Introduction to Trademark
Trademarks are a type of intellectual property. A trademark is a name, word, or symbol that distinguishes the goods of one business from those of others. Marketing goods or services by procedure becomes easier with a trademark because product recognition is assured and made more manageable. The owner has the right to prevent a competitor from using his trademark or sign.
The difference between a trademark and a brand is sometimes misunderstood. Although a brand name can be a symbol or logo, a trademark is a distinctive sign or indicator in a business organisation because it has a broader meaning than a brand name. People are more influenced by a unique trademark that reflects the product's quality. A logo, a picture mark, or a slogan can all be trademarks.
There was no trademark law in India prior to 1940. Several trademark infringement issues arose, which were resolved under Section 54 of the Specific Relief Act of 1877. Registration was decided under the Indian Registration Act of 1908. In 1940, the Indian Trademark Law was enacted to address these issues. As trade and commerce multiplied after the trademark law was implemented, so did the demand for trademark protection.
The Trademark and Merchandise Act of 1958 replaced the Trademark Act. It improved trademark protection and prevented the misuse or fraudulent use of trademarks on merchandise. The Act allowed a trademark to be registered so that the trademark owner could obtain a legal right to use it exclusively.
The government of India replaced the previous Act with the Trademark Act, 1999, to comply with the World Trade Organization's TRIPS (Trade-related aspects of intellectual property rights) obligation. The Trademark Act's goal is to provide legal protection to trademark users, direct the conditions on the property, and provide legal remedies for the enforcement of trademark rights.
Section 2 of the Trade Marks Act, 1999 contains all the essential definitions.
Section 2 (b) – Assignment – This section defines assignment as an assignment, in writing, made by the parties involved and concerned.
Section 2 (c) – Associated Trademarks–Associated trademarks are defined as trademarks deemed to be associated trademarks or are required to be registered as such under this Act.
Section 2 (e) – Certification trademark – A Certification trademark, according to this section, is a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade and which are certified by the mark's proprietor. This is in relation to the origin, material, mode of manufacture, quality, accuracy, or other characteristics of goods or services not certified and registrable under Chapter IX of the Act.
Section 2(g) – Collective Mark – This section defines a collective mark as a trademark that distinguishes the goods or services of members of an association of persons who are the mark's proprietor from those of others. This association is not a partnership within the meaning of the Indian Partnership Act, 1932.
Section 2 (h) - Deceptively similar – Under the meaning of this section, a mark is deemed deceptively similar to another mark if it is so similar to that other mark that it is likely to deceive or cause confusion under this section.
Section 2 (i) – False Trade Description – According to this section, a false trade description is untrue or misleading in a material respect in relation to the goods or services to which it is applied. It could be any change to a trade description in relation to the goods or services to which it is applied, whether by addition, effacement, or other means, that renders the Description untrue or misleading materially. Afalse trade description can also denote or imply that there are more yards or metres contained therein than standard yards or standard metres.
False trade description can refer to any marks, arrangement, or combination of marks that are applied to goods in such a way that they are likely to lead people to believe that the goods are the manufacture or merchandise of someone other than the person whose merchandise or manufacture they are. Also, referring to services, it may lead people to believe that the services are provided or rendered by someone other than the person whose service they are.
It also includes any false name or initials applied to goods or services in such a way as if they were a trade description, regardless of whether or not the name or initials are a trademark andare identical or confusingly similar to the name or initials of a person doing business in the same field who has not authorised the use of such name or initials.
False Trade Description can also be the name or initials of a fictitious person or a person not authorised to sell or provide such goods or services. The fact that a trade description is a trademark or part of a trademark does not make it a false trade description under this Act.
Section 2(l) – Limitations –This section defines limitations as any restriction on a person's exclusive right to use a trademark imposed by the proprietor's Registration of such a trademark. It also included restrictions on the mode or area of use within or outside India.
Section 2(m) – Mark – Any device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours or any combination of colours is considered a mark under this section.
Section 2(r) – Permitted use – The use of a trademark by a registered user in relation to goods or services with which he is connected in the course of business and for which he is registered as a registered user is referred to as permitted use.
It can also refer to the use of a trademark by someone other than the registered proprietor and user, with the registered proprietor's consent in a written agreement that complies with any conditions or limitations that the user is subject to, as well as the Registration of the trademark.
