages also, which may spell financial disaster for them.

E) ASSIGNMENT AND LICENSING (SS48-53)

ASSIGNMENT

Section 2(1)(b) defines “assignment” to mean “an assignment in writing by act of the parties concerned”. In
other words, there has to be an instrument in writing. The expression ‘by act of the parties concer ned’ means
that both the assignor and assignee must execute the document. There cannot be a unilateral execution of
document by one party alone.

Section 37 recognises the right of registered proprietor to assign the trade mark for any consideration and to
give receipt. It provides that subject to the provisions of this Act and to any rights appearing from the
register to be vested in any other person, the proprietor of a trade mark shall, , have power to assign the trade
mark, and to give effectual receipts for any consideration for such assignment.

According to Section 38, a registered trade mark shall, subject to the provisions of this Chapter, be
assignable, whether with or without the goodwill of the business concerned and in respect either of all the
goods or services in respect of which the trade mark is registered or of some only of those goods or services.

As per Section 40(1), a trade mark shall not be assignable in a case in which as a result of the assignment
there would in the circumstances subsist exclusive rights in more than one of the persons concerned to the
use of trade marks nearly resembling each other or of identical trade mark which is likely to deceive or
cause confusion, in relation to (a) same goods or services; (b) same description of goods or services; (c)
goods or services or description of goods or services which are associated with each other.
However,such an assignment shall not be deemed to be invalid under this sub-section if the exclusive rights
subsisting as a result thereof in the persons concerned respectively are, having regard to limitations imposed
thereon, such as not to be exercisable by two or more of those persons in relation to goods to be sold, or
otherwise traded in, within India otherwise than for export therefrom, or in relation to goods to be exported
to the same market outside India or in relation to services for use at any place in India or any place outside
India in relation to services available for acceptance in India.

Section 40(2) provides that the proprietor of a registered trade mark who proposes to assign it may submit to
the Registrar in the prescribed manner a statement of case setting out the circumstances and the Registrar
may issue to him a certificate stating whether, having regard to the similarity of the goods or services and of
the trade marks referred to in the case, the proposed assignment would or would not be invalid under sub -
section (1), and a certificate so issued shall, subject to appeal and unless it is shown that the certificate was
obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under sub-section (1) of
the assignment in so far as such validity or invalidity depends upon the facts set out in the case, but, as
regards a certificate in favour of validity, only if application for the registration under section 45 of the title
of the person becoming entitled is made within six months from the date on which the certificate is issued.

Section 41 lays down the restriction on assignment so as to prevent splitting of rights of a trade mark on a
territorial basis and creating rights on different persons in different parts of India. A trade mark shall not be
assignable in a case in which there would subsist:
(a) an exclusive right in one of the persons concerned, to the use of the trade mark limited to use in relation
to goods to be sold or otherwise traded in, in any place in India, or in relation to services for use, or services
available for acceptance in any place in India; and
(b) an exclusive right in another of these persons concerned, to the use of a trade mark nearly resembling the
first-mentioned trade mark or of an identical trade mark in relation to:
(i) the same goods or services; or
(ii) the same description of goods or services; or
 (iii) services which are associated with those goods or goods of that description or goods which are
associated with those services or services of that description, limited to use in relation to goods to be
sold or otherwise traded in, or services for use, or available for acceptance, in any other place in India
However, on an application in the prescribed manner by the proprietor of a trade mark who proposes to
assign it, the Registrar, if he is satisfied that in all the circumstances the use of the trade mark in exercise of
the said rights would not be contrary to the public interest may approve the assignment, and an assignment
so approved shall not, unless it is shown that the approval was obtained by fraud or misrepresentation, be
deemed to be invalid under this section or section 40 if application for the registration under section 45 of
the title of the person becoming entitled is made within six months from the date on which the approval is
given, was made before that date.

Section 42 stipulates conditions for assignment of a trade mark without goodwill of a business. It provides
that where an assignment of a trade mark, whether registered or unregistered is made otherwise than in
connection with the goodwill of the business in which the mark has been or is used, the assignment shall not
take effect unless the assignee, not later than the expiration of six months from the date on which the
assignment is made or within such extended period, if any, not exceeding three months in the aggregate, as
the Registrar may allow, applies to the Registrar for directions with respect to the advertisement of the
assignment, and advertises it in such form and manner and within such period as the Registrar may direct.

