WELL-KNOWN TRADEMARKS: A DETAILED ANALYSIS

6.6 Fundamentals of Intellectual Property Law

Submitted to:

Dr. Partha Pratim Medhi

Submitted by:

Uditanshu Misra

SM0117057

III year; VI semester

National Law University, Assam

 Table of Contents
INTRODUCTION.......................................................................................................................................3
Scope & Objectives.................................................................................................................................4
Literature Review....................................................................................................................................4
Research Questions.................................................................................................................................5
Research Methodology............................................................................................................................5
CONCEPT OF A WELL-KNOWN TRADEMARK AND NEED TO PROTECT IT................................6
‘REPUTATION’-AN ESSENTIAL ELEMENT OF A WELL-KNOWN MARK......................................8
PROTECTION GIVEN TO WELL-KNOWN TRADEMARKS AT INTERNATIONAL LEVEL AND
IN INDIA..................................................................................................................................................10
PROTECTION OF WELL-KNOWN MARKS UNDER THE OLD INDIAN TRADE MARK STATUTE
.................................................................................................................................................................. 11
PROTECTION GIVEN TO WELL-KNOWN TRADEMARKS IN INDIA UNDER THE TM ACT 1999
.................................................................................................................................................................. 13
REMEDIES WITH THE OWNER OF A WELL-KNOWN TRADEMARK............................................15
AN ACTION FOR PASSING OFF...........................................................................................................15
ACTION FOR INFRINGEMENT.............................................................................................................16
RELIEFS ON AN ACTION FOR PASSING OFF OR INFRINGEMENT...............................................19
DISTINCTION BETWEEN A PASSING OFF ACTION AND AN INFRINGEMENT ACTION..........19
REMEDY IN CASE OF A DOMAIN NAME DISPUTE.........................................................................21
JUDICIAL APPROACH TOWARDS WELL-KNOWN MARKS...........................................................23
TRENDS IN THE INDIAN JUDICIARY.................................................................................................23
DOMAIN NAME DISPUTES..................................................................................................................24
SOME CIRCUMSTANCES IN WHICH A WELL-KNOWN MARK MAY NOT BE PROTECTED.....25
DEFENSE OF HONEST CONCURRENT USER....................................................................................25
CONCLUSION.........................................................................................................................................27
BIBLIOGRAPHY.....................................................................................................................................29
 INTRODUCTION
Intellectual Property Rights can generally be considered as specie of intangible property. Its
protection has for several centuries formed the foundation of secure prosperity in most modern
political systems, and is found at the base of most flourishing industries of today.The trademark
of an enterprise is its most valuable intangible property in this competitive environment which
needs to be protected at all times from rival companies and new comers in the market.

“Well-known trademark in relation to any goods or services, 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”

A trademark is well-known or not, eligible for larger protection or not is left to be determined by
national authorities. Thus a trademark may be a well-known trademark in one country if it is so
accepted by its authorities and it may not so be recognized by the authorities of another country.

Earlier the expression well-known was mostly used by courts, authors and other experts as a
matter of ordinary English usage to refer to a trademark which is known more in the traders or
consumers but gradually it became necessary to make a distinction between the usage of the
word in ordinary vocabulary in contrast to its use as a technical expression.

Today, well-known trademarks are worthy of special protection under the law because of their
brand value but which mark qualify to be well-known and on what criteria the judges give
protection to a mark is an issue as ‘in the realm of trademarks, attaining the status of a well-
known mark is perhaps akin to attaining nirvana because the protection of well-known mark
transcends the traditional standards and objectives of trademark protection’ 1.Among the various
characteristics of a well-known trademark, the important one is its great amount of publicity
which gives it a distinctive repute and recognition among the public making it a subject of
greater protection in comparison to an ordinary trademark.

1
Nai R. Latha, Tracking the Protection of Well-Known Marks in India: A Befuddled Path to Nirvana? 101 The
Trademark Reporter, 1419 (2011).
 Scope & Objectives
The purpose of the paper is to examine the concept of well known trademarks. This analysis will
in turn help in overcoming the present loopholes of the laws and strengthening and regulating
future formulation of laws.

The Objectives of the paper would be to examine:

 Concept of a Well-known Trademark and Need to Protect it.

 Protection Given to Well-known Trademarks on an International Level and in India.
 Remedies with the owner of a Well-known Trademark.
 Judicial Approach towards Well Known Trademarks.

Literature Review
Rama Sarma, Commentary on Intellectual Property Laws, Vol I and II, 3rd Edition, 2009,
LexisNexis Butterworths Wadhwa Publications, Gurgaon

This book provides a comprehensive, authoritative and lucid treatment of the subject,
compressing in its volume a vast amount of essential information. The work touches upon and
explains many grey areas in intellectual property law. It covers all the aspects of trademark laws
including India and abroad and provides an insight on the development of the IP laws.

R. Venkatakrishnan, Law relating to Trademarks and Passing Off, Volume I, 2ndEdition,

2015, LexisNexis Publications, Gurgaon
The book combines carefully selected extracts from key cases, articles, and other sources with
detailed commentary and explanation. An essential text while studying the development of the
intellectual property law. Rather than simply presenting IP law as a straight forward body of
legal rules, this engaging, critical text considers the subject as an expression of various
international treaties and conventions through the previous years and other policy concerns,
which eventually led to the development of IP law.