Section 2 (v) – Registered Proprietor – In the case of a trademark, the term "registered proprietor" refers to the person who is currently listed as the owner of the trademark in the register.
Section 2(w) – Registered Trademark – It refers to a trademark that is currently registered and is still in use.
Section 2(za) – Trade Description – It refers to any direct or indirect description, statement, or other indication of the number, quantity, measure, gauge, or weight of any goods or services, as well as the standard of quality of any goods or services according to a classification commonly used or recognised in the trade. It can also be about a product's suitability, strength, performance, behaviour, or the time, place or country where it was made, produced, or delivered.
The Description can also be the name and address of the manufacturer, service provider, or person for whom the goods are manufactured, or services are provided, the mode of manufacture, production, or service provision, or the material from which the goods are made. This includes any description of the use of any mark which, according to trade custom, is commonly considered to indicate any of the above matters.
Section 2(zb) –Trademark –This mark can be represented graphically and distinguishes one person's goods or services from another's. It may include the shape of goods, packaging and combination of colours.
In relation to Chapter XII (other than Section 107), a trademark is a mark that is registered or used in connection with goods or services to indicate or denote a connection between the goods or services and the proprietor of the mark. It is a mark used or proposed to be used in relation to goods or services to indicate a connection between the goods or services in the course of trade. A person has the right to use the mark with or without revealing their identity. It can also includea certification trademark or collective mark.
Section 2(zc) – Transmission – Transmission means the transmission by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer. However,the assignment is not included.
Section 2(zg) - Well-known Trademark - It means a mark that has become so well-known among a significant segment of the public who uses or receives goods or services that its use in relation to other goods or services is likely to be interpreted as indicating a connection in the course of trade between those goods or services and a person using the mark in relation to those goods or services.
Types of Trademark
Service mark–A service mark is any symbol, name, sign, device, or word that is used in commerce to identify and distinguish the services of one provider from those of others. Service marks only apply to the distribution of services, not to physical goods.
Examples of services in which service marks are used are sponsorship; Hotel services; Entertainment services; Management and investment; Housing development services, etc.
A service mark is expected to be crucial in the promotion and sale of a product or service. A service mark identifies a product, and that product's service mark is also known as a trademark.
Collective mark–Employees and a collective group, members of a collaborative association, or any other group or organisation use a collective mark to identify the source of goods or services. A collective mark is a mark that is used for a group of organisations with similar characteristics, as well as for goods and services. The organisation or group uses this mark for more than one person acting in a group organisation or legal entity to divide the various goods or services.
A collective mark identifies a marketer, trader, or individual as a specific group or organisation member. The Institute of the chartered accountants, for example, uses the collective trademark CA. A collective trademark is used by individual members of a group of people but is registered as a whole.
Certification mark – A certificate mark verifies or confirms a matter by assuring that some act has been performed or that some judicial formality has been followed. A certification mark is defined in the Trademark Act, 1999 as a mark that certifies certain qualities of goods or services with which it is associated.
A certification trade mark can identify the goods or services with which it is associated in the course of business and is certified by the mark's owner in terms of source, body, mode of manufacture of goods or assistance performances, quality, accuracy, etc. or other characteristics. The Trademark Act of 1999 governs the Registration of certification marks.
Trade dress – Trade dress refers to features of a product's visual appearance, such as the design of a building or its packaging, that indicate the product's source to customers. It falls under the category of intellectual property. Consumers are protected by trade dress protection from products that are packaged or appear to imitate other products.
Uses of Trademark
Trademark identifies the owner of the product. Trademark piracy is defined as using a trademark by unauthorised or illegal means, such as by producing it in commerce. If a trademark is infringed upon, the owner of a registered trademark can sue. In contrast, an unregistered trademark has only one option: passing off.
Many countries, including the United States, Canada, and others, accept trademark policies, giving the master of the product the right to take action to protect their trademark. The owner of a registered trademark, in contrast to the owner of an unregistered trademark, has a greater legal right to protection.
Owner of the Trademark
A trademark protects its owner by granting them exclusive rights to use it to identify goods or services or allow others to use it in exchange for payment. It is a tool used by the registered proprietor to prevent others from using the trademark in an unauthorised manner. The rights conferred by Registration are described in Section 28.
