I. Define Mark. Explain the essentials of Trade Mark.

What are the essential features of Trade Mark? Explain the different types of Trade
Marks.

INTRODUCTION

 A trademark is any sign that individualises the goods of a given enterprise and
distinguishes them from goods of its competitors.
 Marketing of a particular good or service by the producer is much better off as by
trademark because recognition becomes easier and quality is assured.
 The owner of the mark can prevent the use of similar or identical signs by competitors if
such marks can lead to confusion.
 By this way similar low quality substitutes will be prevented from replacing good quality
ones.
 In Cadbury India Limited And Ors. vs Neeraj Food Products, the court laid down the
purpose of “trademark” that Trademark is a mark used to protect traders and the
consumers against malafide use/adoption of another’s well-known trademark to deceive
the general public to avail unfruitful benefits in the market.

MEANING AND DEFINITION

 A trademark is the characteristics or combinations of characteristics capable of

distinguishing the goods and/or services of one enterprise from those of other enterprises.
 Trademarks fall under the ambit of intellectual property rights and are protected by
national and international laws.
 Examples of trademarks include the Nike “Swoosh” symbol, the arched M for
McDonald’s or the bitten apple symbol for Apple computers, etc.
 According to Sec.2 (m) of Trademarks Act, 1999
“Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging or combination of colours or any combination thereof.

 According to Sec. 2 (zb) of Trademarks Act,1999

“Trade Mark” means a mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person from those of others and may
include shape of goods, their packaging and combination of colours.

EVOLUTION OF TRADEMARK IN INDIA

 India borrowed the British Trademark Act, 1938 and prepared the first Act on the subject
as Trademark Act of 1940. Independent India molded the Trade & Merchandise Mark
Act, 1958.
 The Act is now operative as Trademark Act, 1999 which came into force with effect
from 30th day of December 1999.

FUNCTIONS OF TRADEMARK

 It identifies the product and its origin.

 It guarantees its quality.
 It advertises the product.
 It creates an image of the product in the minds of the public particularly consumers or the
prospective consumers of such goods.

ESSENTIALS OF TRADEMARK (elaborate)

 It should be a mark

 It should be capable of being represented graphically

 It should be capable of distinguishing the goods and services of one person from
others
In the case of Imperial Tobacco v. Registrar, Trademarks, the word distinctiveness was
held to be some quality in the trade mark which earmarked the goods marked as distinct
from those of the other products or such goods.

 It may include shape of goods, their packaging and combination of colours

 It must be used or proposed to be used in relation to goods or services

 The use must be for the purpose of indicating a connection between goods or
services and the proprietor.

OBJECTIVE AND FEATURES OF TRADEMARK

Protection of Constitutional Rights

 Article 19 of the Indian constitution provides for freedom of trade and movement.

Protecting the Basic Rights of Traders

 One of the major objectives of trademark law is to protect the registered trademarks from
being misrepresented or used by unauthorised users for any commercial benefits.
 TM Registration in India allows its exclusive use to the owner of the trademark. The law
also allows a registered owner to share or assign the trademark.

Protecting Counterfeiting and Duplicating

 Often the quality of some great products and services deteriorates due to the duplicity of
such products.
 Some famous and popular products are duplicated by unauthorised users.
 This leads to financial, as well as the social loss for the original creator.
 Due to the infiltration of duplicated products the general public loses faith in the original
products and their reputation.
 The trademark law protects such infringement to protect the larger public interest.

Compliance with International Treaties

 India is obliged to protect its Intellectual Property Rights, as it is a signatory to various
important international treaties like the Trade-Related Aspects of Intellectual Property
Rights (TRIPS).

KINDS OF TRADEMARK

1. Word Mark
 A word mark can be a word, a letter, or a number.
 Exclusive rights are granted to owners of word marks, letters, or numbers.
 The portrayal of the mark is not owned by anyone.

2. Device Marks
 Device marks are trademarks that depict words, letters, or numbers in a distinctive way.

3. Service Marks
 A service mark is simply a mark that identifies one person’s services from those of
another. Service marks do not represent items, but rather the services provided by an
individual or corporation.

4. Collective Marks:
 A collective mark is defined as that which educates the audience about a certain attribute
of the product for which they are employed. Such marks are owned by an association, a
governmental institution, or corporate. Collective marks are also used to market certain
items that have qualities which are distinctive to the manufacturer in a given location.