Jacqueline D. Lipton, Comparative Clarity: Trademark Infringement and Advertising,

Houston Law Review, 2014
This article offers an account of the formation of the discipline of comparative advertising with a
view to identifying its essential character, explaining its particular modes of operation, and
specifying its unique task. Building on that framework, it also elucidates, how this slowly and
well emerging trend of advertising work, more often, comes in conflict with the original/inspired
works and how the issues raised are handled in an Intellectual Property infringement scenario.

Research Questions
1. What is meant by the Well Known Trademarks?
2. How is Protection Given to Well-known Trademarks on an International Level and in
India?
3. What are the remedies with the owner of a Well-known Trademark?
4. What is the Judicial Approach towards Well Known Trademarks?

Research Methodology
The Research design would follow the doctrinal type of research. Data collection would be
secondary, through the various websites, journals, articles, magazines and books related to IPR
and Law. Data would be analysed by using tabulations. The research project adopted is causal
research which indicates that the test on cause and effect relationship will be considered with
reference to the cause of comparative advertisement and its effect on trademark infringement.
 CONCEPT OF A WELL-KNOWN TRADEMARK AND NEED TO PROTECT IT.

What Is A Well-Known Trademark?

“Well-known trademark in relation to any goods or services, 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.”2

The very concept of well-known trademark has been incorporated in the Trade Marks Act 1999
for the purpose of protecting not only a trademark which has come to be identified with a
particular type 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 trademark in
relation to the first mentioned goods or services.3

Determination Of A Well-Known Trademark

In India, a registrar may determine that a mark is well-known or not on the basis of any fact
which he considers relevant. The determination criteria is dealt with in sections 11(6) to 11(9) of
the TM Act,1999.

The registrar while determining that a mark is a well-known mark or not can take into account
the following factors:4

1. The knowledge or recognition of that trademark in the relevant section of the public
including knowledge in India obtained as a result of promotion of the trademark
2. The duration, extent and geographical area of any use of that trademark

2
Section 2 (1) (zg), The Trade Marks Act, 1999 (Act 47 of 1999).
3
Ahuja V.K , Intellectual Property Rights in India, Lexis Nexis ButterworthsWadhwa, Nagpur,1st edition,2009,457.
4
Section 11 (6), The Trade Marks Act, 1999 (Act 47 of 1999).
 3. The duration, extent and geographical area of any promotion of the trademark including
advertising or publicity and presentation at fairs or exhibition of the goods or services to
which the trademark applies
4. The duration and geographical area of any registration of or any application for
registration of that trademark under this act to the extent they reflect the use or
recognition of the trade mark
5. The record of successful enforcement of the rights in that trademark, in particular, the
extent to which the trademark has been recognized as a well-known trademark by any
court or registrar under that record.
The Registrar in order to determine whether the trademark is recognized in the relevant
section of the public shall take into account the following factors:5

1. The number of actual or potential consumers of the goods or services

2. The number of persons involved in the channels of distribution of the goods or
services
3. The business circle dealing with the goods or services, to which the trademark applies

The Registrar shall also take into account whether 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. 6The onus
is on the proprietor of the mark to establish by evidence that the mark is well-known.

Indication of origin is an important function of the trademark which is of primary importance to

the consumer or end user and also to the intermediaries who deal with the product commercially.

In general, the perception of consumers or end users will play a decisive role. It is obvious that
the number of actual or potential consumers of goods or services to which the well-known mark
is applied would vary considerably, depending on the nature of goods or services. The term
consumer has to be understood in a broad sense.

Therefore the statute does not obviously intend to require the registrar to take a physical count of
the actual or potential number of consumers of such goods or services. It is actually the
concerned section of users of those goods or services which appear to be relevant.

5
S 11(7), The TM Act , 1999 (Act 47 of 1999).
6
S 11(8), The TM Act , 1999 (Act 47 of 1999).
The channels of distribution of goods or services also vary depending upon their nature. The
emergence of supermarkets, mail order service and e-commerce has significantly changed the
market and distribution channels. Modern marketing has replaced to a large extent the traditional
specialized shop marketing. Services such as hair dressing and catering are also provided by
other super markets engaged in retail sale .Therefore the survey among consumers shopping in
supermarkets alone may not be a good indicator to ascertain the relevant section of the public.7

The factor of the business circles dealing with the goods or services would include importers,
wholesalers, franchisees and other persons dealing with the goods or services to which the mark
applies.There are some factors which the registrar is mandated by section 11(9) not to require in
a well-known trademark. Those factors are as follows:

1. The trademark has been used in India

2. The trade mark has been registered
3. The application for registration of the trade mark has been filed in India
4. The trademark is well-known in, or has been registered in, or in respect of which an
application for registration has been n in any jurisdiction other than India
5. The trademark is well-known to the public at large in India

‘REPUTATION’-AN ESSENTIAL ELEMENT OF A WELL-KNOWN MARK

Reputation In A Mark

The only way in which a person can acquire reputation in a mark, name or any other sign is by
using it in connection with his business or goods .The precise extent of use required depends on
the nature of the particular mark, name or any sign or symbol and of the business or goods
concerned. The plaintiff’s reputation does not have to extend throughout the country and may be
restricted to a particular locality when the business establishment concerned is of a precise
location.

