ABSTARCT

The object of the trade mark is to make the goods of a manufacturer or trader known to the public as
his and thereby enable him to secure in course of time such profits as may accrue from the reputation
which he may build up for his goods by superior skill, efforts and enterprise. To the purchaser a
genuine trade mark gives assurance of the make and the quality of the article he is buying. The concept
of trade marks and the law governing the use thereof owe their origin to business competition, practice
and custom.
Often considerable amount of money is spent in making a name or symbol popular through various
media of advertisement. As a result, the trade mark may acquire great reputation, and may often
become a stamp of quality and a symbol of origin. A good trade mark is he best sales man of the goods.
Ever manufacturer or trader who has built up a reputation for his mark is naturally jealous of
protecting it against piracy by unscrupulous competitors. Protection of trade marks is necessary not
only for honest trader bur also for the benefit of the purchasing public against imposition and fraud.
At common law the reputation of a business, symbolized through a name or label, can be protected
only by an action of passing off, the procedure for which is cumbersome and the outcome uncertain.
Registration of a trade mark under Trade Mark Act, 1999 confers on the proprietor certain statutory
rights which are fur more extensive than common law rights, and affords a convenient means of
protecting those rights against infringement.
Action against infringement of trade mark has been made a statutory right under the Trade Marks
Act. But the action against passing off of trade marks has only been recognized by the Act. The Act
merely lays down the procedure to be followed in such an action. The substantive part constituting the
principles and the grounds for such an action still form part of the common law, from which it has
been adopted.
The project aims at analyzing the law relating to infringement and passing off of the trade marks. It
aims at bringing out the difficulties that are faced by the court in deciding in an action of passing off,
due to its common law origin and its want of being a statutory remedy.
The project ends with a few observation and suggestions put forward by me after analyzing the
literature and the case laws on the subject. I suggest, registration of trade marks be made compulsory
as to cover up lacunas created due to lack of binding principles in case of establishing a passing off
action.

Electronic copy available at: http://ssrn.com/abstract=1335874

Chapter I

Growth of Intellectual Property Law and the Trade Marks

1. The Concept of Intellectual Property

Intellectual property, very broadly, means the legal rights which result from intellectual
activity in the industrial, scientific, literary and artistic fields. Countries have laws to
protect intellectual property for two main reasons. One is to give statutory expression to
the moral and economic rights of creators in their creations and the rights of the public in
access to those creations. The second is to promote, as a deliberate act of Government
policy, creativity and the dissemination and application of its results and to encourage fair
trading which would contribute to economic and social development.
The term Intellectual Property, denotes rights over intangible object of the person
whose mental effort created it and refers to a loose cluster of legal doctrines that regulate
the uses of different sorts of ideas and insignias.
The subject matter of intellectual property is very wide and includes literary and artistic
works, films, computer programme, inventions, designs and marks used by traders for
their goods and services and so on. There are several different forms or areas of law
giving rise to rights that together make up intellectual property. They are copyright, right
in performance, the law of confidence, patents, registered designs, design rights,
trademarks and passing off, trade libel, etc.

Electronic copy available at: http://ssrn.com/abstract=1335874

The intellectual property law may be defined as legal relationships that arise out of
individuals creative gifts and the communication to society of his or her intellectual
creations.
The term "intellectual property" is reserved for types of property that result from
creations of the human mind, the intellect. Interestingly, the term intellectual property in
the Convention Establishing the World Intellectual Property Organization, or "WIPO",
does not have a more formal definition1.
The States that drafted the Convention chose to offer an inclusive list of the rights as
relating to:
Literary artistic and scientific works; performances of performing artists, phonograms,
and broadcasts; inventions in all fields of human endeavor; scientific discoveries;
industrial designs; trademarks, service marks, and commercial names and designations;
protection against unfair competition; and "all other rights resulting from intellectual
activity in the industrial, scientific, literary or artistic fields. (Convention Establishing
the World Intellectual Property Organization, Signed at Stockholm on July 14, 1967;
Article 2, viii)

Generally speaking, intellectual property law aims at safeguarding creators and other
producers of intellectual goods and services by granting them certain time-limited rights
to control the use made of those productions. Those rights do not apply to the physical
object in which the creation may be embodied but instead to the intellectual creation as
such. Intellectual property is traditionally divided into two branches, industrial property
and copyright.
1

Study material of WIPO.

1.2 Origin and Development of Intellectual Property rightsThe origin and development of Intellectual Property Rights (IPR) under international law
dates back to 1833 within the adoption of Paris Convention, 1833 for protection of
Industrial Property. The Berne convention was the first convention on copyright.