5. Certification Marks:
 A certification trade mark under Section 2 (1)(e) of the Trademarks Act, 1999, reassures
customers that the product fits specified parameters.
 Toys, electronics, food items jewellery, etc for example, have similar markings that
reflect the product’s safety and quality. It is said that the certification mark is unique
from the collective mark in that it can be used by anybody who fulfills the given criteria.

6. Well-known Marks
 Section 11(9) requires a request to declare a mark as a well-known trademark that is
easily recognized by the mass of people. People are not allowed to register or use marks
that are copied from well-known marks.

7. Unconventional Trademarks
 Unconventional trademarks include the following categories:

i. Colour Trademark: If a particular color has become a distinctive feature indicating the
goods of a specific trader, it can be registered as a trademark. For example, Red Wine.

ii. Sound Marks: Signs that are perceived by hearing and distinguishable by their distinctive
and exclusive sound can be registered as sound marks. For example, Musical notes
iii. Shape Marks: When the shape of goods or packaging has some distinctive feature, it can
be registered. For example, Ornamental Lamps.

iv. Smell Marks: When the smell is distinctive and cannot be mistaken for an associated
product, it can be registered as a smell mark. For example, Perfumes.
Case Law : L’Oréal vs. Bellure
 This case involved a number of products that smell like famous luxury branded
perfumes.
 The Defendants marketed the products by use of comparison lists, showing which of
their products smelt like each famous product and referencing the famous marks.
 The question was whether the use of the comparison lists infringed L’Oréal's trade marks
and whether such comparisons were protected as permissible comparative advertising.
 The Court of Appeal concluded that it did and therefore, reluctantly (and expressly so),
had to find in favour of L’Oréal.

8. Generic Mark
 Generic marks represent the everyday descriptions of a product or its seller.
 These could be common words such as “shoes,” “watch”, or “food”.
 But since these words belong to the public, a restaurant, for instance, cannot register a
trademark for the term “restaurant.”

9. Suggestive Mark
 Merely the broad strokes. More specific, and therefore more protective, trademarks
require a proportionate level of ingenuity to qualify.
 As a case in point, suggestive Marks register words that imply qualities of a product
without necessarily relating to it in a literal sense.

10. Descriptive Mark

 While the generic mark may represent a product or its provider, a Descriptive Mark
applies solely to the merchandise.

11. Arbitrary Mark

 An Arbitrary Mark pulls words or phrases from the vernacular. However, these words
should be entirely unrelated to the products they signify.
 Take Apple, for example, a brand named after a fruit. It sells electronic products

12. Fanciful Mark

 This kind of trademark is indeed the easiest one to register.
 It only requires a new word that does not presently hold any meaning to the general
public.
 Albeit easier to file, fanciful marks require informed forethought, too.
II. What are the grounds on which the registration of Trade Mark may be refused?
Explain the grounds for refusal for registration of a Trade Mark. ***
Examine the grounds of refusal of registration of Trade Mark.

INTRODUCTION
MEANING AND DEFINITION
FUNCTION

GROUNDS FOR REFUSAL OF TRADEMARKS

 The proprietor of a trademark must not only use but also register the trademark, failing
which a suit for infringement cannot be filed.
 Therefore, in order to acquire effective trademark rights, registration, as well as the use
of the said trademark in relation to the particular goods/services, is essential.
 The Trade Marks Act, 1999 does not specifically prescribe the grounds or conditions on
the satisfaction of which a trademark will be granted registration.
 However, it prescribes the grounds for refusal of registration of trademarks.
 The grounds for refusal of registration of a trademark can be dealt under two categories
under the Act,

 Absolute grounds for refusal of registration (Section 9)

 Relative Grounds for refusal of registration (Section 11)

I. ABSOLUTE GROUND FOR REFUSAL OF REGISTRATION

Section 9 (1) of the Trade Mark Act, 1999 lists the following grounds being absolute
grounds for refusal of a Trade Mark, as below:

1.Such Trade Marks which are devoid of any distinctive character, that is to say, not
capable of distinguishing the goods or services of one person from those of another.
 The purpose is to show that all the goods and services bearing a Trademark have
originated from under the control of a single undertaking, responsible for its quality.
 In the case, the Imperial Tobacco Co. of India Ltd vs. Registrar of Trademarks,
Tobacco company with the label “Simla”, the registration was refused as the word
entailed a famous geographical place which cannot be registered as a trademark.