7
Dr.Venkateswaran S, Venkateswaran on Trade Marks and Passing Off , LexisNexis ButterworthsWadhwa, Nagpur,
5th edition, 2010,584.
Even if a mark is not registered or used in a particular country, it may still have an international
reputation and goodwill among the general public. For e.g.: if a mark is used only in U.S and is
registered only in the U.S but it may still have a reputation in India and use of a similar or
identical mark in India may deceive the public that the particular mark is associated to the mark
used and registered in the U.S.A.

The first case in which the concept of cross border reputation was recognized is Whirlpool
v.N.RDongre8where it was seen that though the mark ‘Whirlpool’ was not registered in India,
the use of the mark whirlpool by the defendant would still cause likelihood of confusion that the
mark of the defendant is associated to the plaintiff’s mark whirlpool which has an international
reputation.

8
56 (1994) DLT 304.
 PROTECTION GIVEN TO WELL-KNOWN TRADEMARKS AT INTERNATIONAL
LEVEL AND IN INDIA

Protection Given To Well-Known Trademarks At An International Level

PARIS CONVENTION

One of the oldest international treaties relating to intellectual property, including trademarks, is
the Paris Convention for the Protection of Industrial Property (“Paris Convention”), of which
Canada, the United States and the United Kingdom are members. The issue as to how to protect
a mark registered in one country from being adopted by another person in another country was
first discussed in 1911 at the Washington Diplomatic Conference for the Revision of the Paris
Convention.

TRIPS AGREEMENT

The scope of Article 6bis of the Paris Convention was extended to include services by virtue of
Article 16(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS
Agreement). Article 16 and in particular 16(1) and (2) of the TRIPS Agreement contain
obligation on the member states to give effective protection to well-known marks. Specifically it
mandates compliance with the provisions of Article 6 of the Paris Convention, which contains
detailed rules for protection of well-known marks. Article 16(3) provides that “Article 6 of the
Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar
to those in respect of which a trademark is registered,provided that the use of that trademark in
relation to those goods or services and the owner of the registered trademark and provided that
the interests of the owner of the registered mark are likely to be damaged by such use. This
provision casts a further obligation on member states to protect well-known marks in respect of
non-similar goods or services as well, thus extending the scope of obligation under Paris
Convention which seeks to protect well-known marks in respect of identical or similar
goods/services.9
9
Dr.Venkateswaran S, Venkateswaran on Trade Marks and Passing Off , LexisNexis ButterworthsWadhwa, Nagpur,
5th edition, 2010, p. 560.
WIPO JOINT RECOMMENDATION

Immediately after the conclusion of the TRIPS Agreement in 1995, WIPO initiated activity in
conjunction with the Paris Union concerning the protection of well-known marks. The focus of
this effort was directed to developing criteria for determining whether a mark is well-known.
This resulted in a Joint Recommendation Concerning Provisions on the Protection of Well-
Known Marks.

Joint Recommendation adopted in September 1999 by consensus of the General Assembly of

WIPO and the Assembly of the Paris Union. The Joint Recommendation is meant to address
some of the gaps in the protection afforded well-known marks conferred under Article 6bis of
the Paris Convention and Article 16(2) of the TRIPS Agreement.

Although the Joint Recommendation does not have legislative force, it is nevertheless an
interesting indicator of the potential direction of supranational law in this area.

PROTECTION OF WELL-KNOWN MARKS UNDER THE OLD INDIAN TRADE

MARK STATUTE
Before the enactment of the TM Act 1999 i.e. the present act, the statute governing trademarks in
India was the TMM Act. The TM Act came into force in September 2003. Prior to that date,
well-known marks were protected under Section 47 of the TMM Act, which provided for
defensive registration of well-known marks as well as passing-off actions.

Section 47(1) of the TMM Act read:

‘Where a trade mark consisting of any invented word has become so well-known as respects any
goods in relation to which it is registered and has been used, that the use thereof in relation to
other goods would be likely to be taken as indicating a connection in the course of trade between
those goods and a person entitled to use the trade mark in relation to the first mentioned goods,
then, notwithstanding that the proprietor registered in respect of the first-mentioned goods does
not use or propose to use the trade mark in relation to those other goods and notwithstanding
anything in Section 46, the mark may, on application in the prescribed manner by such
proprietor, be registered in his name in respect of those other goods as a defensive trade mark
and while so registered, shall not be liable to be taken off the register in respect of those goods
under the said section.’

The test for eligibility for defensive registration of a well-known mark under Section 47(1) was
whether the use of the mark in connection with goods other than the registered goods or goods in
use would likely be perceived as indicating a connection in the course of trade between such
goods and the well-known mark’s proprietor. In other words, likelihood of deception was the
decisive factor in determining whether a well-known mark was eligible for registration under this
section. Owners of well-known marks often availed themselves of this provision by registering
their marks either in all classes or in selected classes of interest. Registration under this section.
Owners of well-known marks often availed themselves of this provision by registering their
marks either in all classes or in selected classes of interest.

However, even without a defensive registration, Indian courts have upheld rights in several well-
known marks asserted by trademark owners through passing-off actions. These court decisions
and India’s international obligations to implement protection of well-known marks led to the
codification of the well-known marks provisions under the TM Act. Before examining the TM
Act, it is important to review some of the court decisions under the old statute, the TMM Act,
which are considered milestones in the evolution of Indian case law on well-known marks and
paved the way for its codification under the new statute.