WIPO- the World Intellectual Property Organization- WIPO is a specialized agency of

the United Nations since, 1974. WIPO carries out many tasks related to protection of
intellectual property such as administering international treaties, assisting government
agencies and privates sectors, monitoring developments in the field and harmonizing and
simplifying rules and practices

The Convention Establishing the World Intellectual Property Organization (WIPO),

concluded in Stockholm on July 14, 1967 (Article 2(viii)) provides that intellectual
property shall include rights relating to:
- Literary, artistic and scientific works,
- Performances of performing artists, phonograms and broadcasts,
- Inventions in all fields of human endeavor,
- Scientific discoveries,
- Industrial designs,
- Trademarks, service marks and commercial names and designations,
- Protection against unfair competition,

and all other rights resulting from intellectual activity in the industrial, scientific, literary
or artistic fields.

The areas mentioned as literary, artistic and scientific works belong to the copyright
branch of intellectual property. The areas mentioned as performances of performing
artists, phonograms and broadcasts are usually called related rights, that is, rights
related to copyright. The areas mentioned as inventions, industrial designs, trademarks,
service marks and commercial names and designations constitute the industrial property
branch of intellectual property. The area mentioned as protection against unfair
competition may also be considered as belonging to that branch, the more so as Article
1(2) of the Paris Convention for the Protection of Industrial Property (Stockholm Act of
1967) (the Paris Convention) includes the repression of unfair competition among
the areas of the protection of industrial property; the said Convention states that any
act of competition contrary to honest practices in industrial and commercial matters
constitutes an act of unfair competition (Article 10bis(2)).
The expression industrial property covers inventions and industrial designs. Simply
stated, inventions are new solutions to technical problems and industrial designs are
aesthetic creations determining the appearance of industrial products. In addition,
industrial property includes trade marks, service marks, commercial names and
designations, including indications of source and appellations of origin, and protection
against unfair competition. Here, the aspect of intellectual creationsalthough existent
is less prominent, but what counts here is that the object of industrial property typically
consists of signs transmitting information to consumers, in particular as regards products

and services offered on the market, and that the protection is directed against
unauthorized use of such signs which is likely to mislead consumers, and misleading
practices in general.

1.3Origin and development of Intellectual Property Rights at National level in

IndiaThe western development of Intellectual Property Law has to a great extent influenced
the development of Indian intellectual property law. Because the English people had
brought the law into India. Hence, the Indian history of protection of intellectual property
rights through legislative and judicial enactments has contributed a lot on its part in
extending protection to the owners or licensees of trade marks who used to sought
remedy under enactments like the Specific relief Act, 1877 amended in 1963 and under
Sections 479 to 489 of the Indian Penal Code, 1860.
Since the aim of this project is to analyze the law relating to Passing off and Infringement
of Trade marks I would be directly moving on to explain the concept without explaining
other Intellectual Property Rights.

2. Concept of Trade marks

2.1History
Most accounts of the history of trade marks tend to focus on two intertwined themes. One
is a history of the social practices and understandings attached to the activity of applying
marks to goods; the other is a positivist history of trade marks law. These two histories
are often conflated in a way that suggests that the law inevitably evolves with, or ought to
reflect the changes in, the nature and functions of marks2. While acknowledging that
many developments have been made in response to changes in the functions that marks
perform, it is preferable to keep histories separate to avoid any implication that a change
in the function of marks requires us to alter trade mark law3.

2.2 History of MarksIn the earliest times traders applied marks to their good to indicate ownership. These are
called proprietary or possessory marks. For example farmers commonly branded cattle
and earmarked sheep as a way of identifying their livestock. In a similar way, merchants
also marked their goods before shipment so that in the event of a shipwreck, any
surviving merchandise could be identified and retrieved. From medieval times marks
were used for a slightly different purpose within guild structures. In order to be able to
identify the source of unsatisfactory goods, the guilds required their members to apply
identifying marks or signs to the goods.

2
3

F. Schechter, The Historical Foundations of Law Relating to Trade Marks (1925)

Intellectual Property Law, Lionel Bentley and Brad Sherman, Oxford Publication, Page No- 655

With the demise of the guilds, it was no longer obligatory for traders to apply marks or
signs to goods. However with the growth of regional trading and rise of factory
production that accompanied the Industrial Revolution, many traders continued to apply
their marks to the goods they manufactured. Moreover with the growth of mass media
and the reading public, the traders started to advertise their goods with reference to these
marks. In turn, purchasers of goods started to rely on the signs the goods bore as trustful
indications of the source of the goods. Importantly they began to use them to assist their
purchasing decisions. Over time, as consumers started to realize that some marks
indicated a particular manufacturer, and in turn goods of a certain standard, the nature of
the mark changed from being a source of liability to become an indicator of quality.
Another important change in the role played by marks took place around the beginning of
the twentieth century. During this period trademarks changed from being indicators of
origin to become valuable assets of their own right4. Thus it is said that some marks, by
virtue of their distinctiveness or appeal were able to convey some sort of emotional allure
to potential consumers. Literally the sign attracted the customers, not as a result of some
idea or assumption of origin or quality, but as result of so called advertising quality5.
Indeed, the mark itself gave rise to desire for the product that was distinct from a desire
based on a belief that the product would be of particular quality. The trade mark serves
more as a marketing tool and less as a means of identifying a products source or
sponsorship. This change in the functions of a trade mark has been described as
transformation from signal to symbols