2. Trade Mark which consist exclusively of such marks or indications which may serve in
trade to designate the kind, quality, quantity, intended purpose, values, geographical origin
or the time of production of the goods or rendering services or other characteristics of the
goods or services
 This clause restraints registration of marks that pertain to be descriptive (rendering
information of the product directly), and identifies characteristics of the product or
service.
 In the case of M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of
TradeMarks, it was held that the mark “RASOI” associated with edible oil cannot be
categorized as registered mark as this is indicative of the nature of the product.
3.Such Trade Marks which consist exclusively of marks or indications which have become
customary in the current language or in the bonafide or established practices of the trade.
 However, a Trade Mark shall not be refused registration if before the date of application
for registration it has acquired a distinctive character as a result of the use made of it or if
it is already a well-known Trade Mark.
 The case SBL Ltd v. Himalayan Drug Company states that nobody can claim exclusive
right over the use of any word, acronym or abbreviation which is merely a public Juris.
In the present case, the registration of the word “Liv” was refused as the word was
generic in nature in addition to accounting public Juris. This clause is not just confined to
words but also colour combinations and cannot be monopolised.

Section 9(2) : A mark also shall not be registered as a trade mark if

 If the trademark tends to deceive the public or cause any confusion
 If it hurt the religious susceptibilities of any class or sections of citizens of India.
 If it comprises or contains scandalous or obscene matter.
 If its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act,
1950.

Section 9(3) : A mark also shall not be registered as a trade mark if

 It consists exclusively of—
a. the shape of goods which results from the nature of the goods themselves; or
b. the shape of goods which is necessary to obtain a technical result; or
c. the shape which gives substantial value to the goods.

II. RELATIVE GROUNDS FOR REFUSAL OF REGISTRATION

Section 11 of the Trade Mark Act, 1999 lays down that a mark shall not be registered
as Trademark

Section 11(1)
If there exists a possibility of misunderstanding on behalf of public due to its identical nature
of the earlier trademark, and the goods/service are comparable.

Section 11(2)
A Trade Mark shall not be registered if the earlier Trade Mark is well known Trade Mark in
India and the later mark to be registered for goods and services not similar to the earlier
registered mark would take unfair advantage of the earlier mark or would be detrimental to
the distinctive character or repute of the earlier Trade Marks.

Section 11(3)
A trade mark shall not be registered if its use in India is liable to be prevented by virtue of
any law in particular the law of passing off protecting an unregistered trade mark, or by
virtue of law of copyright.
Section 11(4)
However, if the proprietor of the earlier Trade Mark or proprietor of other earlier right
consents to the registration of the later TradeMark, the same may be registered by the
Registrar.
Section 11(5)
However, a Trade Mark shall not be refused registration on the above grounds unless
objections raised under sub section 2 and 3 in the opposition proceedings by the proprietor of
the earlier Trade Mark.

III. Explain the procedure for the Registration of Trade Mark under Trade Mark Act,
1999. *
What is Mark? What are the various steps for registration of Trade Mark?
INTRODUCTION
MEANING
DEFINITON
FUNCTIONS

REGISTRATION OF TRADEMARK
 Trademarks are jurisdictional rights and like any other tangible assets, its also tangible in
nature like, it can be licensed, sold, and purchased and can also be utilized as a security
to obtain loan.
 Hence, such a tangible asset needs protection to keep acquiring economic benefits as
long as the owner of such a mark wishes to.
A registered trademark gives exclusive identity to one's business and also safeguards
their brand reputation.
 A trademark after registration can be used for 10 years before its renewal and hence, as
long as the owner keeps renewing it on time, it can be used as long as the business of the
trademark owner is alive.
Only a registered trademark can file an infringement suit against any third party infringer
who tries to infringe or pass off their own goods and or services by utilizing the
reputation and the goodwill of another person's registered trademark.
 The cost and time for registration of a trademark has ben reduced and also it is a one time
expense.
 Now, the time required for registration ranges from 6 to 12 months and once its
registered, it will remain valid for next 10 years.

STEPS FOR REGISTRATION OF TRADEMARK

Step 1: Trademark Search

 This step is very crucial before filing for trademark registration because conducting a
detailed search will help a trademark owner to know whether their trademark is unique
and distinct in nature and also check whether there is any similar or identical mark
already existing or not.
 The trademark owner will get to know whether they have any existing competition in the
same trade or not, since, all the existing trademarks are available with the Trademark
Registry.
 Conducting a search gives a warning that whether the owner will have any risk of using
that trademark or is it safe.

Step 2: Filing an Application

 After conducting a search, comes the process of filing the application for registration.
 The application must be filed in Form TM-A either online from the IP India's official
website or physically at the Trademark Registry Office according to one's jurisdiction.
 The application must be filed for registration of a single mark only in a single class of
goods and or services or in multi-class, and the fees will be calculated for each class
included in the application.
 The application must be backed up with the required documents, along with complete
details of the trademark.
 Once the application is filed, an official receipt is immediately issued for future
reference.