The Registration of a trademark is valid if the right is granted to the certified owner of the trademark, the owner has the exclusive right to use the trademark in relation to the goods or services for which the trademark is registered, and the holder of the trademark has the right to claim maintenance in the event of trademark infringement.
Where there are more than two certified proprietors of a trademark that is identical or nearly identical to each other, the exclusive right to use each of those trademarks shall not be expected to be taken by one of those persons against other persons solely by Registration of the trademark, unless their rights are related to any conditions or limitations entered on the register. Still, each of those persons has the same rights as against other persons.
Registration of a Trademark
Section 18 deals with the process that has to be adhered to while getting a trademark registered.Any person claiming to be the owner of a trademark or claiming to be the owner of a trademark that he intends to use in the future may apply in writing to the appropriate registrar in the prescribed manner.
The application must include the name of the goods, mark, and services, the class of goods and services it falls, the applicant's name and address, and the mark's Duration of use. The term "person" refers to a group of firms, a partnership firm, a corporation, a trust, a state government, or the federal government.
Conditions of Registration
The central government appoints a person to be known as the controller, general of patents, designs, and trademarks, who will be the trademark registrar by announcing it in the official gazette. The central government may appoint other officers if they believe they are appropriate for discharging, under the supervision and direction of the registrar, who may authorise them to discharge. The registrar has the authority to transfer or withdraw cases in writing, stating the reasons for doing so.
The maintenance of a registered trademark is discussed under Section 6 of the Act. Except for notice of the trust, particulars of registered trademarks and other prescribed particulars shall be recorded at the head office. Each branch office must keep a copy of the register. It allows for the storage of records on computers, diskettes, or other electronic devices.
The procedure of Registration of a trademark
In India, Registration is done on a first-come, first-served basis. As a result, applying for Registration as soon as possible is critical. The Office of the Controller General of Patents, Trade Marks, Industrial Designs, and Geographical Indications is in charge of trademark applications. Mumbai, Kolkata, Ahmedabad, Delhi, and Chennai all have branches for these offices. The application must be completed in accordance with the territorial jurisdiction.
The steps to registering a trademark in India are as follows:
Selecting a trademark agent in India:Only proprietors with a place of business in India are permitted to file a trademark application. If this is not the case, the right holder must use an agent or attorney to file a trademark application. The agent or attorney is usually in charge of the minor details, such as trademark searching, preparation, filing, and enforcement.
Determining the eligibility and availability of the trademark:The agent usually begins the registration process by determining whether the trademark is eligible for Registration and performing a clearance search to see if the controller general's office already has a similar mark.
Completing the application form and filing:If the trademark agent has the right holder's power of attorney, he can complete and file the application form. The form will require details such as the name and address of the proprietor, a description of the goods and services associated with the mark, whether the mark is in use and a copy of the mark.
Review by the trademark office:The trademark office examines the application to ensure that it is complete before assigning it a number. This number becomes the registration number if the trademark is registered.
Preliminary approval and publication, show cause hearing or rejection of the application: The trademark association determines whether the application is barred from Registration based on the Trade Marks Act of 1999's absolute or relative grounds for refusal.
Following that, within one month, an examination report is issued. Based on the examination report, the trademark registrar decides whether the application should be accepted, rejected, or subjected to a "show cause" hearing. Depending on the facts, an application may be rejected, accepted, or accepted with conditions during a "show cause hearing". If the application is denied, the applicant has the option of filing an appeal with the Intellectual Property Appellate Board.
Registration:If no third-party objects within three months of the trademark's publication in the Trademarks Journal, the trademark will be registered, and the trademark authority will issue a registration certificate.
Trade Mark Objection
Before a trademark is registered, it goes through a series of checks to ensure that it is registrable. The Trademark Examiner from the Registry initiates trademark objection, which is one of the first stages of refusal. In the vast majority of cases, an objection can be overcome with proper representation before the registrar.
The following are some of the most common reasons for opposition:
- Lack of distinctiveness (Section 9);
- Similarity with pending or registered marks (Section 11);
- Usage of geographical names;
- International proprietary names;
- Offensive or obscene words as a part of or as a trademark.