The Explanation to Section 42 states that an assignment of a trade mark of the following description shall
not be deemed to be an assignment made otherwise than in connection with the goodwill of the business in
which the mark is used, namely:
(a) an assignment of a trade mark in respect only of some of the goods or services for which the trade mark
is registered accompanied by the transfer of the goodwill of the business concerned in those goods or
services only; or
(b) an assignment of a trade mark which is used in relation to goods exported from India or in relation to
services for use outside India if the assignment is accompanied by the transfer of the goodwill of the export
business only.

According to Section 43, a certification trade mark shall not be assignable otherwise than with the consent
of the Registrar, for which application shall be made in writing in the prescribed manner.

As per Section 44, associated trade marks shall be assignable only as a whole and not separately, but,
subject to the provisions of this Act, they shall, for all other purposes, be deemed to have been registered as
separate trade mark.

Section 2(1)(c) defines “associated trade mark” to mean “trade marks deemed to be, or required to be,
registered as associated trade marks under this Act”.

Section 45 lays down the procedure for registration of assignment. Section 45(1) provides that where a
person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the
prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application,
register him as the proprietor of the trade mark in respect of the goods or services in respect of which the
assignment or transmission has effect, and shall cause particulars of such assignment or transmission to be
entered on the register.

According to Section 45(2), the Registrar may require the applicant to furnish evidence or further evidence
in proof of title only where there is a reasonable doubt about the veracity of any statement or any document
furnished.

As per Section 45(3), where the validity of an assignment or transmission is in dispute between the parties,
the Registrar may refuse to register the assignment or transmission until the rights of the parties have been
determined by a competent court and in all other cases the Registrar shall dispose of the application within
the prescribed period.
Section 45(4) provides that until an application under sub-section (1) has been filed, the assignment or
transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered
trade mark without the knowledge of assignment or transmission.

LICENSING

Section 48 provides that a person other than the registered proprietor of a trade mark may be registered as a
registered user thereof in respect of any or all of the goods or services in respect of which the trade mark is
registered. The permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall
be deemed not to be used by a person other than the proprietor, for the purposes of section 47 or for any
other purpose for which such use is material under this Act or any other law.

Section 49(1) requires every application for registration of registered user to be accompanied by the
following documents:
(a) the agreement in writing or a duly authenticated copy thereof, entered into between the registered
proprietor and the proposed registered user with respect to the permitted use of the trade mark; and
(b) an affidavit made by the registered proprietor or by some person authorised to the satisfaction of the
Registrar to act on his behalf:
(i) giving particulars of the relationship, existing or proposed, between the registered proprietor and the
proposed registered user, including particulars showing the degree of control by the proprietor over the
permitted use which their relationship will confer and whether it is a term of their relationship that the
proposed registered user shall be the sole registered user or that there shall be any other restriction as to
persons for whose registration as registered users application may be made;
(ii) stating the goods or services in respect of which registration is proposed;
(iii) stating the conditions or restrictions, if any, proposed with respect to the characteristics of the goods
or services, to the mode or place of permitted use, or to any other matter;
(iv) stating whether the permitted use is to be for a period or without limit of period, and, if for a period,
the duration thereof; and
(c) such further documents or other evidence as may be required by the Registrar or as may be prescribed.

According to Sections 49(2) and (3), when the requirements of sub-section (1) have been complied with, the
Registrar shall register the proposed registered user in respect of the goods or services as to which he is so
satisfied. The Registrar shall issue notice in the prescribed manner of the registration of a person as a
registered user, to other registered users of the trade mark, if any.

As per Section 49(4), the Registrar shall, if so requested by the applicant, take steps for securing that
information given for the purposes of an application under this section (other than matters entered in the
register) is not disclosed to rivals in trade.