4
5

Eastman Photographic Material Co. V John Griffith Cycle Corporation,(1898) 15 RPC 105
The Legal Protection of Trade Marks , Yale Law Journal (1948) 57

More recently, trade marks have taken on new roles6. In one commentators word marks
have come to a mythical status. In their mythical form trade marks trade marks help to
provide consumers with an identity- for example, as a FERRARI or VOLVO driver or
BUDWEISER or BUDVAR drinker, when the consumer purchases a product bearing a
mark they purchase an experience envelope which helps to construct their identity. This
conception of the trade marks as myth is illustrated by books such as American Psycho
where the attributes of the character were conveyed through description of their use of
particular trade- mark products. The conception of trade mark as myth can be seen in the
increased attention given to brands. While the various definitions of brand varies in
both marketing and legal analysis, it normally extends beyond a word or device mark to
encompass the personality, style, or aura associated with a particular product.

2.3 History of Trade Marks Law in India

Prior to 1940 there was no statutory law relating to trade marks in India, and the law
applicable to the subject was based in common law which was substantially the same as
that applied in England before the passing of the first Registration Act there in 18757. The
Trade Marks Act, 1940, introduced for the first time machinery for registration and
statutory protection of trade marks in India. This Act was replaced by the Trade and
Merchandise Act, 1958. This Act has also been repealed by the Trade Marks Act of 1999
which has come in to effect form 2003.

R. Dreyfuss, Expressive Genericity: Trade Marks as Language in the Pepsi Generation (1990) 65 Notre
Dame Law Review 397, 397-8
7
Common Law Trade marks Registration, mentioned above

The Trade Marks Act, 1999 has made substantial changes in the law of trade marks. As
regards unregistered trade marks, some aspects of the law are codified, while others are
still based on common law for which one has to refer to decisions of courts.
The statutory rights conferred by registration of a trade mark are so wide and complex
that it has been found necessary to safeguard the bona fide interests of other traders from
litigation and harassment by registered owners of trade marks, apart from protecting the
purchasing public from imposition and fraud by infringers of genuine trade marks. This
has resulted in the Act becoming a complicated piece of legislation containing lengthy
sections, many cross references and plenty of provisos and exceptions. The more
important provisions have been clarified by judicial interpretation; but there still remain
some sections which have not so far been subject to judicial scrutiny and analysis. The
present Act of 1999, apart from simplifying the law, has introduced many new provisions
which are in the interests of trade mark owners as well as the consumers of goods.
For historical reasons both the common law and the statutory law of trade marks in India
have closely followed the pattern of English law. The Trade Marks Act, 1940, which was
the first statute on the subject introduced in India, was almost a replica of the UK Trade
Marks Act, 1938. This Act was subsequently replaced by the Trade and Merchandise Act,
1958. Apart from substantial alterations in the previous law, this Act consolidated, in one
piece of legislation, the Merchandise Marks Act, 1889, and some provisions relating too
trade marks contained in the India Penal Code, the Criminal Procedure Code and the Sea
Customs Act8. This Act has again been repealed by the Trade Marks Act, 1999.

Repealed and Replaced by the Customs Act, 1962

10

3.International Agreements leading to growth of IPR and Trade Marks Law ,

worldwide.

3.1 Madrid Protocol and Agreement-

The Madrid system for international registration of marks consists of two agreements.
The Madrid Agreement of 1891 Concerning the International Registration of Marks
(hereinafter referred to as "Agreement") and the Madrid Protocol of 1989 (hereinafter
referred to as "Protocol") which entered into force on April 1, 1996. The Agreement and
The Protocol are collateral, but independent of each other. (The unusual name of
"Protocol" implies that both agreements have the same structure, so the sections - bearing
the same number - set out the same issues.) Common Regulations shall be applied to all
international application filed under both the Madrid Agreement and the Protocol. It
enables the International Bureau of World Intellectual Organization to proceed with the
cases whose applications were filed on the bases of both agreements.

The trademark owner, after having obtained the national protection of a trademark, has
the possibility to obtain protection of the mark covering the Contracting States by simply
filing one application with a single Office of any of the Contracting States, in one
language, with one set of fees. It concerns the renewing procedure as well. The
international registration offers a number of advantages for both the trademark owner and
the national (regional) trademark offices. For the time being (April, 2007), the Agreement
has 57; the Protocol has 72 Member States, among others Hungary.