Step 3: Examination Process

 Once the application is filed, it will be thoroughly examined by the Registrar and they
will prepare an examination in writing and will send a copy of it to the applicant within
30 days to let them know whether the Registry wants to refuse or conditionally accept the
application and shall also include the materials by which he came to such a decision.
 The applicant within 30 days from receiving the examination report, must file a reply,
stating all the defenses along with evidences against the objection raised by the
trademark office and the owner shall put forward the reasons as to why their application
should not be refused and must be proceeded for further registration procedures.
 If the applicant fails to reply within the above mentioned time frame, the application will
be abandoned.

Step 4: Post Examination Procedures

 Once the applicant files the reply to the examination report, the Examiner if wants can
arrange a hearing if due to any reason he/she is not satisfied with the reply sent by the
applicant or if, the reply is not able to fulfill the purpose of the objection stated in the
report.
 After the hearing process, if the examiner is fully satisfied, can accept the mark and
forward it for publication in the Trademark Journal or can refuse the application if any
objection is still there.

Step 5: Publication of the Trademark Application

 After the examiner has accepted the application, it will be published in the Trademark
Journal which will remain there for 4 months.
 Advertisement of such an application is done so that within the time period stated above,
any third party can see it and if they want can file an opposition against the applicant.
 Every Monday the Journal is updated with new accepted trademark applications.

Step 6: Notice of Opposition

 Within 4 months from the date of publication of the application, any aggrieved party can
file a notice of opposition in Form TM-O.
 When any third party feels that their already existing and prior use trademark has been
infringed by the applicant, or the application is made in bad faith and if such a trademark
is registered, it will harm the the reputation and good will associated with the prior
trademark of the third party.
 Notice of opposition will halt the registration process and the opposed mark of the
applicant according to the Trademark Act, 1999, and the applicant have to go through
certain legal procedures if they wants to continue with the registration of the same mark,
which includes filing a counter- statement, submitting evidence in reference to that
counter statement and in some cases it is seen that the applicant have to go through
hearing as well.

Step 7: Registration

 The last step in the registration procedure is to get the certificate of registration. After the
mark goes through all the legal processes related to the opposition, and if the opposition
is cleared, the applicant will receive the certificate.
 In case where there is no opposition or any false opposition filed, after 4 months of
publication period is over, within 7 days an auto- generated registration certificate will be
issued to the applicant by the trademark registry office which needs to be renewed after
every 10 years for keeping it alive.

IV. 1. What is Infringement of Trade Mark? Discuss the remedies available for
Infringement.
2. Discuss the various legal reliefs against infringement of Trade Marks. What are the
defenses available to defendant in an infringement suit?

INTRODUCTION
MEANING AND DEFINITON

INFRINGEMENT

 A registered trademark is infringed by a person who is not being a registered proprietor

or a person using by way of permitted use in the course of trade, a mark which is
identical with or deceptively similar to the trademark in relation to goods or services in
respect of which the trademark is registered.
 Basically, Trademark infringement means the unapproved use of a trademark regarding
products and benefits in a way that is going to cause confusion, difficulty, about the
trader or potentially benefits.
 Offenses, penalties and procedure explained under section 101- 121 of TM Act, 1999.

TYPES OF TRADEMARK INFRINGEMENT

There are two types of Trademark Infringement:

1. Direct infringement (Section 29)

 Few elements of Section 29 are-

i. Use by unauthorised person
ii. Identical or similar trademark
iii. Registered trademark
iv. Similar class of good and service

2.Indirect infringement

 Unlike direct infringement, there is no provision in the Act that deals with indirect
infringement specifically.
 This does not mean that there is no liability for indirect infringement.

Vicarious liability
 According to Section 114 of the Act, if a company commits an offence under this Act,
then the whole company will be liable.
 The elements for vicarious liability are:-
i. When the person can control the activities of the principal infringer
ii. When the person knows of the infringement and contributes to it
iii. When the person may derive financial gains from the infringement

Contributory infringement
 There are only three basic elements to contributory infringement-
i. When the person knows of the infringement
ii. When the person materially contributes to the direct infringement
iii. When the person induces the principal infringer to commit infringement.
 In the case of contributory infringement, there is no exception as there exists no chance
of the contributory infringer to act in good faith. (Amritdhara Pharmacy Vs Satya Deo
Gupta)

REMEDIES

It is Section 29 and Section 30 of the Trade Marks Act, 1999 which lays down remedies for
infringement of trademarks.