Trade Mark Opposition
After the Trademark Registry has accepted the application, a third party can file a trademark opposition. This is a crucial step in the trademark registration process. After the trademark has met all of the initial requirements, such as the distinctiveness factor, and has received registrability approval from the registry, it is finally advertised in the Trademarks journal to invite any third-party opposition. The main reason is to allow the general public to file an opposition to the Registration if they believe the trademark is confusingly or phonetically similar to their owner's other existing marks.
Who can file an opposition
Any person, regardless of commercial or personal interests, may file a Notice of Opposition. The individual does not have to be the owner of a previously registered trademark. He could be a customer, a buyer, or a general public member who will use the goods.When filing an opposition, the issue of the opponent's bona fides does not arise. People have three months from the date of publication of the TM in the Trademark Journal to file an opposition, which can be extended to a maximum of one month.
The Grounds of Opposition of a pending trademark
- The mark (in any language) is a generic term for the associated goods or services;
- The trademark is primarily a surname;
- The mark is similar to another registered trademark, official mark, Olympic mark, or geographical indication in India;
- The Emblem and Names Act, 1950 prohibits the use of that trademark;
- The mark is scandalous, obscene, or immoral in some way;
- The mark is customary in the current language or the established practices of business;
- The mark is illegal or is prohibited by law;
- The mark contains material that may offend religious sentiments of any class or group of people;
- In India, another party had previously used the mark or a confusingly similar mark;
- The applicant used the mark only as a licensee of another party;
- The mark is devoid of the distinctive character or is descriptive;
- Application for the trademark is made with bad faith, or the mark is likely to deceive the public or cause confusion.
Absolute grounds for refusal of Registration a Trademark
Section 9 of the Act defines absolute grounds for denial of Registration. Trademarks that may be devoid of distinguishing characteristics or consist solely of marks or signals used in commerce to indicate the kind, fine, quantity, alleged grounds, values, or geographical origin. Also, a time of production of goods or rendering of offerings, or different characteristics of goods or offerings, consisting solely of marks or indications that have become common in today's language. That mark is ineligible for Registration unless proven that the mark has acquired a new character due to use before the application date.
A mark shall not be registered as a trademark if it causes fraud or confusion to the public, if it is a matter that might hurt the religious susceptibility or if its use is prohibited or if the mark is obscene or scandalous.
It is stated that a mark cannot be registered as a trademark if it only contains (a) the shape of goods that form the nature of goods, (b) the shape of goods that are required to obtain a technical result, or (c) the shape of goods that gives substantial value to goods.
Test of Similarity
If two marks appear to be deceptively similar, the essential features of both must be considered. They should not be placed next to each other to see any design differences or if they are of the same character to avoid one design being mistaken for the other. It will suffice if the disputed mark bears such a striking resemblance to the registered mark that a person who is used to dealing with one would mistakenly accept the other if it were offered to him.
Apart from structural, visual, and phonetic similarity or dissimilarity, the question must also be considered in human intelligence and imperfect collection. It is regarded as a complete third, and it is the question of his impressions.
Relative Grounds for Refusal of Registration
The Act's Section 11 lays out the relative grounds for a trademark's refusal to be registered. A trademark cannot be registered if there is a likelihood of confusion due to (i) its identity with an earlier trademark and similarity of goods or services, or (ii) its similarity to an earlier trademark and similarity of goods.
It also states that a trademark that is identical or similar to an earlier trademark cannot be registered. Also, which must be registered for goods and services that are not similar to those for which an earlier trademark has been registered in the name of a different proprietor if, and to the extent that, the earlier trademark is well known in India. It also states that a trademark cannot be registered if or to the extent that its use in India is likely to be prohibited by law.
Procedure and Duration of Registration
The term of registration for a trademark is ten years. The renewal term for a registered trademark is also ten years from the date of expiration of the original Registration or the most recent renewal of Registration. The registrar must send the notice to the registered proprietor in the prescribed manner before the expiration of the previous Registration.
The notice mentions the date of expiration and payment of fees. Upon which a renewal of Registration may be obtained if, at the expiration of the time given on that behalf, those conditions have not duly complied with, the registrar may remove the trademark from the register.However, suppose an implication is made in the prescribed form, and the prescribed rate is paid within six months of the final Registration of the trademark expiring. In that case, the registrar will not remove the trademark from the register and renew the trademark registration for ten years.