In Sunder Parmanand v Caltex10, an application for registration of trade mark “CALTEX” in

respect of chorological and chronometric instruments was refused registration, allowing an
appeal against the decision of the Registrar, even though the opponents mark “CALTEX” was
well-known only in respect of petroleum products.

PROTECTION GIVEN TO WELL-KNOWN TRADEMARKS IN INDIA UNDER THE

TM ACT 1999
When the TM Act became effective in September 2003, the protection of well-known marks
acquired a new hue in India. The TM Act contains some essential provisions relating to well-
known trademarks.

10
AIR 1969 Bom 24.
Section 2(1)(zg) uses, in part, language that is closely similar to that used by Section 47 of the
TMM Act to outline the parameters for defensive registration of a well-known mark. The
substance of Section 2(1)(zg) lies in the portion dealing with the use of a plaintiff’s mark in
connection with other goods or services that 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.”

Section 11 Of The TM Act 1999

Further in respect to well-known trademarks, Section 11 deals very elaborately the facts to be
considered and the methods to be adopted by the registrar in protecting what is called a well-
known trademark, whether the proprietor is an Indian or a foreigner, against copying of such
marks by others and at the same time protecting the interests of the applicants for registration of
marks adopted by them bonafide in good faith and of the registered proprietor who has registered
the mark in good faith.

Section 11(2) provides for registration being refused on the basis of an earlier trademark defined
in sub section (4).It has been held that where the opponent relies on proprietorship of more than
one earlier trademark, the registrability of the applicant’s mark must be considered against each
of the opponents earlier trademarks separately.11

Section11 (10) Of the TM Act 1999

Section 11 (10) directs the Registrar to protect a well-known trademark against the identical or
similar trademarks while considering an application for registration and opposition filed in
respect thereof. He is also directed to take into consideration the bad faith involved either of the
applicant or the opponent affecting the right relating to the trademark.

Bad faith in section 11(10)

A provision of great consequence in conformity with international practice and requirements of

article 6bis of the Paris Convention is found in sub-clause (ii) of section 11(10).The registrar is
directed to take into consideration the bad faith of the applicant or the opponent affecting the
right relating to the trademark while considering an application for registration or opposition
11
1999 RPC 362.
thereof. Under Paris Convention, if a mark which is in conflict with a well-known trademark is
registered in bad faith, then there is no time limit for its cancellation. In the Indian Act, the last
line of section 33 achieves the same result when the limitation of 5 years of acquiescence is not
applicable on the trademarks registered in bad faith.

Section 29(4) Of The Trade Marks Act,1999

A registered trademark 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
similar to the registered trademark and is used in relation to goods or services which are not
similar to those for which the trademark is registered and the registered trademark 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 trademark.12

The further extension of rights in relation to use of a mark on different goods or services in
section 29(4) addresses the requirements of article 16 of TRIPS .

12
Section 29(4), The TM Act 1999 (Act 47 of 1999).
 REMEDIES WITH THE OWNER OF A WELL-KNOWN TRADEMARK

AN ACTION FOR PASSING OFF

What Is The Law Of Passing Off?

The law of passing off is to protect some form of property, usually the goodwill of the plaintiff in
his business or his goods or his services or in the work which he produces or something of that
kind.

The goodwill of the business is ordinarily represented by a mark, name, get up or other badge.
Passing Off is a form of tort. The substantive law of passing off is almost entirely based on
common law i.e. case law.

Passing off is not defined in the Act, it is referred to in sections 27(2),134(1)( c) and 135.

Section 27(2) states that the rights of action against any person for passing off goods as the
goods of another person or the remedies in respect thereof are unaffected by the provisions of the
Act. Section 134(1)( c) refers to jurisdiction of courts to try suits for passing off arising out of the
use of any trademark. Section 135 specifies the remedies available in respect of passing off
arising from the use of a trade mark.

The essential characteristics which must be present in order to create a valid cause of action for
passing off as stated by Lord Diplock13 are:

 Misrepresentation
 Made by a person in the course of trade
 To prospective customers of his or ultimate consumers of goods or services supplied by
him
 Which is calculated to injure the business or goodwill of another trader
 Which causes actual damage to a business or goodwill of the trader by whom the action is
brought or in a quiatimet action will probably do so.
13
ErvenWarnink v Townend ,1980 RPC 31 at 93.
The issue in a passing off action may be stated as follows:

Would the user of the defendants, either the actual user provided in evidence or the proposed
user conceded for the purposes of the action, be likely to lead persons, either members of the
trade or of the public, to suppose that the defendants’ goods so sold were the product of the
plaintiffs, or that the business concerned in its production was the plaintiffs’ or was associated
with the plaintiffs’ business.14

ACTION FOR INFRINGEMENT

What Is Infringement?

Any person trespassing on the rights conferred by registration of a trademark infringes the
trademark. The rights conferred by registration in a particular case must be determined in the
context of any restrictive conditions or limitations entered on the register. In precise terms, in
order to constitute an infringement the act complained of must fulfil the following
requirements15:

 the mark used by the person must be either identical with or deceptively similar to the
registered trademark
 the goods or services in respect of which it is used must be specifically covered by the
registration
 the use made of the mark must be in the course of trade in areas covered by the
registration
 the use must be in such manner as to render it likely to be taken as being use as a
trademark
 the defendant should not be a permitted user under section 2(1)(r) which includes both
registered user and unregistered user.
These conditions are necessary and sufficient for establishing infringement.