CIVIL REMEDIES

 The Trade Marks Act, 1999 lays down certain civil remedies to be given to the ones
whose trademark has been infringed. They are:

1. Injunction
 The Plaintiff may seek following forms of injunction during the suit of infringement:
i. Anton Piller Order
ii. Mareva Injunction; and
iii. Norwich Pharmacal Order

2. Damages can be claimed by the aggrieved party

3. Accounts of Profit

1. INJUNCTION

i. Mareva Injunction

 Injunctions that restrain the Defendant from removing assets from the jurisdiction or
dealing with or parting with the assets in such a way as to render the execution of the
decree if given in favor of the Plaintiff.
 It is granted to maintain status quo till the Court adjudicates upon the rights and liabilities
of the parties.
 Mareva injunction is mainly used to aid in the recovery of debts so as to help the creditor
by preventing the debtor from absconding or disposing of his assets overseas.
 In addition, it is also used to protect the right of the party to receive compensation in
cases of breach of the contract specifically, when the liability is mentioned in the contract
itself.
 Mareva Injunction gets its name from the case of Mareva Compania Naviera SA v
International Bulkcarriers SA.
 The Court of Appeal granted an injunction to the Plaintiffs on an ex-parte application,
through which the Defendants were restricted from parting with their money in Bank of
London, so as to settle the claims of the Plaintiff in case they were able to prove the
same.
 There are a few conditions, which need to be satisfied
  The Plaintiff needs to have a legal or an equitable right justiciable in Court. Evidence
needs to be shown that the Defendant is trying to dispose of his assets so as to defeat
the Judgement.
 In case the injunction is not granted, it would cause an irreparable loss to the Plaintiff.
 The balance of convenience should lie with the Plaintiff.
 Any other factors, which may play a material role. Eg: public interest.

ii. Anton Piller Order

 Anton Piller orders are a form of civil search warrants that help preserve evidence. The
aggrieved approaches the Court in an urgency and seeks inspection and raid of the
premises of the alleged wrongdoer without prior notice, in order to find and preserve
evidence that it believes would otherwise be destroyed.
 A Court Commissioner can be appointed by this ex-parte order to visit the defendant’s
premises and search and seize the infringing goods.
 In order to maintain the element of surprise and ensure preservation of requisite
evidence, the order is passed without hearing the alleged wrongdoer or the opposite
party.
 Anton Piller order allows the Plaintiff to enter the property of the Defendant without his
permission.
 However, the Defendant under the pressure of the Court order gives this permission
because the failure to give the permission will enable contempt of Court proceedings,
and also empower the Court to draw adverse inferences.
 The Anton Piller Order was first issued in the case, Anton Piller KG vs Manufacturing
Process.
 The Court in the above case also laid down the following factors which are to be taken
into consideration while issuing the Anton Piller Orders:
 There must be strong prima- facie case in favour of the Plaintiff;
 Damage, potential or actual, must be of serious nature;
 There must be presence of clear evidence that the Defendants have in their possession
incriminating documents or things and that there exists a possibility that they may
destroy such evidence before any other legal action is taken against them;
 The passing of such order, should do no harm to the Defendant or his case.

iii. Norwich Pharmacal Order

 The most common reasons for its use is for the identification of the best Defendant, or as
a way to obtain information in order to back up a claim.
 To explain this Order in simple terms, it is an order from a Court to disclose documents
or information that is available in the United Kingdom.
 This Order first came around when it was granted in 1974 by the House of Lords in the
case of Norwich Pharmacal Co. v Customs and Excise Commissioners, a case
concerning the alleged violation of a Patent by unknown importers of the chemical
subject to that particular patent.
 The Norwich Pharmacal Order is granted against a third party to force them to disclose
relevant information and documents if they have been innocuously mixed up in the issue
at hand.
 By bringing such individuals to notice, the possibility of the documents and information
required to be disclosed is increased, if not definite.
 When an Applicant initiates legal proceedings against others who are believed to have
been a part of wrongdoing detrimental to the Applicant, these documents help the Court
to decide its verdict.

2. DAMAGES CLAIMED.

 Damages can be claimed by the aggrieved party on grounds that the exclusive right of
using the trademark he owns has been ceased and this subsequently has led to him or his
enterprise suffering losses.