If a trademark is removed from the register due to non-payment of the prescribed fee, the registrar must renew the Registration after six months and within one year from the expiration of the previous Registration. The registrar also restores the trademark to the register and renews the trademark registration for ten years from the expiry of the previous registration upon receipt of implication in the prescribed form and payment of the prescribed fee.
International Registration of a trademark
The Indian government passed a trademark law that is only valid within India's borders. The trademark registered in India only has effect in India; in order to protect a trademark in another country, it must be registered in that country. Each country has its trademark law, which includes rules and regulations for trademark registration in that country. To put it another way, if a person wants to register a trademark in a specific country, they must file a separate application in each of those countries.
In 2013, the Indian government agreed to the Madrid Conference, which establishes a procedure for submitting a worldwide application to contracting parties from India through the Registrar of Trademarks' office.
An international application can be submitted in one of two ways:
International application in each foreign country: To protect a trademark in a foreign country, an international application must be filed with the trademark office according to the country's rules and regulations. The applicant must hire a firm that specialises in foreign trademark registration for this purpose; however, applications to countries that are not members of the Madrid system can be filed as described above. It offers services that include hiring an attorney in a foreign country to assist in registering a trademark in that country.
The international application under the Madrid system: Trademark registration can also be started by filing an international application under the Madrid protocol with the Registrar of Trademarks in various countries.
The Indian Trademark Office collects international trademark applications and, after verifying that they comply with the Madrid Protocol, sends them to the WIPO (World Intellectual Property Organization), forwarding them to the appropriate authorities overseas. Every international application is processed in accordance with the laws of the foreign country, and all communications are routed through the Indian government.
Infringement of trademark
Section 29 of the Trademarks Act, 1999 deals with the issue of an infringement of the trademark. A person who is not a registered proprietor or who is using a mark that is identical to or deceptively similar to the trademark in relation to goods or services for which the trademark is registered infringes on the trademark.
Following infringement, the trademark owner can pursue civil legal action against the party who infringed on the registered trademark. In essence, trademark infringement refers to the unlicensed use of a trademark in relation to products and benefits in a way that is likely to cause confusion, difficulty, or benefit to the trader.
Infringement of trademark on the internet
As the internet grows in popularity, so does the number of false trademark infringement claims. When a company sees one of its trademarks on a third-online party's page, it is likely to file a trademark infringement lawsuit.
For example, someone who creates an online website about her experience with Microsoft software could use Microsoft's trademarks to look up specific products without fear of infringement. She would, however, no longer be able to use the marks in such a way as to give the impression that she is affiliated with Microsoft or that Microsoft is sponsoring her website. The honour could be determined by looking at how the marks are sincerely used on the website. On the internet, there is a trademark infringement in this way.
No action for an unregistered trademark
This is defined under Section 27 of the Act, which states that no infringement will be found with respect to an unregistered trademark but recognises the trademark owner's common law rights to sue anyone who passes off their goods or services as their own, as well as the remedies available.
Passing off is a type of tort law that can be used to enforce unregistered trademark rights. The passing off law prohibits one person from misrepresenting another person's goods or services. In the course of time, the inspiration for passing off has changed. It was originally limited to the representation of one person's goods to another. It was later expanded to include business and non-trading activities. As a result, it was also accelerated for professions and non-trading movements.
It is now used to address a variety of unfair trading and unfair competitor situations in which one person's actions cause harm to another. The central question in this tort is whether the defendant's actions deceive or mislead the general public, causing confusion between the two industries' activities.
Difference between passing off and infringement
The penalties for passing off are not the same as the penalties for infringement. The infringement claim is a legal remedy, whereas the passing off claim is a common law remedy. As a result, all that is required to establish infringement in the case of a registered trademark is to show that the infringing mark is identical to or deceptively similar to the certified mark. Proving that the marks are identical or deceptively similar is insufficient in a passing off claim.
The mark should be used in a way that is likely to mislead or cause confusion. Furthermore, in a passing off claim, it is necessary to establish that the defendant's use of the trademark is likely to cause injury or damage to the plaintiff's goodwill. In contrast, in an infringement suit, the defendant's use of the mark must not cause the plaintiff any harm. When a trademark is registered, however, the Registration is limited to a specific category of goods. As a result, only these goods receive protection. In a passing off case, the defendant's goods do not have to be identical; they can be different.