Section 50(1) deals with the powers of the Registrar to vary or cancel registration as registered user. The
registration of a registered user may be varied or cancelled in the following situations:
(a) may be varied by the Registrar as regards the goods or services in respect of which it has effect on the
application in writing in the prescribed manner of the registered proprietor of the trade mark;
(b) may be cancelled by the Registrar on the application in writing in the prescribed manner of the registered
proprietor or of the registered user or of any other registered user of the trade mark;
(c) may be cancelled by the Registrar on the application in writing in the prescribed manner of any person
on any of the following grounds, namely:
(i) that the registered user has used the trade mark otherwise than in accordance with the agreement
under clause (a) of sub-section (1) of section 49 or in such way as to cause or to be likely to cause,
deception or confusion;
(ii) that the proprietor or the registered user misrepresented, or failed to disclose, some fact material to
the application for registration which if accurately represented or disclosed would not have justified the
registration of the registered user;
(iii) that the circumstances have changed since the date of registration in such a way that at the date of
such application for cancellation they would not have justified registration of the registered user;
 (iv) that the registration ought not to have been effected having regard to rights vested in the applicant
by virtue of a contract in the performance of which he is interested;
(d) may be cancelled by the Registrar on his own motion or on the application in writing in the prescribed
manner by any person, on the ground that any stipulation in the agreement between the registered proprietor
and the registered user regarding the quality of the goods or services in relation to which the trade mark is to
be used is either not being enforced or is not being complied with;
(e) may be cancelled by the Registrar in respect of any goods or services in relation to which the trade mark
is no longer registered.

According to Sections 50(2) and (3), the Registrar shall issue notice in the prescribed manner in respect of
every application under this section to the registered proprietor and each registered user not being the
applicant of the trade mark. (3) Before cancelling of registration, the registered proprietor shall be given a
reasonable opportunity of being heard.

Section 51(1) provides that in order to ascertain whether the registered user agreement is in force, the
Registrar may at any time during the continuance of the registration, require the registered proprietor to
confirm within one month as to whether the agreement under Section 49(1)(a) on the basis of which
registered user was registered, was still in force.

As per Section 51(2), if the registered proprietor fails to furnish the confirmation within one month as
required under sub-section (1), the registered user shall cease to be the registered user on the day
immediately after the expiry of the said period and the Registrar shall notify the same.

Section 52 recognises the right of registered user to take proceedings against infringement. Section 52(1)
provides that subject to any agreement subsisting between the parties, a registered user may institute
proceedings for infringement in his own name as if he were the registered proprietor, making the registered
proprietor a defendant and the rights and obligations of such registered user in such case being concurrent
with those of the registered proprietor.

According to Section 52(2), a registered proprietor so added as defendant shall not be liable for any costs
unless he enters an appearance and takes part in the proceedings.

As per Section 53, a permitted user shall have no right to institute any proceeding for any infringement.

Section 2(1)(r)(ii) defines “permitted user” to mean “in relation to a registered trade mark, means the use of
trade mark by a person other than the registered proprietor and registered user in relation to goods or
services (a) with which he is connected in the course of trade; and (b) in respect of which the trade mark
remains registered for the time being; and (c) by consent of such registered proprietor in a written agreement;
and (d) which complies with any conditions or limitations to which such user is subject and to which the
registration of the trade mark is subject”.

According to Section 54, the registered trade mark user does not have a right of assignment of the trade
mark.

The Explanation I to Section 54 provides that the right of a registered user of a trade mark shall not be
deemed to have been assigned or transmitted within the meaning of this section in the following cases,
namely:
(a) where the registered user being an individual enters into a partnership with any other person for carrying
on the business concerned; but in any such case the firm may use the trade mark, if otherwise in force, only
for so long as the registered user is a member of the firm;
(b) where the registered user being a firm subsequently undergoes a change in its constitution; but in any
such case the reconstituted firm may use the trade mark, if otherwise in force, only for so long as any partner
of the original firm at the time of its registration as registered user, continues to be a partner of the
reconstituted firm.
F) INTELLECTUAL PROPERTY APPELLATE BOARD (SS83-100)

Section 83 required the Central Government to establish an Appellate Board to be known as the Intellectual
Property Appellate Board to exercise the jurisdiction, powers and authority conferred on it by or under this
Act.

Section 84(1) prescribes that the Appellate Board shall consist of a Chairperson, Vice-Chairperson and such
number of other Members, as the Central Government may deem fit and, subject to the other provisions of
this Act, the jurisdiction, powers and authority of the Appellate Board may be exercised by Benches thereof.

According to Section 84(2), a Bench shall consist of one Judicial Member and one Technical Member and
shall sit at such place as the Central Government may, by notification in the Official Gazette, specify.

As per Section 84(3), the 2Chairperson (a) may, in addition to discharging the functions of the Judicial
Member or Technical Member of the Bench to which he is appointed, discharge the functions of the Judicial
Member or, as the case may be, the Technical Member, of any other Bench; (b) may transfer a Member from
one Bench to another Bench; (c) may authorise the Vice-Chairperson, the Judicial Member or the Technical
Member appointed to one Bench to discharge also the functions of the Judicial Member or the Technical
Member, as the case may be, of another Bench.