14
Showerings v Bulmer 1956 RPC 307 at 308.
15
Naraynan P, Law of Trade Marks and Passing-Off, Eastern Law House, Calcutta, 5th edition, 2000, p.286.
However under s.29 the following uses constitute infringement, if such use is likely to cause
confusion among the public or likely to have an association with the registered mark:

 Identical mark used in relation to similar goods or services

 Similar mark used in relation to identical or similar goods or services
 Identical mark used in relation to identical goods or services.

A registered trademark is infringed by a person if he uses the mark as his trade name, or name of
his business concern dealing in goods or services in respect of which the trademark is registered.
A registered trademark is also infringed by a person who applies the mark to a material intended
for use in labelling or packing goods, as a business paper, or for advertising goods or services if
he knew that the application of the mark was not duly authorized.

It is an infringement of the mark to use the mark in advertising:

 which takes unfair advantage and is contrary to honest practice in industrial or

commercial matters or
 is detrimental to its distinctive character
 is against the reputation of the mark
A mark may be infringed by the spoken use of words which constitute distinctive elements of a
registered mark as well as by their visual representations.

An action for infringement of a registered trademark must be instituted by way of a suit in any
court not inferior to a district court having jurisdiction to try the suit.16The enforcement of any
other right relating to a registered trademark is also by way of a suit.17

Applicability of CPC

The jurisdiction of the court for the purpose of infringement suit is governed by the provisions of
the CPC.

16
Sec 134, TM Act, 1999 (Act 47 of 1999).
17
Sec 1344(b),TM Act, 1999 (Act 47 of 1999).
The cause of action must have arisen in a place within the jurisdiction of the court where the suit
is to be filed. The court in the district where the superior goods were sent for sale on a
commercial scale has jurisdiction to entertain the suit. Supply of goods by the defendant to
individual purchasers for use is not sufficient. Actual sale not necessary. 18Publication of the
advertisement of the mark is sufficient. 19But mere publication of an advertisement in a local
newspaper outside the jurisdiction which has no circulation with the jurisdiction of the court is
not sufficient.20

The question of jurisdiction being a mixed question of fact and law cannot be decided at the
interlocutory stage. If the plaintiff has pleaded the necessary facts in the plaint to invoke
territorial jurisdiction, that is sufficient.21The cause of action in a case of passing off would arise
only when the defendant uses the impugned trademark. The object of action for infringement and
passing off is to protect the trademark owner’s goodwill. Goodwill is deemed effected or injured
if the defendant markets his goods under the impugned mark. Therefore, the mere advertisement
in the Trademarks Journal or preferring of application or even the registration of a trademark at a
particular place cannot confer jurisdiction, since it cannot amount to cause of action.

There has to be necessarily be some objective facts and minimal material (termed as existence of
‘commercial sales’ by the Supreme Court in Dhodha House) to enable a court to exercise
jurisdiction.

Infringement of a registered trademark carried on from time to time would give recurring cause
of action to the holder of the trademark to make a grievance about the same and similarity such
impugned passing off also would give a recurring cause of action to the plaintiff to make a
grievance about the same and to seek appropriate relief from the court. Hence in such cases, the
bar of Order 2,Rule 2,sub rule (3) of CPC cannot be invoked.22

Period of Limitation

18
Bhagwandas v. Watkins Mayor, AIR 1947 Lah 289.
19
Javahar v Javahar, (1979) 3 IPLR 199 at 203.
20
Chandra Bhan v. Bharat Sewing ,AIR 1982 Del 230 at 231.
21
John Richard Brady v. Chemical Process Equipments, AIR 1987 Del 372 at 377.
22
Bengal Waterproof v. Bombay Waterproof ,(1977) IPLR 231.
Under the Limitation Act 1963, the period of limitation for filing a suit for injunction to restrain
the infringement of a trademark is three years from the date of infringement. Where the
infringement is a continuing one, a new cause of action arises de die in Diem and therefore an
action will always lie in respect of any fresh wrong.23

RELIEFS ON AN ACTION FOR PASSING OFF OR INFRINGEMENT

Injunction

The party who has infringed the mark of a person or has used a similar mark causing
misrepresentation to the origin of goods is restrained to use the same or similar mark in future for
the same and connected goods. In case of a well-known trademark, generally, an injunction order
is passed against the defendant party to restrain them to use the same or similar mark for any
kind of goods.

Damages or Account of Profits

Damages and Account of profits are alternative remedies. The owner of the mark can claim
damages for the loss suffered by him due to the use of the same or similar mark as of the plaintiff
by the defendant or either he can claim account of profits made by the defendant i.e, the profit
that the defendant has made by using the mark of the plaintiff or a similar mark as that of the
plaintiff’s. The plaintiff can ask for share in such profit.

DISTINCTION BETWEEN A PASSING OFF ACTION AND AN INFRINGEMENT

ACTION
The broad purpose of an action for passing off and an infringement action is the same, namely to
protect industrial property and to prevent a particular type of deception of the public.