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3.2. The Trademark Law Treaty (TLT) (1994)

The aim of the Trademark Law Treaty (TLT) is to approximate and streamline national
and regional trademark registration procedures. This is achieved through the
simplification and harmonization of certain features of those procedures, thus making
trademark applications and the administration of trademark registrations in multiple
jurisdictions less complex and more predictable.

The great majority of the provisions of the TLT concern the procedure before the
trademark office which can be divided into three main phases: application for
registration, changes after registration and renewal. The rules concerning each phase are
so constructed as to make it clear what the requirements for an application or a specific
request are.

As to the first phase application for registration the Contracting Parties to the TLT
may require, as a maximum, the following indications: a request, the name and address
and other indications concerning the applicant and the representative; various indications
concerning the mark including a certain number of representations of the mark; the goods
and services for which registration is sought classified in the relevant class of the
International Classification (established under the Nice Agreement Concerning the
International Classification of Goods and Services for the Purposes of the Registration of
Marks(1957), and, where applicable a declaration of intention to use the mark. Each
Contracting Party must also allow that an application relate to goods and/or services
belonging to several classes of the International Classification. As the list of permissible
requirements is exhaustive, a Contracting Party cannot require, for example, that the

12

applicant produce an extract from a register of commerce or the indication of a certain

commercial activity, or evidence to the effect that the mark has been registered in the
trademark register of another country.

The second phase of the trademark procedure covered by the TLT concerns changes in
names or addresses and changes in the ownership of the registration. Here too, the
applicable formal requirements are exhaustively listed. A single request is sufficient even
where the change relates to more than one possibly hundreds of trademark
applications or registrations, provided that the change to be recorded pertains to all
registrations or applications.

As to the third phase, renewal, the TLT standardizes the duration of the initial period of
the registration and the duration of each renewal to 10 years each.

Furthermore, the TLT provides that a power of attorney may relate to several applications
or registrations of the same person.

It also provides that, if requests are made on forms corresponding to the forms attached to
the TLT are used, they must be accepted, subject to the use of a language accepted by the
Office, and no further formalities may be required.

Most notably, the TLT does not allow a requirement as to the attestation, notarization,
authentication, legalization or certification of any signature, except in the case of the
surrender of a registration.

13

The TLT was concluded in 1994 and is open to States members of WIPO and to certain
intergovernmental organizations. Instruments of ratification or accession must be
deposited with the Director General of WIPO.

3.3. Trade Related Intellectual Property Rights Agreement (TRIPS)

The areas of intellectual property that it covers are: copyright and related rights (i.e. the
rights of performers, producers of sound recordings and broadcasting organizations);
trademarks including service marks; geographical indications including appellations of
origin; industrial designs; patents including the protection of new varieties of plants; the
layout-designs of integrated circuits; and undisclosed information including trade secrets
and test data.
The three main features of the Agreement are:
a. Standards. In respect of each of the main areas of intellectual property covered by the
TRIPS Agreement, the Agreement sets out the minimum standards of protection to be
provided by each Member. Each of the main elements of protection is defined, namely
the subject-matter to be protected, the rights to be conferred and permissible exceptions
to those rights, and the minimum duration of protection. The Agreement sets these
standards by requiring, first, that the substantive obligations of the main conventions of
the WIPO, the Paris Convention for the Protection of Industrial Property (Paris
Convention) and the Berne Convention for the Protection of Literary and Artistic Works
(Berne Convention) in their most recent versions must be complied with. With the
exception of the provisions of the Berne Convention on moral rights, all the main
substantive provisions of these conventions are incorporated by reference and thus

14

become obligations under the TRIPS Agreement between TRIPS Member countries. The
relevant provisions are to be found in Articles 2.1 and 9.1 of the TRIPS Agreement,
which relate, respectively, to the Paris Convention and to the Berne Convention.
Secondly, the TRIPS Agreement adds a substantial number of additional obligations on
matters where the pre-existing conventions are silent or were seen as being inadequate.
The TRIPS Agreement is thus sometimes referred to as a Berne and Paris-plus
agreement.
b. Enforcement. The second main set of provisions deals with domestic procedures and
remedies for the enforcement of intellectual property rights. The Agreement lays down
certain general principles applicable to all IPR enforcement procedures. In addition, it
contains provisions on civil and administrative procedures and remedies, provisional
measures, special requirements related to border measures and criminal procedures,
which specify, in a certain amount of detail, the procedures and remedies that must be
available so that right holders can effectively enforce their rights.
c. Dispute settlement. The Agreement makes disputes between WTO Members about
the respect of the TRIPS obligations subject to the WTO's dispute settlement procedures.

The basic rule contained in Article 15 is that any sign, or any combination of signs,
capable of distinguishing the goods and services of one undertaking from those of other
undertakings, must be eligible for registration as a trademark, provided that it is visually
perceptible. Such signs, in particular words including personal names, letters, numerals,
figurative elements and combinations of colours as well as any combination of such
signs, must be eligible for registration as trademarks.