Section 84(4) provides that where any Benches are constituted, the Central Government may, from time to
time, by notification, make provisions as to the distribution of the business of the Appellate Board amongst
the Benches and specify the matters which may be dealt with by each Bench.

According to Section 84(5), if any question arises as to whether any matter falls within the purview of the
business allocated to a Bench, the decision of the Chairperson shall be final.

As per Section 84(6), if the Members of a Bench differ in opinion on any point, they shall state the point or
points on which they differ, and make a reference to the Chairperson who shall either hear the point or
points himself or refer the case for hearing on such point or points by one or more of the other Members and
such point or points shall be decided according to the opinion of the majority of the Members who have
heard the case, including those who first heard it.

Section 91 makes provisions for appeals to the Appellate Board from the decisions of the registrar. It
provides that any person aggrieved by an order or decision of the Registrar under this Act, or the rules made
thereunder may prefer an appeal to the Appellate Board within three months from the date on which the
order or decision sought to be appealed against is communicated to such person preferring the appeal. An
appeal may be admitted after the expiry of the period specified therefor, if the appellant satisfies the
Appellate Board that he had sufficient cause for not preferring the appeal within the specified period. An
appeal to the Appellate Board shall be in the prescribed form and shall be verified in the prescribed manner
and shall be accompanied by a copy of the order or decision appealed against and by such fees as may be
prescribed.

According to Section 93, no court or other authority shall have or, be entitled to, exercise any jurisdiction,
powers or authority in relation to the matters referred to in sub-section (1) of section 91.

Section 92(1) makes it clear that the Appellate Board shall not be bound by the procedure laid down in the
Code of Civil Procedure, 1908 but shall be guided by principles of natural justice and subject to the
provisions of this Act and the rules made thereunder, the Appellate Board shall have powers to regulate its
own procedure including the fixing of places and times of its hearing.

As per Section 92(2), the Appellate Board shall have, for the purpose of discharging its functions under this
Act, the same powers as are vested in a civil court under the Code of Civil Procedure, 1908, while trying a
suit in respect of the following matters, namely:
(a) receiving evidence;
(b) issuing commissions for examination of witnesses;
(c) requisitioning any public record; and
(d) any other matter which may be prescribed.

According to Section 92(3), any proceeding before the Appellate Board shall be deemed to be a judicial
proceeding within the meaning of sections 193 and 228, and for the purpose of different provisions of the
Indian Penal Code, and the Appellate Board shall be deemed to be a civil court for all the purposes of
different sections of the Code of Criminal Procedure, 1973.

Section 95 provides that no interim order whether by way of injunction or stay or any other manner shall be
made on, or in any proceedings relating to, an appeal unless:
(a) copies of such appeal and of all documents in support of the plea for such interim order are furnished to
the party against whom such appeal is made or proposed to be made; and
(b) opportunity is given to such party to be heard in the matter.

As per Section 96, on the application of any of the parties and after notice to the parties, and after hearing
such of them as he may desire to be heard, or on his own motion without such notice, the Chairman may
transfer any case pending before one Bench, for disposal, to any other Bench.

Section 97 deals with the procedure for application for rectification made to the Appellate Board. An
application for rectification of the register made to the Appellate Board under section 57 shall be in such
form as may be prescribed. A certified copy of every order or judgment of the Appellate Board relating to a
registered trade mark under this Act shall be communicated to the Registrar by the Board and the Registrar
shall give effect to the order of the Board and shall, when so directed, amend the entries in, or rectify, the
register in accordance with such order.

Section 98(1) empowers the Registrar to appear before the Appellate Board in certain circumstances. The
Registrar shall have the right to appear and be heard:
(a) in any legal proceedings before the Appellate Board in which the relief sought includes alteration or
rectification of the register or in which any question relating to the practice of the Trade Marks Registry is
raised;
(b) in any appeal to the Board from an order of the Registrar on an application for registration of a trade
mark:
(i) which is not opposed, and the application is either refused by the Registrar or is accepted by him subject
to any amendments, modifications, conditions or limitations, or
(ii) which has been opposed and the Registrar considers that his appearance is necessary in the public
interest, and the Registrar shall appear in any case if so directed by the Board.

