A trademark is a visual symbol applied to an article with a view to indicate the trade source from which it comes. It can be a word, device, label, name, letter, numeral, brand, heading or colors. The purpose of the trademark is to distinguish goods or services of one origin from those of the others. It advertises the product and creates an image for it. As the trademark creates a separate identity of a product, it should be protected from infringement and passing off.
A trademark is a company’s identity in the market, an identity which they bank upon, an identity to which a customer connects, an identity which not only creates a relationship with the customers but also creates a platform of market for that company.
Transborder reputation is basically similar to reputation only but just the fact that the presence of that company is Pan world or Global. When we talk about trans border reputation the important aspect to look out for is the fact that a name, brand and its presence is not merely confided to one place but can be omnipresent.
Transborder reputation is provided in Section 35 of the Indian Trade Mark Act, 1999 and offers protection to foreign trade marks on the basis of their international reputation.
SECTION 134(C): For passing off arising out of the use by the defendant of any trademark which is identical with or deceptive similar to the plaintiff’s trademark, whether registered or unregistered.
In addition to Section 134 (c), Section 27(2) of trademarks act 1999, expressly provides for an action of passing off if:
1.The trademarks are similar.
2.The defendant is deceptively passing of its goods as those of plaintiff.
3.There is bound to be confusion in the minds of the customers.
The test to be applied for checking if the confusion is persisting is ‘whether a person of average intelligence and of imperfect recollection would be confused or not’.
The Supreme Court in Ruston & Hornby Ltd. v. Zamindara Engineering Co. 1970 2 SCR 222, held that “there does not seem to be any requirement that the plaintiff must carry on business in India before bringing an action for passing off for he can prove that he has otherwise acquired reputation in the country.”
In R. Dongre v. Whirlpool Corporation 1996 PTC (16) 583 (SC), the doctrine of “transborder reputation” was considered in detail for the first time. It was held that “In today’s world it cannot be said a product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation and appraisal travels beyond the confines of the geographical area in which it is old.
The Supreme Court held in Milment Oftho Industries v Allergan Inc (2004 (28) PTC 585) that the first entrant in the market has the right in the mark; the court even considered the word ‘market’ to extend to the global market.
In WWE v Reshma Collection(October 15 2014) the Delhi High Court held for the first time in India that due to advancements in technology and the changing ways of conducting business online, it is possible for an entity to have a virtual presence in a place some distance from its physical presence. The availability of website transactions is virtually the same thing as the seller having shops in that place in the physical world.
At the same time, the courts have taken the view that merely filing an application for registration or a registration per se(if granted in India) does not prove use, as observed in Marico v Agrotech (2010 (43) PTC 39 (Del)).Using a later mark and taking unfair advantage of an earlier mark give statutory recognition to the concept of trademark dilution.