3. ACCOUNTS OF PROFIT

 A civil remedy that is often claimed is handling of the profit accounts along with a
command for delivery or removal of the products that have been infringed

CRIMINAL REMEDIES
 If we take a look at the Trade Marks Act,1999, it can be viewed that there are several
provisions that can be counted as a criminal remedy for the infringement of trademark.
The following are laid down below:

1. Sections 103 of the Act lays down criminal remedy for the contravention of the
trademark of any individual or entity which lays down a period of six months of
imprisonment which can be extended till a time frame of three years for infringing
trademark rights.
2. Section 104 of the Act talks about penalties that need to be provided as a sanction
against an infringement. The section mentions a fine of fifty thousand rupees
which can be increased till an extent of two lakhs in case someone is found to
transgress the trademark rights.
3. An inflating version of punishment is laid down under Section 105 of the same
Act.
4. A seizure of powers of the person liable for infringing can be carried out as a
criminal remedy for an efficient adaptation to the above provisions. This
procedure carried out by police is subjected to reasonable grounds of proving the
infringement only.

SHORT NOTES

DECEPTIVE SIMILARITY
Section 2(1)(h) of the Trade Marks Act, 1999 defines the term “deceptively similar” as “A
mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that
other mark as to be likely to deceive or cause confusion”. It means that if an identifier of a
business is so similar to an already established trademark that it will result in the consumers
getting confused between the two brands, then it will be termed deceptively similar.

In the case of M/s Mahashian Di Hatti Ltd. v. Mr. Raj Niwas, the logos of both the spice
producing companies were the same with the only difference being that the plaintiff’s logo
said “MDH” and that of the respondent said “MHS”. Delhi High Court, while passing an
infringement order against the defendant’s use of the logo, said that both the logos were
deceptively similar. Despite the similarity in the name or logo, what is an important criterion
for holding something deceptively similar is the industry or the consumer base in which both
the businesses function. The trademarks are assessed on the basis of whether the similarity is
such that the consumers can get confused between the two.

MEHER DISTILLERIES PVT.LTD VS SG WORLDWIDE INC. AND ANR.

 The plaintiff, Meher Distilleries sued the defendant, Radico Khaitan on grounds of
selling its single malt whiskey under the name “RAMPUR ASĀVA” which (as it claims)
is similar to its own trademark, “THE ASWA”.
 The defendants argued that their trademark is taken from the Sanskrit term for any
alcoholic beverage or fermented drink as opposed to the plaintiff’s trademark which is
derived from the name of a village in Maharashtra, named Aswa.
 After listening to both sides, a single judge bench held that they are not deceptively
similar and refused to grant an interim injunction.
 The judge refused to grant the interim order primarily on the ground that “ASWA” and
“ASĀVA” are not visually or phonetically similar because of the defendant’s use of the
word “RAMPUR”.
 The primary argument of the defendant was that “RAMPUR” is the main brand under
which it sells its products and “ASĀVA” is only a sub-brand.
 Therefore, if read together, “RAMPUR ASĀVA” could not be considered as deceptively
similar to “ASWA”.
 However, the decision was challenged by the plaintiff’s and the Division Bench set aside
the previous order and referred the case back for reconsideration.

Rationale of the Court

“ASĀVA” is a Trademark
 The division bench rightly looked at it from the lens of consumers in saying that even if
the word “ASĀVA” was being used to indicate the sub-brand, it was a trademark
because it distinguished that particular product from the others sold by the defendants.
 In that case, as observed in Hem Corporation v. ITC, the seller’s intention does not
matter as long as the mark is practically functioning as a trademark in the sense that
consumers are distinguishing the product on the basis of that mark.
 Therefore, “ASĀVA” was held to be a trademark.
 Division bench furthered that reasoning by saying that even though the word “ASĀVA”
is taken from the Sanskrit language and means an alcoholic or fermented drink, it cannot
be considered a generic descriptive word.
 This is because the consumer’s perception of that word is not the same as that of the
seller’s in the case of lesser-known archaic words.
 Most people who purchase that single malt do not read “ASĀVA” as “fermented
alcoholic beverage”.
 Instead, they look at it as a word descriptive of that particular whiskey, which makes it
an even stronger assertion of the trademark.

“ASĀVA” and “ASWA” are Deceptively Similar

 The division bench corrected its position on it by pointing out the similarity from the
perspective of the consumers.
 It said that the phonetic impact of the mark must be assessed by the first impression it
makes on the mind of the consumer.
 As it was established that the average consumer would be unaware of the meaning or
pronunciation of the word “ASĀVA” and thus, will pronounce it in a manner that sounds
very similar to the word “ASWA”.
 Hence, both the words being phonetically similar, create confusion in the mind of the
consumer between both the brands.