15

Where signs are not inherently capable of distinguishing the relevant goods or services,
Member countries are allowed to require, as an additional condition for eligibility for
registration as a trademark, that distinctiveness has been acquired through use. Members
are free to determine whether to allow the registration of signs those are not visually
perceptible (e.g. sound or smell marks).
Members may make registrability depend on use. However, actual use of a trademark
shall not be permitted as a condition for filing an application for registration, and at least
three years must have passed after that filing date before failure to realize an intent to use
is allowed as the ground for refusing the application (Article 14.3).
The Agreement requires service marks to be protected in the same way as marks
distinguishing goods (see e.g. Articles 15.1, 16.2 and 62.3).
The owner of a registered trademark must be granted the exclusive right to prevent all
third parties not having the owner's consent from using in the course of trade identical or
similar signs for goods or services which are identical or similar to those in respect of
which the trademark is registered where such use would result in a likelihood of
confusion. In case of the use of an identical sign for identical goods or services, a
likelihood of confusion must be presumed (Article 16.1).
The TRIPS Agreement contains certain provisions on well-known marks, which
supplement the protection required by Article 6bis of the Paris Convention, as
incorporated by reference into the TRIPS Agreement, which obliges Members to refuse
or to cancel the registration, and to prohibit the use of a mark conflicting with a mark
which is well known. First, the provisions of that Article must be applied also to services.
Second, it is required that knowledge in the relevant sector of the public acquired not

16

only as a result of the use of the mark but also by other means, including as a result of its
promotion, be taken into account. Furthermore, the protection of registered well-known
marks must extend to goods or services which are not similar to those in respect of which
the trademark has been registered, provided that its use would indicate a connection
between those goods or services and the owner of the registered trademark, and the
interests of the owner are likely to be damaged by such use (Articles 16.2 and 3).
Members may provide limited exceptions to the rights conferred by a trademark, such as
fair use of descriptive terms, provided that such exceptions take account of the legitimate
interests of the owner of the trademark and of third parties (Article 17).
Initial registration, and each renewal of registration, of a trademark shall be for a term of
no less than seven years. The registration of a trademark shall be renewable indefinitely
(Article 18).
Cancellation of a mark on the grounds of non-use cannot take place before three years of
uninterrupted non-use has elapsed unless valid reasons based on the existence of
obstacles to such use are shown by the trademark owner. Circumstances arising
independently of the will of the owner of the trademark, such as import restrictions or
other government restrictions, shall be recognized as valid reasons of non-use. Use of a
trademark by another person, when subject to the control of its owner, must be
recognized as use of the trademark for the purpose of maintaining the registration
(Article 19).
It is further required that use of the trademark in the course of trade shall not be
unjustifiably encumbered by special requirements, such as use with another trademark,

17

use in a special form, or use in a manner detrimental to its capability to distinguish the
goods or services (Article 20).

3.4 Paris Convention for the Protection of Industrial Property (1883)

The Convention applies to industrial property in the widest sense, including patents,
marks, industrial designs, utility models (a kind of small patent provided for by the
laws of some countries), trade names (designations under which an industrial or
commercial activity is carried on), geographical indications (indications of source and
appellations of origin) and the repression of unfair competition.
The substantive provisions of the Convention fall into three main categories: national
treatment, right of priority, common rules.
(1) National Treatment- Under the provisions on national treatment, the Convention
provides that, as regards the protection of industrial property, each contracting State must
grant the same protection to nationals of the other contracting States as it grants to its
own nationals. Nationals of non-contracting States are also entitled to national treatment
under the Convention if they are domiciled or have a real and effective industrial or
commercial establishment in a contracting State.
(2) Right of Priority- the Convention provides for the right of priority in the case of
patents (and utility models, where they exist), marks and industrial designs. This right
means that, on the basis of a regular first application filed in one of the contracting States,
the applicant may, within a certain period of time (12 months for patents and utility
models; 6 months for industrial designs and marks), apply for protection in any of the
other contracting States; these later applications will then be regarded as if they had been

18

filed on the same day as the first application. In other words, these later applications will
have priority (hence the expression right of priority) over applications which may have
been filed during the said period of time by other persons for the same invention, utility
model, mark or industrial design. Moreover, these later applications, being based on the
first application, will not be affected by any event that may have taken place in the
interval, such as any publication of the invention or sale of articles bearing the mark or
incorporating the industrial design. One of the great practical advantages of this provision
is that, when an applicant desires protection in several countries, he is not required to
present all his applications at the same time but has six or 12 months at his disposal to
decide in which countries he wishes protection and to organize with due care the steps he
must take to secure protection.
(3)

Common rules-The Convention lays down a few common rules which all the

contracting States must follow. The more important are the following:
(a) As to Patents: Patents granted in different contracting States for the same invention
are independent of each other: the granting of a patent in one contracting State does not
oblige the other contracting States to grant a patent; a patent cannot be refused, annulled
or terminated in any contracting State on the ground that it has been refused or annulled
or has terminated in any other contracting State.
The inventor has the right to be named as such in the patent.
The grant of a patent may not be refused, and a patent may not be invalidated, on the
ground that the sale of the patented product, or of a product obtained by means of the
patented process, is subject to restrictions or limitations resulting from the domestic law.