Regardless, trademark registration under the Act is only valid in India. It is necessary to register a trademark in order to obtain trademark rights and protection in other countries. The nature of trademark protection is regional. Every country where protection is desired will require a single registration. To obtain protection outside of India, applications must be submitted for each country separately.
Furthermore, Registration in a country should be completed before you begin using the trademark in that country. In some countries, such as China, Japan, Continental Europe, and Indonesia, the rights to a trademark are granted to the first person who applies for Registration, rather than the first person who uses the trademark. As a result, even if the trademark is being used for the first time, a third party could legitimately take it by filing a trademark application.
Scope of trademark:
Every online business has a domain name with a unique address in cyberspace. Companies now have websites because producers and consumers are far away, and every company is global. The internet has also become a vital marketing tool. Because IP numbers are difficult to remember, they created the Domain Name System. The domain name will help an internet user find the goods or services they seek. For example, Tata, Google, and Maruti are all trademarked names. A website or domain name is visited via a URL.
Cybercrime is the misuse of another party's trademark as a domain name. A domain name must be related to the product and unique. A website's domain name should be unique. No two domain names may be identical due to high distinctiveness.
This is a non-traditional trademark. Due to the lack of a physical representation, registering these types of trademarks is difficult. It is difficult to register this type of trademark due to its high distinctiveness, such as the smell of a perfume strawberry, etc. If a graphical representation of the smell mark is provided, it will be accepted. However, this provision is only in place in a few countries. The trademark Smell is copyright protected. In some cases, a scent is a commodity in and of itself, while in others, it is a scent used or attached to the commodity rather than the natural smell of the product.
A sound can be both trademarked and registered. A sound mark is a sound or a theme that has a unique identifying effect. Music owned by Hemglass is a well-known sound mark. When applying for a sound mark, the mark can be expressed in the form of a sound file or a precise notation description of the sound.
The ability to distinguish one product from another ensures that customers are not confused by similar products. As long as the shape of the goods is not functional, it can be registered as a trademark. If a shape affects the product's use or performance, it's working.
If the shape of a product does not provide superior performance or if the shape has become associated with the public and the manufacturer, it can be used as a trademark. When a product's shape isn't functional, it can be registered as a trademark. As a result, if a shape is more delicate than useful in everyday life and serves no purpose, it can be registered.
Important Case Laws:
- Mohd. Iqbal v. Mohd. Wasim – The Court held that it is widely accepted that 'bidis' are used by the poorer, illiterate, or semi-literate classes. They don't have a lot of knowledge. It is unrealistic to expect them to comprehend the subtle differences between the two labels that can be detected by comparing the two labels. Given the previous, the two labels appear to have a deceptive resemblance.
- Hardie trading Ltd. v. Addison paint and chemicals Ltd. – The Supreme Court gave a broader interpretation of trademark usage, saying that it could be non-physical and that there was no reason to limit the user's ability to use the trademark on goods or to sell goods bearing the trademark.
- Hearst company v.Dalal avenue verbal exchange Ltd. – The Court ruled that a trademark is infringed when a character uses a mark that is identical to or deceptively similar to the trademark in relation to the goods for which the trademark is registered in the course of business. The use of the mark by such a person must be done in a more likely way to be interpreted as a trademark.
- Woodlands Travels and Agencies v. K. Vasudeva Rao and anr. –The Madras High Court ruled that a mark cannot become distinctive after only a few days of use. To qualify for Registration under Section 9, the mark must have acquired distinctiveness through long use, not just one year prior to application.
- Consolidated Foods Corporation v. Brandon and Company Private Ltd. – The Bombay High Court stated that a mark doesn't need to have been used for a significant period to claim such proprietorship. A casual, intermittent, or experimental use of the mark may not be enough to establish an intention to use it as a trade mark for a specific article or set of goods.
- East End Hosiery Mills Pvt. Ltd. v. Agarwal Textile Mills – Another notable observation by the Calcutta High Court in the case was that there could be no hard and fast rule stating that any specific minimum period of time is required to acquire distinctiveness. In some cases, the time it takes to develop uniqueness is longer than in others.