INTENTION TO DECEIVE IS NOT NECESSARY

 In Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd., it was held that the
plaintiff was not required to prove the defendant’s fraudulent intent, and it was not
required as such.
 Furthermore, once a defendant’s reputation has been established, plaintiffs do not need to
prove fraudulent intent or misrepresentation on the part of the defendants.

STANDARDS FOR DETERMINATION OF DECEPTIVE SIMILARITY

 The Hon’ble Supreme Court has long ago set the standards for determining deceptive
similarity in 2001 in the case of Cadila Healthcare Ltd v. Cadila Pharmaceutical
Limited.
 In this case, the court laid out certain rules for this purpose.
 The court said that while deciding if the marks are misleading, one should consider the
following points-
 The nature of goods or services that the mark is concerned with.
 The level of similarity that both the marks have.
 The consumer base that the business serves.
 The nature of the mark- whether it is a word, symbol, or phrase.

BIGTREE ENTERTAINMENT V BRAIN SEED SPORTAINMENT:

 The Delhi High Court denied the Plaintiffs, proprietors, and owners of the website
bookmyshow.com; an interim injunction against Defendant’s use of the domain
bookmysports.com.
 The court held that prefix ‘BOOKMY’ of the Plaintiff’s trademark BOOKMYSHOW
was descriptive and not an arbitrary coupling of words and the Plaintiff’s failure to prove
that ‘BOOKMY’ has attained distinctiveness or secondary meaning, led to the dismissal
of the application for interim injunction led by the Plaintiffs.

DOMAIN NAME

 Technically, domain names are essential keywords of the internet infrastructure which
provides a human-readable address on a web server.
 Generally, domain names are formed by the combination of domain name systems
(DNS) which is administered by ICANN.

 Any name can be registered under DNS to become a domain name.

 Domain names are user-friendly names that are easily identifiable, remembered and help
to distinguish one website/web address from another’s website/web address.

 Since they are easily remembered, they are being used as business identifiers and are
being used to attract potential customers to their websites. For example Lawsikho.com

 In the case of Bombay High Court in People Interactive (India) Pvt. Ltd. vs. Vivek
Pahwa & Ors, the court gave a proper definition of the term “domain name” that a
“domain name” is the territorial address of a business on the internet where, it directs a
user to a particular part of the web where the particular domain name of the registrant
stores and display all the necessary information, offers and service available on the
internet.

 Domain name performs the same functions as that of a trademark.

 A domain name serves the same functions online that a trademark performs offline in
business dealings and transactions.

 A trademark is a graphic signifier of the company product or service, while the domain
name is a navigator of the company on the internet and the virtual image of the business.

 A registered and protected trademark and the domain name offers the following benefits:
 A trademark protects and promotes the brand name, while a registered domain
name protects unauthorised use by any entity or person.
 Trademark supports the face value of a profession or business, while a domain
name increases the contact value of the business from any remote place of the
world.
 A trademark makes a product or service prominent in the market, while a domain
name can deliver the service or product to customers worldwide.

 A well-protected domain name is beneficial for the security and profitability of a

business, just like an internationally protected trademark. Thus, registration of both the
trademark and domain name is necessary.

 A domain name is not protected under any law in India. Thus, any person or business
obtains protection to a newly created domain name in India under the Trade Marks Act,
1999 and the Trade Marks Rules, 2002.
COLLECTIVE MARKS

 A collective mark is defined as that which educates the audience about a certain attribute
of the product for which they are employed.
 Such marks are owned by an association, a governmental institution, or corporate.

 Collective marks are also used to market certain items that have qualities which are
distinctive to the manufacturer in a given location.

 For example, “CA” is used by the members who are a part of the Institute of Charted
Accountants, or “CPA” denotes members of the Society of Certified Public Accountants.

REGISTRATION

 Under the intellectual property laws of most countries, there are provisions for collective
marks. However, some countries like Indonesia do not recognize collective trademarks.

 Article 7 of the Paris Convention talks about collective marks, which mentions that the
countries shall protect collective marks even if those associations do not have an
industrial establishment and each country has the authority to decide which collective
marks are to be protected. They may refuse to protect a collective mark if they feel it is
opposed to any public policy.

 In India, the former two legislations for Trade Marks namely,

 The Trade Marks Act of 1940 and Trade and

 Merchandise Marks Act of 1958, did not deal with the registration of Collective Trade
Marks per se. However, it later got included in sections 61-68 of the Trade Marks Act,
1999.