According to Section 98(2), unless the Appellate Board otherwise directs, the Registrar may, in lieu of
appearing, submit a statement in writing signed by him, giving such particulars as he thinks proper of the
proceedings before him relating to the matter in issue or of the grounds of any decision given by him
affecting it, or of the practice of the Trade Marks Registry in like cases, or of other matters relevant to the
issues and within his knowledge as Registrar, and such statement shall be evidence in the proceeding.

As per Section 99, in all proceedings under this Act before the Appellate Board the costs of the Registrar
shall be in the discretion of the Board, but the Registrar shall not be ordered to pay the costs of any of the
parties.

Section 100 provides that all cases of appeals against any order or decision of the Registrar and all ca ses
pertaining to rectification of register, pending before any High Court, shall be transferred to the Appellate
Board from the date as notified by the Central Government in the Official Gazette and the Appellate Board
may proceed with the matter either de novo or from the stage it was so transferred.

G) CONFLICTS OF TRADEMARKS WITH DOMAIN NAME

Originally, domain name provided an address for computers on the Internet. But now, the Internet has
developed from a mere means of communication to a mode of carrying on commercial activity. The domain
names are also being used as business identifier. In Celador Productions Ltd., vs. Gaurav Mehrotra, the
court held that since the domain name was more than an Internet address, therefore, person could certainly
seek protection of its domain name.

The function of giving names to the addresses of the website has undergone magnificent change whereby the
companies, firms, eminent individuals have been able to name the web addresses after their own names or
their trade marks. This performs dual functions.
Firstly, the domain name does not merely remain as an address but rather performs the functions of a trade
mark as the prospective customers or other known persons visit the web page and are able to immediately
connect with the source and identify the same with the particular company or the individual.
Secondly, so far as individual persons or eminent personality/popular companies are concerned, their
identity is established in the virtual world of internet.

As a domain name owner provides information/services which are associated with such domain name, a
domain name may pertain to provisions of services within the meaning of Section 2(1)(z) of the Trade
Marks Act, 1999.

Domain names are entitled to protection as a trademark and the trademark law applies to activities on the
Internet. The mere fact that a petitioner has no registered domain name by itself, may not stand in the way of
a passing off action.

In Satyam Infoway Ltd., vs. Sifynet Solutions (P) Ltd., after referring to the definition of trade mark and
mark, the Supreme Court stated that the question which was apposite was whether a domain name could be
said to be a word or name which was capable of distinguishing the subject of trade or service made available
to potential users of the internet. The Court answered the question in affirmative. The Court held that a
domain name could be said to be a word or name which was capable of distinguishing the subject of trade or
service made available to the potential users of the Internet. On the question of whether the principles of
trademark law and in particular those relating to passing off apply to domain name, the Court held that “it is
apparent that a domain name may have all the characteristics of a trade mark and could found an action for
passing off.”

The distinction between the trade mark and a domain name lies in the manner in which the two operate. A
trade mark is protected by the laws of a country where such trade mark may be registered. A trade mark,
therefore may have multiple registrations in many countries throughout the world. On the other hand, since
the Internet allows for access without any geographical limitation, a domain name is potentially accessible
irrespective of the geographical location of the consumers. The outcome of this potential for universal
connectivity is not that a domain name would require worldwide exclusivity but also that national laws
might be inadequate to effectively protect a domain name. The lacuna necessitated international regulation
of the domain name system which was effected through World Intellectual Property Organisation (WIPO)
and the Internet Corporation for Assigned Names and Numbers (ICANN).

Uniform Domain Names Dispute Resolution Policy (UDRP) was formulated to resolve the issues of inter
alia cyber piracy, trade mark dilution, etc. The adoption of UDRP was a result of consultations between the
World Intellectual Property Organisation (WIPO) and the Internet Corporation for Assigned Names and
Numbers (ICANN), a non-profit organisation managing the domain name system (DNS). The UDRP, which
was adopted on 24th October, 1999, provides for a domain name dispute resolution mechanism before
Administrative Panels of the WIPO Arbitration and Mediation Centre.

H) UNCONVENTIONAL TRADEMARKS

THE EUROPEAN UNION

The first undertaking which sought to register a scent under the 1994 Act was Chanel for the scent of its
fragrance Chanel No. 5. The application was rejected on the grounds of being functional; the fragrance was
the product itself. On the same day, Sumitomo Rubber Co. sought the registration of “a floral
fragrance/smell reminiscent of roses as applied to tyres” and Unicorn Products sought to register “the strong
smell of bitter beer applied to flight darts”. Both these applications were successful.