- ITC Ltd. v. Britannia Industries – The Delhi High Court has clarified the principle of the term of use by ruling that it is not necessary for a product to be in the market for a certain number of years to acquire secondary meaning. It's possible for a new idea to become a hit overnight if it's intriguing and appealing to consumers.
- Corn Products Refining Co. v. Shangrila Food Products Ltd. – It was noted that the principle of similarity could not be applied too strictly and that if it could be shown prima facie that the defendant had a dishonest intention in passing off goods, an injunction should ordinarily follow, and that the mere delay in bringing the matter to Court was not a reason to dismiss the plaintiff's case.
- Amritdhara Pharmacy Vs Satya Deo Gupta – In this case, the Supreme Court stated that to determine the connection between two words related to an infringement action, two words must be deceptively similar. And judge them by their looks and sounds. The goods to which they are to be used must be considered. The nature and type of customer who is likely to buy those goods must be considered. Consider the surrounding circumstances and what is likely to happen if each of those trademarks is used in common ways as a trademark for the goods of their respective owners. They concluded that there would be confusion after considering all the factors. If there is a mess in the public's mind that leads to confusion in the goods, then the Registration may be refused.
- American Home Products Corpn. Vs. Lupin Laboratories Ltd. –When it comes to infringement of a registered trademark, the Court stated that it is well-established law. It's critical to understand the distinction between a search for infringement and passing off the trial. In a passing-off action, the courts appear to be looking for deception, whereas in an infringement case, it is important to remember that the Trademark Act grants the owner an exclusive right to use the mark, which will be infringed in the case of indistinguishable marks, and infringement can still occur in the case of related marks even if there is deception.
- Satyam Infoway Ltd. Vs Sifynet Solutions (P) Ltd. –The Court determined that in order to pursue a claim for passing off, three elements must be established:
i. The purpose of a Passing Off trial, as the term implies, is to prevent the defendant from passing off its goods or services to the public as the plaintiffs. It is a claim to protect the public as well as the plaintiff's status. The defendant must have traded goods or services in a way that misled or misled the public into believing the defendant's goods or services are the plaintiffs.
ii. The second element that the plaintiff must establish is a public misconception by the defendant that the defendant's goods or services are the plaintiff's goods or services. The Court must consider the possibility of 'imperfect recollection of a person or ordinary memory'.
iii. Loss, or the possibility of loss, is the third element of passing-off action.
- Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories– The Supreme Court ruled that the plaintiff must prove that the defendant's trademark was used in the course of trade in the goods for which his mark is registered deceptively similar in order to bring an infringement action.
- Atlas Cycle Industries Ltd. v. Hind Cycles Limited – The plaintiff may establish that its trademark is identical with or so closely resembles the plaintiff's work, either visually, phonetically, or otherwise, that it is likely to deceive or cause confusion in relation to the case in which the plaintiff got his mark registered, according to the Delhi High Court. Thus, if the defendant adopted the plaintiff's trade mark's essential features, the fact that the defendant's mark has some additional features that show marked differences is irrelevant in an infringement action.
- Thomas Bear and Sons (India) v. Prayag Narain – The Bombay High Court held that the test for determining the likelihood of deception is not whether the ignorant, thoughtless, or incautious purchaser is likely to be misled, but instead whether the average purchaser buying with ordinary caution is likely to be deceived.
- James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd. –The Supreme Court held that in an action alleging infringement of a registered trade mark, the Court must first determine whether the defendant's impugned mark is identical to the plaintiff's registered mark. If the mark is found to be identical, no further questions arise, and infringement must be determined. Suppose the defendant's mark is not identical to the plaintiff's. In that case, it must be determined whether the defendant's mark is deceptively similar in the sense that it is likely to deceive or cause confusion in relation to the goods for which the plaintiff's mark was registered. The two marks must be compared for this purpose.
- S. Syed Mohideen v. P. Sulochana Bai – According to the Supreme Court, a passing off right is a broader remedy than infringement. This is because the passing off doctrine is based on the general principle that no one has the right to represent their own business as a business. Other than registered rights, which are allocated rights under the Act, the said action in deceit is maintainable for various reasons.