An action for infringement is based on the exclusive right to the use of a trademark in relation to
certain goods conferred by registration on the proprietor of the mark. The exclusive right is
infringed if a person uses in relation to the same goods a trademark which is identical with or is a
23
Amrutanjan v. Mehta, (1977) 2 IPLR 20 at 38.
colourable imitation of registered trademark. The property sought to be protected is the exclusive
right to the use of the registered trademark which is precisely defined by statute.24

On the other hand, the object of a passing off action is to restrain a trader from passing off his
goods as and for the goods of another trader. Misrepresentation by the use of a mark, name or get
up or even direct misrepresentation without infringement of any trademark comes within the
ambit of a passing off action. Passing off in a sense is a generalized form of infringement. The
property sought to be protected is wider in extent, while the deception sought to be prevented is
not confined to the use of a rival’s registered trademark.

An infringement action is based on the violation of a proprietary right and it is immaterial

whether or not that violation is of such a nature as to cause deception or as to be capable of
causing deception whereas a passing off action is solely based on deception and in order to
succeed deception, deception or likelihood of deception must be established.25

In DurgaDutt v. Navratna Laboratories26, the Supreme Court held: While an action for passing
off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a
person of his own goods as those of another, that is not the gist of an action for infringement.
The action for infringement is a statutory remedy conferred on the registered proprietor of a
registered trademark for the vindication of the exclusive right to the use of the mark in relation to
those goods. The use by the defendant of the trademark of the plaintiff is not essential in an
action for passing off, but is the sine qua non in the case of an action for infringement.

The Court further pointed out that in an action for infringement, the plaintiff must ,no doubt,
make out that the use of the defendant’s mark was likely to deceive, but where the similarity
between the plaintiff’s and the defendant’s mark was likely to deceive , but where the similarity
between the plaintiff’s and the defendant’s mark was so close either visually, phonetically or
otherwise and the court reached the conclusion that there was an imitation , no further evidence
was required to establish that the plaintiff’s rights were violated. Expressed in another way, if the
essential features of the trademark of the plaintiff had been adopted by the defendant, the fact

24
Koul A.K, Ahuja V.K, The Law of Intellectual Property Rights: in prospect and retrospect, Faculty of law,
University of Delhi, New Delhi, 1st edition,2001, p. 604.
25
J.B Stone &Co.Ld. v. Steelace Mfg. Co. Ld., (1929) 46 RPC 406 at.416 .
26
AIR 1965 SC 980.
that the get up, packing and other writing or marks on the goods or on the packets in which he
offer his goods for sale showed marked differences, or indicated clearly a trade origin different
from that of the registered proprietor of the mark would be immaterial, whereas in the case of
passing off, the defendant may escape liability if he could show that the added matter was
sufficient to distinguish his goods from those of the plaintiff.

REMEDY IN CASE OF A DOMAIN NAME DISPUTE

Uniform Dispute Resolution Policy (UDRP)

An alternative to the court system for domain name dispute resolution has recently emerged. It is
the dispute resolution mechanism setup by ICANN. The ICANN has laid down a Uniform
Dispute Resolution Policy (UDRP) and has framed rules there under for resolution of these

Disputes globally (this is presently limited to the <.com>,<.org> and <.net> domains).

This framework is binding on anyone who registers a domain name in these domains as they
agree to submit it to the jurisdiction of the ICANN.

The UDRP provides that ICANN will cancel, transfer or otherwise make changes to domain
name registrations only under the following circumstances:

 On receipt of written or appropriate electronic instructions from the registrants or its

authorized agent to take such action
 On receipt of an order from a court or arbitral tribunal, in each case of competent
jurisdiction, requiring such action, and/or
 On receipt of a decision of an ICANN authorized Administrative Panel requiring such
action in any administrative proceeding to which the registrant was a party.
The policy is especially useful in case of abusive registration of domain names, e.g. cyber
squatting as it establishes a Mandatory Administrative Procedure for settling disputes of ‘bad
faith’ registration of domain names.
Registrants are required to submit to these proceeding, conducted before one of the following
administrative dispute resolution service providers each of which have their own supplemental
rules:

 CPR Institute for Dispute Resolution

 Disputes.org/e-Resolution Consortium
 The National Arbitration Forum
 World Intellectual Property Organization (WIPO).

Remedy of Passing Off With Respect To Domain Names

As far as India is concerned, there is no legislation which explicitly refers to dispute resolution in
connection with domain names. But although the operation of the Trade Marks Act, 1999 itself is
not extra-territorial and may not allow for adequate protection of domain names, this does not
mean that domain names are not to be legally protected to the extent possible under the laws
relating to passing off.

The different High Courts have also applied the law relating to passing off to domain names.

In Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd,27 the Supreme Court was considering the
issue of whether the principles of trademark law and in particular those relating to passing off
apply to domain name. The court held at pp 150-151 that an action for passing off, as the phrase
‘passing off’ itself suggests, is to restrain the defendant from passing off its goods or services to
the public as that of the plaintiff’s.It is an action not only to preserve the reputation of the
plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its
services in a manner which has deceived or would be likely to deceive the public into thinking
that the defendant’s goods or services are the plaintiff’s.