19

Each contracting State that takes legislative measures providing for the grant of
compulsory licenses to prevent the abuses which might result from the exclusive rights
conferred by a patent may do so only with certain limitations. Thus, a compulsory license
(license not granted by the owner of the patent but by a public authority of the State
concerned) based on failure to work the patented invention may only be granted pursuant
to a request filed after three or four years of failure to work or insufficient working of the
patented invention and it must be refused if the patentee gives legitimate reasons to
justify his inaction. Furthermore, forfeiture of a patent may not be provided for, except in
cases where the grant of a compulsory license would not have been sufficient to prevent
the abuse. In the latter case, proceedings for forfeiture of a patent may be instituted, but
only after the expiration of two years from the grant of the first compulsory license.
(b) As to Marks: The Paris Convention does not regulate the conditions for the filing and
registration of marks which are therefore determined in each contracting State by the
domestic law. Consequently, no application for the registration of a mark filed by a
national of a contracting State may be refused, nor may a registration be invalidated, on
the ground that filing, registration or renewal has not been effected in the country of
origin. Once the registration of a mark is obtained in a contracting State, it is independent
of its possible registration in any other country, including the country of origin;
consequently, the lapse or annulment of the registration of a mark in one contracting
State will not affect the validity of registration in other contracting States.
Where a mark has been duly registered in the country of origin, it must, on request, be
accepted for filing and protected in its original form in the other contracting States.
Nevertheless, registration may be refused in well-defined cases, such as when the mark

20

would infringe acquired rights of third parties, when it is devoid of distinctive character,
when it is contrary to morality or public order, or when it is of such a nature as to be
liable to deceive the public.
If, in any contracting State, the use of a registered mark is compulsory, the registration
cannot be canceled until after a reasonable period, and only if the owner cannot justify his
inaction.
Each contracting State must refuse registration and prohibit the use of marks which
constitute a reproduction, imitation or translation, liable to create confusion, of a mark
considered by the competent authority of that State to be well known in that State as
being already the mark of a person entitled to the benefits of the Convention and used for
identical or similar goods.
Each contracting State must likewise refuse registration and prohibit the use of marks
which consist of or contain without authorization, armorial bearings, State emblems and
official signs and hallmarks of contracting states, provided they have been communicated
through the International Bureau of WIPO. The same provisions apply to armorial
bearings, flags, other emblems, abbreviations and names of certain intergovernmental
organizations.
Collective marks must be granted protection.
(c) As to Industrial Designs: Industrial designs must be protected in each contracting
State, and protection may not be forfeited on the ground that the articles incorporating the
design are not manufactured in that State.
(d) As to Trade Names: Protection must be granted to trade names in each contracting
State without the obligation of filing or registration.

21

(e) As to Indications of Source: Measures must be taken by each contracting State against
direct or indirect use of a false indication of the source of the goods or the identity of the
producer, manufacturer or trader.
(f) As to Unfair Competition: Each contracting State must provide for effective protection
against unfair competition.
The Paris Union, established by the Convention, has an Assembly and an Executive
Committee. Every State member of the Union which has adhered to at least the
administrative and final provisions of the Stockholm Act (1967) is a member of the
Assembly. The members of the Executive Committee are elected from among the
members of the Union, except for Switzerland, which is a member ex officio.
The establishment of the biennial program and budget of the WIPO Secretariatas far as
the Paris Union is concernedis the task of its Assembly.
The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington
in 1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in
1967, and it was amended in 1979.
The Convention is open to all States. Instruments of ratification or accession must be
deposited with the Director General of WIPO

22

Chapter 2
Trade marks Law in India
Rights conferred and Infringement

1 Definitions and Principles

1.1 Statutory Definition- According to Trade Marks Act, 1999.

As Per Section 2(1)(zb)- "trade mark" means a mark capable of being represented
graphically and which is capable of distinguishing the goods or services of one person
from those of others and may include shape of goods, their packaging and combination of
colours; and

(i) in relation to Chapter XII (other than section 107), a registered trade mark or a
mark used in relation to goods or services for the purpose of indicating or so as to
indicate a connection in the course of trade between the goods or services, as the case
may be, and some person having the right as proprietor to use the mark; and

(ii) in relation to other provisions of this Act, a mark used or proposed to be used
in relation to goods or services for the purpose of indicating or so to indicate a connection
in the course of trade between the goods or services, as the case may be, and some person
having the right, either as proprietor or by way of permitted user, to use the mark whether
with or without any indication of the identity of that person, and includes a certification
trade mark or collective mark.