 Marks which are capable of deceiving others and which may cause confusion in the
minds of others cannot be registered. A collective mark should carry an indication that it
is a collective mark.

 For example, if a person uses a mark which is very similar to an already registered
collective mark and the concerned person uses that mark in order to confuse potential
consumers to associate his mark to that which is already registered, such a mark cannot
be granted registration.

 While applying for a collective mark, the application should specify who the people who
are authorized to use that mark are.

 The Registrar of trademarks has the authority to either accept it conditionally, absolutely,
or even to reject the application.

 The application for the registration also carries guidelines as to the rules which should be
followed by the users of the mark. The associations themselves should prescribe these
rules.

 The application should contain certain necessary information as to the nature of the
mark, the name of the association along with their address, the objective with which the
association was formed, the condition of the membership, etc. or any such information as
the Registrar may deem necessary.
 If the collective mark is accepted, it is published in the trademark journal so that any
person who may have any grievances can file a complaint about the opposition. The
conditions for the grant of a collective trademark also include sanctions against the
misuse of the mark.

 A collective mark may be revoked if it has failed to comply with the regulations
governing the use of the mark or if the user has done anything to mislead the public
about any of the significant characteristics the collective mark is supposed to signify.

 In a suit for infringement by the proprietor of the registered mark the court takes into
account any loss suffered by the plaintiff and may direct for any pecuniary remedy as it
may deem fit for all the authorized users of the collective mark (sec 67).

WELLKNOWN 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.(SECTION 2 (zb)).
 Daimler Benz v. Hybo Hindustan,
  In this case, the defendant had been using the plaintiff’s logo and the word ‘Benz’ for
which the plaintiff sought injunction against such use of his logo.
 The court while recognizing plaintiff’s logo as a well-known trademark on the ground
of trans-border reputation and goodwill granted injunction against the impugned use
of logo by the defendant.
 Rolex Sa v. Alex Jewellery Pvt. Ltd. & Ors.,
 In this case,the defendants were using the trade name “Rolex” of the plaintiff while
dealing in artificial jewellery for which the plaintiff brought an action against the
defendant.
 The court held that the plaintiff’s business dealt with watches, and the section of
public using watches recognizes the trade name Rolex, for which it is a well-known
trademark.
 The same segment of people- if finds artificial jewelleries with the same trade name
might assume the artificial jewellery to be from plaintiff’s business.
 For the same reasons, the court considering Rolex to be a well-known trademark
granted injunction against the acts of defendants.

ESSENTIALS OF WELL-KNOWN TRADEMARK

1. Knowledge and Recognition of the Trade Mark in a relevant section of the public.

 It is Section 11(7) of the Trademarks Act, which mentions the three criteria that a mark
must fulfill, to depict whether it is known in the relevant section of the public or not.
i. ‘the actual or potential consumers’,
ii. ‘the ones involved in the channels of distribution’, and
iii. ‘the businesses dealing with the goods and services’.
 It is now held that even if the mark is only Well-known amongst one relevant section of
the public, it can still be considered to be Well-known.

2. Extent, Duration, and the Geographical Area in which the trademark is used

 The Trademark Act does not lay down the specific rules for the determination of this
requirement.
 In Sarda Plywood Industries Ltd. v. Deputy Registrar Of TradeMarks, the Intellectual
Property Appellate Board (IPAB) was of the opinion that a period of one year was not
sufficient for a product to fulfil the requirement of being distinctive.
 This ruling was changed in Britannia Industries Ltd v. ITC Limited, where the court
held that a product with a distinctive packaging does not require a fixed number of years
to gain distinctiveness.
 Moreover, in Mrs. Ishi Khosla v. Anil Aggarwal And Anr.,, the meaning of
distinctiveness was not seen possible to be derived from the number of years, as products
with new ideas have a different appeal and can become a ‘hit overnight’.
 The extent, duration, and the geographical area of use were hence seen in a subjective
light, depending on a case to case basis.

3. Extent, Duration, and the Geographical Area in which the invention is promoted
 In Whirlpool Co. & Anr. v. N.R. Dongre, the Delhi High Court observed that the
existence of a good in the market was not necessary for a trademark to be used, and that
promotion alone was sufficient.

4. Duration or Geographical Area of registration or application of registration

 When a trademark is registered in other jurisdictions, it gains a Transborder reputation.

 The statute refers to transborder reputation gained by a trademark as an essential factor in
determining whether the same is Well-known or not.

5. Record of successful enforcement of Rights enshrined with a TradeMark

 The jurisdiction of registration of the mark is also of importance while considering

whether the mark is Well-known or not.