27
(2004) 6 SCC 145.
 JUDICIAL APPROACH TOWARDS WELL-KNOWN MARKS
In India, protection to well-known trademarks is given more importance as compared to ordinary
trademarks. Formerly, this protection was given by way of common law formulations like
passing off.

For example, in Daimler Benz Akietgesellschaft v Hybo Hindustan28, the manufacturers of

Mercedes Benz sought an injunction against the defendants who were using the famous ‘three
pointed star in the circle’ and the word ‘Benz’. The Court granted injunction against the
defendants who were using these marks for selling apparel.

Similarly, in Whirlpool Co &Anr v N R Dongre 29, the plaintiff, Whirlpool had not subsequently
registered their trademark after the registration of the same in 1977.At the relevant time, the
plaintiff had a worldwide reputation and used to sell their machines in the US embassy in India
and also advertised in a number of international magazines having circulation in India. However,
the defendant started using the mark on its washing machines. After an action was brought
against them, the Court held that the plaintiff had an established ‘trans-border reputation’ in
India and hence the defendants were injected from using the same for their products.

TRENDS IN THE INDIAN JUDICIARY

Judicial Attitude On Well-Known Descriptive Names

It has often been a matter of intense debate as to whether a ‘descriptive name’ has acquired a
‘secondary meaning’ or not; so as to accord greater protection to the mark. But in the recent case
of Cadila Healthcare Ltd v Gujarat Co-operative Milk Marketing Federation Ltd and Ors 30,
the court clearlyexplained the two facets of a ‘descriptive name’. It said that a word can be
descriptive in two ways, i.e. ‘descriptive in meaning’ and ‘descriptive in understanding’ because
what a particular thing means and what it is generally understood to be, are two different aspects
altogether. In this case, the plaintiffs were engaged in the manufacturing of some sugar
substituting products under the names ‘sugar free natura’, ‘sugar free gold’ and ‘sugar free d'lite’
28
AIR 1994 Del 239.
29
1996 PTC 415 Del.
30
2008 36 PTC 168 Del.
and they tried to restrain the defendants from using the words ‘sugar free’ for selling frozen
desserts. The court observed that although the plaintiff’s words‘sugar free’ have acquired
distinctive meaning despite being descriptive in nature, the defendants, nevertheless, can be
allowed to use these words in descriptive and laudatory sense for their products. The Court,
while dismissing the suit, held: ‘Inasmuch as a sweetener is known to exist only when added to
foods and beverages, its identity in terms of its functional utility is quite dissolved or
metamorphosed in the foods and beverages to which it is added. Thus, the expression ‘sugar
free’, when used in relation to a sweetener/sugar substitute, may not really describe a sweetener
in the sense of its generic meaning, nevertheless, it connotes the specific nature and
characteristic of the foods and beverages to which it is added.

Judicial Attitude On Famous Common Names Of Persons

In AB Textiles case31, the well-known electronic goods company, Sony, opposed the registration
of the mark ‘ABT Sony’ for textiles. But the court, while accepting the ‘well-known’ status of
the opponents, held that since ‘Sony’ is a common feminine name in India and the fields and
trade-channels of operation of both these parties are different, there would be no likelihood of
deception in the minds of the public.

DOMAIN NAME DISPUTES

Judicial Approach In Trademark Infringement Cases When Mark Used In The Domain
Name

In order to establish trademark infringement in the cases where a trademark has been used by
another in the domain name, the traditional approach of finding likelihood of confusion has been
adopted by courts, and further various principles have been laid down by courts:

Mere registration of well-known trademark as domain name could give rise to liability for
passing off. In appropriate circumstances, registration of a domain name can itself constitute an
instrument of deception or fraud, leading to the liability for passing off.32

31
AB Textiles v. Sony Corporation,2007 (35) PTC 288.
32
British Telecommunications plc v. One in a Million Ltd., [1999] 1 WLR 903.
If the domain name owner uses its site to promote or offer goods or services confusingly similar
to those offered by a trademark owner with prior rights and the domain name and mark are
confusingly similar, the trademark owner can bring an action for infringement just as it would for
any act of infringement.33The use of another’s trademark in the domain name is allowed where
the domain name itself does not give rise to confusion.

Due to the peculiar nature of the domain name system, identical names cannot exist. In such type
of cases both the parties have historical connection to a mark and find themselves confronted
with a domain name conflict. Subject to any dilution claims that a senior user may have, it has
been the tendency of courts in such cases to find no likelihood of confusion where both the
parties have historical connection to mark and they operate in different industries.34

SOME CIRCUMSTANCES IN WHICH A WELL-KNOWN MARK MAY NOT BE

PROTECTED
Though well-known trademarks are suitably protected, there are certain circumstances when they
may not be protected. For example, though mere delay in filing an opposition against the
infringing mark may be condoned by the courts but if the trademark owner has delayed the
application for opposition or rectification of a trademark against another party despite having
knowledge that the latter is using the same trademark, the former loses such a claim. A case in
point is Khoday Distilleries Limited (now known as Khoday India Limited) v The Scotch
Whisky Association and Ors35, where the Supreme Court observed that the respondents did not
have any reason to adduce as to why they did not pursue the case against appellant for a span of
14 years even though they were aware of the registration of trademark ‘Peter scot’ in favour of
appellant. It was held that the class of buyers which is supposed to know the value of money, the
quality and content of Scotch whisky is supposed to be aware of the difference of the process of
manufacture, the place of manufacture and their origin; and thus there is no likelihood of
confusion.