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A trademark or trade mark (represented by the symbol )9 or mark is a distinctive sign

or indicator of some kind which is used by an individual, business organization or other
legal entity to identify uniquely the source of its products and/or services to consumers,
and to distinguish its products or services from those of other entities. A trademark is a
type of intellectual property, and typically a name, word, phrase, logo, symbol, design,
image, or a combination of these elements10. There is also a range of non-conventional
trademarks comprising marks which do not fall into these standard categories11.

A trademark is a sign that individualizes the goods of a given enterprise and

distinguishes them from the goods of its competitors12

According to Websters new International Dictionary, Second Edition, unabridged, gives

the meaning of the word trade as purchase and sale. The worldwide accepted
significance of trade is buying and selling.
Deduction- Therefore Trade mark means mark used on goods for buying and selling,
for distinguishing goods of different proprietors. The words with or without any
indication of the identity of that person in Section 2(1)(zb)(ii) of the Trade Marks Act,
1999 indicate that the identity of the person dealing in the goods need not necessarily be

The styling of trademark as a single word is predominantly used in the United States and Australia, while
the two word styling trade mark is used in many other countries around the world, including the European
Union and Commonwealth and ex-Commonwealth jurisdictions (although Canada officially uses trademark pursuant to the Trade-mark Act, trade mark and trademark are also commonly used)
10
Restatement (Third) of Unfair Competition 9 (1995)
11
http://en.wikipedia.org/wiki/Trademark
12
WIPO- Study materials.

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revealed, unless specifically required to do so under some other laws, or under special
circumstance13 of the case.
Analysis- A trade mark is not only a symbol or a monogram or a logo as is generally
understood; but can also be a word, a device, a letter or letters, a numeral or numerals, a
picture or combination of all these elements. When a mark consists of two or more of
these elements, it is known as composite mark
A mark to be a trade mark must be used on the goods vended14 or should at least be
used in such a manner so as to impose the visual representation to the goods.
A service mark to distinguish services of tailors, caterers, advertisers, insurers,
construction agents and repairer, communicators, transporters and other personal
services, cannot be termed as trade mark since no buying and selling of goods are
involved. However the Nice Agreement15 concerning the international classification of
goods and services is followed by some countries for service mark registration.
The name or trading style16 of a company, firm, association, corporation or any
abbreviation thereof my also be a trade mark, if represented in a special and particular
manner.
Any trade mark may either be new i.e. proposed to be used or has already been used by
the proprietor.

13

Hoechst v. Takeda Chemical Industries Ltd,wq Opposition No. CAL 871 to Trade Mark Application No.
2764
14
Herald Radford & Co. Ltd.s application, 69 RPC 221
15
Nice Agreement of the 15th June, 1957, as revised at Stockholm on 14th July, 1967 and at Geneva on 13th
of May, 1977 (WIPO 1981)
16
The Economic Times, 27th April, 1984

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1.2 Principles of Trade Mark Law

It is interesting to note that the law of trade marks; practically all over the world is based
on three broad concepts:
1. Distinctiveness or distinct character, or capable of distinguishing.
2. Deceptive similarity or similarity or near resemblance of marks and,
3. Same description or similarity of goods.
The following are the fundamental principles of the trade mark law as embodied in
the preamble and the various provisions on the Trade Mark Act, 1999a. Since registration confers on the proprietor a kind of monopoly right over
the use of the mark, which may consist of a word or symbol legitimately
required by other traders for bona fide trading or business purposes,
certain restrictions are necessary on the class of words or symbols over
which such monopoly right may be granted17. This principle is laid down
in Section 9- Absolute grounds for refusal of registration
b. Registration of a trade mark should not interfere with the bona fide use by
other persons of names or words in ordinary usage. This principle is
embodied in Section 13 and Section 35.
c. Property rights in a trade mark acquired by use are superior to similar
rights obtained by registration under the Act. This is clear from the
preamble which refers to better protection of trade marks thereby
necessarily implying the existence and availability of some protection
under the common law. It, therefore, follows that prior users of trade mark
17

Perfection case, (1909) 26 RPC at 860, 861

26

should be protected against monopoly rights granted under the Statute.