A landmark case determined by the ECJ is the case of Ralf Sieckmann v. Deutsches Patent und
Markenamt. The Court ruled that a scent could receive trademark protection provided it is graphically
represented. Such representation “must enable the sign to be represented visually, particularly by means of
images, lines or characters...” ; it should be clear, intelligible and self-contained. The purpose of the graphic
representation was to enable the competent authorities, tradesman/ competitors and the general public to
ascertain the precise sign for which protection was being sought for, by checking the public registry.

Regarding the method of graphical representation, the Court noted that few people could ascertain the scent
by reading a chemical formula; further, the formula actually denoted the substance and not the scent. A mere
written description, though graphical, was not precise or clear. An odour sample was not graphical, nor
stable or durable. Therefore, the Court ruled that none of these methods, individually, or in combination,
constituted valid representation. Thus, the application was rejected.

It is interesting to note that the Court did not lay down what constituted a valid graphical representation for
the purposes of Article 2. In not doing so, and in striking down the aforementioned methods, the ECJ has
severely restricted the scope of registration of scents. In fact, various academics have commented that
registration of scent is now impossible.

The most relevant case, landmark in its consequence, is the case of Shield Mark BV v. Kist. The Court
ruled that as per Article 2 a sign needed to possess two features: the capability of graphical representation
and the characteristic of distinctiveness in that the sign will enable consumers to distinguish between the
goods and services of two or more firms. Sound, the ECJ opined, could be graphically represented. If a
sound was distinctive, the Court stated that there was no reason why it could not receive trademark
protection.20 On the need for the requirement of graphical representation, the same was required especially
as these signs were not capable of visual representation.

UNITED STATES OF AMERICA

The only positive requirement is that apart from being non-functional, the mark should be distinctive, or
have acquired distinctiveness, enabling consumers to distinguish the goods of the holder from that of others.

Therefore, registration of sounds and scents is not precluded by the statute. The registration of non-
conventional marks is further helped by the decision of the U.S. Supreme Court in Qualitex Co v. Jacobson
Products Co., wherein it held that a trademark can be “almost anything at all that is capable of carrying
meaning.”

The scent had to be distinctive of the product and it could not be utilitarian or functional. Therefore the
fragrance of a perfume could not be registered. Moreover, in terms of graphical representation, the court
stated that while drawings were not required, description of the scent was required.

In Kawasaki Motors Corp USA v. Harley-Davidson Michigan Inc., the plaintiff argued that the sound of
the motor bike could not be registered on the ground of the doctrine of functionality. The sound sought to be
trademarked was a sound common to all motorcycles of the aforementioned type, irrespective of which
company it was. Unfortunately, Harley-Davidson abandoned the application before a decision could be
arrived at.

Therefore it can be seen that the American Trademark Board and Courts have not shied away from granting
sounds trademark protection as long as they fulfil requirements sought for conventional marks. Significantly,
US courts, unlike the EU, have accepted representations through sonograms or sound recordings.36 When
MGM sought trademark protection for the lion roar, the sound was represented through a sonogram.

INDIA

Unlike the case in US and EU, very few unconventional marks have received registration in India.

A reading of Sections 2(1)(zb)41 and 2(1)(m)42 of the Act shows that the definition of “trade mark” has
been widened to include shapes, packaging and combination of colours. As specified in the Manual, this is
an inclusive definition including any mark as long as the mark is capable of being represented graphically
and capable of distinguishing the goods or services of one person from that of the others.

In the context of scent marks, the Registry has again directly applied the Sieckmann test, stating that though
smells are registrable, the fulfilment of the graphical representation criteria becomes difficult post the
Sieckmann holding.

The shape of the Zippo lighter was also granted registration, which was later confirmed in a trademark
infringement suit in the Delhi High Court, on the ground that it was distinctive.

One of the common arguments against non-conventional trademarks is that they are leading to an
undesirable restriction in free intellectual property resources. Such a ground, even assuming is valid, cannot
be a reason for suggesting that non-conventional marks lead to an undesirable restriction. It is a ground for
arguing why non-conventional marks are incapable of registration. Non-conventional trademarks become
significantly important for a section of society like the visually impaired and the illiterate.