33
Broofield Communications Inc v. West Coast Entertainment Corp., 174 F 3d 1036 (9th Circuit,1999).
34
Deborah Howitt, War.com: Why the battles over domain names will never cease?, Hastings Communications and
Entertainment Law Journal, 19 (719) (1997) 728-738.
35
AIR 2008 SC 2737.
 DEFENSE OF HONEST CONCURRENT USER
Judicial Attitude

The trademark law, in several jurisdictions allows the trademark of an honest and concurrent
user to co-exist with another similar mark. In fact, the defence of honest concurrent user came
into being through two cases. Firstly, the case of Dent v Turpin 36 determined that two users of a
mark (which had derived from a common predecessor) had a separate right to obtain an
injunction against a third person using the mark.

Secondly, in Southorn v Reynolds37, the Dent case was relied on to come to a conclusion on very
similar facts. But it is worth noting that neither of these two cases was related to dispute between
concurrent users. The courts in these two cases were not protecting the exclusive property rights
but restraining a person from misrepresenting his goods as those of another.

In Lowenbrau AG and Anr v Jagpin Breweries Ltdand Anr 38, the plaintiffs Lowenbrau AG and
the defendants Lowenbrau Buttenheim, both incorporated in Germany were involved in the
dispute over the usage of the word ‘Lowenbrau’ for their beer in India. It was observed by the
Court that the word ‘Lowenbrau’ means ‘lion’s drink’ and had also been used by many other
beer manufacturers in Germany for a substantial time, thereby making this word synonymous
with beer of German origin and source.

Moreover, the plaintiffs did not pursue any legal action against the defendants for a long time as
both of them were involved in their business in other countries as well. It was a perfect case of
the word ‘Lowenbrau’ having become public juris or a generic word, and acquiescence of the
same. After taking into consideration the high volume of sales of defendants’ products, the Court
did not find merit in grant of injunction in favour of the plaintiffs and thus, allowed the defence
of honest concurrent user in favour of defendants along with damages to the tune of Rs 20,000.

36
1861 2 J & H 139 70 ER 1003.
37
1865 12 LT 75.
38
I.A Nos. 11355/2007 and 13772/2007 in CS (OS) No 1810 of 2007, Delhi HC (14 January 2009).
 CONCLUSION

Well-known trademark is a mark which has become distinctive among the relevant section of the
public to the extent that the use of a same or similar mark other than the owner of the well-
known mark will cause confusion in the minds of the public that the latter mark is connected to
the former well-known mark. The essence of a well-known mark lies in its reputation in the
consumers and general public. A well-known mark or a well-known brand due to its reputation
creates a psychological connection with the consumers and it is this reputation of a well-known
mark which becomes a root of unfair trade practices. Rival traders and the new entrants in the
market often tries to imitate a well-known brand name in order to create the same psychological
connection with the public that the particular well-known mark has, in order to establish
themselves in the market.

The trend of imitating a well-known mark is a menace today and a major problem for the owners
of a well-known mark as they suffer harm to their reputation and losses in their revenue.We have
already discussed many cases where a well-known trademark was imitated or a similar
trademark was used in the course of trade by a person other than the owner of a well-known
mark. Thus, we see that there is a need to protect the well-known trademark in order to prevent
unfair competition and unfair trade practices and in order to maintain the uniqueness of the mark
which can be spoiled if there is dilution or garnishment of a well-known trademark.

Many rival traders try to take undue benefit of the reputation of a well-known mark by adopting
the same or a similar mark. The imitation of well-known mark has become a major concern
today for the proprietors as the use of their mark by any other person is harm to their reputation
and will amount to unjust enrichment of their reputation which they may have built through long
and extensive use or through heavy publicity. In no case, a later trademark should take advantage
of an earlier trademark while operating in the market. There should not be any circumstance
which would allow a later trademark to take any fair advantage of the earlier trademark. If
proprietor of a later trademark structures his affairs in such a manner as to take advantage of
another mark, it is considered unfair and the advantage would always be deemed to be without
cause.
Today well-known trademarks enjoy special protection under the law because of their ‘brand
value’.Over the years, the law has changed so much that a trademark owner can oppose a
deceptively similar trademark even at the stage of latter’s registration.
 BIBLIOGRAPHY

 Kailasam K C, VedaramanRamu, Law of Trade Marks & Geographical

Indications,Wadhwa and Company, Nagpur, 2nd edition, 2005.
 Kumar Bansal Ashwini, Law of Trademarks in India, Cliptrade and Institute of
Constitutional and parliamentary studies, New Delhi, updated edition, 2009.
 Dinwoodie, Graeme B and Janis, D. Mark., Trademarks and Unfair Competition, Aspen
Publishers, Newyork, 1st edition, 2004.
 Naraynan P, Naraynan on Trade Marks and Passing-Off, Eastern Law House, Calcutta,
3rd edition, 1981.
 Kumar Choudhary, Vivek, ‘Protection of well-known trademarks and weakening of
honest concurrent user defense’, 15 Journal of Intellectual Property Rights, 293-301,
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to Nirvana?’, 101 The Trademark Reporter,1419-1446 ,2011.
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