This principle is enacted in Section 34.
d. There are two main interests to be protected in a trade mark. The first the
interest of the public. A trade mark ought not to be registered if its use will
be apt to mislead the public as to the origin of the goods they are
purchasing. There is also the interest of the other traders who are entitled
to object if the use of the trade mark proposed for registration will be
calculated to enable the applicants goods to be passed off on the public as
such other traders goods. These interests are protected by Section 9 and
Section 1118.
e. Granting the benefits of registration under the Statute is not only a matter
of interest to the applicant seeking registration, but it is a matter in which
the public is also interested. It is, therefore, necessary that any member
who wants to object to the registration should be permitted to do so. The
Act accordingly provides for advertisement of the application and
opposition thereto by any interested party.19

1.3 Functions of a trade mark

The functions of a trade mark is to give an indication to the purchaser or possible
purchaser as to the manufacture or quality of the goods, to give an indication to his eye of
the trade source from which the goods come, or the trade hands through which they pass
on their way to the market. It tells the person who is about to buy that what is presented

18
19

Refer to Bass v. Nicholson (1932)49 RPC 88 at 111 (HL)

Lord Atkin in Shredded Wheat (1940)57 RPC 137 at 149.

27

to him is either what he has known before under the similar name as coming from a
source with which he is acquainted, or that it is what he has heard of before as coming
from that similar source20.
Under modern business conditions a trade mark performs three functions21:
a. It identifies the product and its origin
b. It guarantees its unchanged quality, and
c. It advertises the product. It is also a symbol representing business
According to McCarthy22 the following are the functions of a trademark in modern
businessa. To identify one sellers goods and distinguish them from goods sold by others.
b. To signify that all goods bearing the trade mark come from or controlled by a
single albeit anonymous source.
c. To signify that all goods bearing the trade mark are of an equal level or quality.
d. As a prime instrument in advertising and selling the goods.
e. A symbol representing the goodwill of the business in which it is used. It
identifies the goodwill.
f. It creates an image to the business in which it is used.

2 Rights Conferred By Registration of a Trade Mark

Section 28 of the Trade Marks Act, 1999 provides for the rights that are acquired by a
registered proprietor of a trade mark. Section 28 of the Act provides as under20

Sumat Prasad v. Sheojahan Prasad AIR 1972 SC 2488 at 2490

Industrial Property (WIPO) 1978, p.219
22
McCarthy on Trademarks and Unfair Competition, 4th Edition, Volume 1, Chapter 2.
21

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(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if
valid, give to the registered proprietor of the trade mark the exclusive right to the use of
the trade mark in relation to the goods or services in respect of which the trade mark is
registered and to obtain relief in respect of infringement of the trade mark in the manner
provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be
subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are
identical with or nearly resemble each other, the exclusive right to the use of any of those
trade marks shall not (except so far as their respective rights are subject to any conditions
or limitations entered on the register) be deemed to have been acquired by any one of
those persons as against any other of those persons merely by registration of the trade
marks but each of those persons has otherwise the same rights as against other persons
(not being registered users using by way of permitted use) as he would have if he were
the sole registered proprietor.

The law considers a trademark to be a form of property. Proprietary rights in relation to a

trademark may be established through actual use in the marketplace, or through
registration of the mark with the trademarks office (or "trade marks registry").
Registration of a trademark by itself does not create an absolute right in the owner. The
rights as are acquired by a person under the common law on account of priority in
adoption and use are much superior to that of a person who may acquire registration of an
identical mark prior in point of time.

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The registration of a trade mark under the provisions of the Act confers statutory right on
the registered proprietor not only to the exclusive use of the said mark in relation to the
goods or services for which the same is registered but also to restrain others from using
an identical or deceptively similar mark in respect of the goods for which the earlier mark
is registered in respect of the goods of the same description or similar in nature. The
goods that are cognate or allied in their nature and character on account of having
common trade channel, class of purchasers or overlapping in business activities are
considered as the goods of same description.
Prior to the coming into force of The Trade Marks Act, 1999, the rights of the registered
proprietors were confined in an infringement action, to restrain others from using an
identical or similar mark only in respect of those goods for which the earlier registration
had been made. The proprietor of a trademark was entitled to restrain the use of an
identical or deceptively similar mark in respect of similar goods or goods of the same
description in an action of passing off. Such a common law right of a proprietor has
acquired statutory recognition under the Trade Marks Act, 1999.
The question, which arises for consideration, is that if the right to a trademark is vested
on account of priority in adoption and use and such right is superior to that of the
registration obtained by a third party, then why it is necessary to obtain registration under
the Act?
It is no doubt true that under the common law, a person not only acquires proprietary
right to the exclusive use of a trade mark on account of his being first to adopt and use
the same in the course of trade but also has an exclusive right to restrain others in the
same manner and obtain the same relief as in the case of a registered trade mark.

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However, registration of a trademark not only facilitates a remedy but also confers a
presumption of statutory right to the exclusive use of such mark and to restrain others
from using the identical or deceptively similar mark in respect of the same or similar
goods or services in favor of registered proprietor. The rights of registered proprietor can
be defeated by such person who can establish his prior rights under common law.

Registration of trade marks in prima facie evidence of its validity

In all legal proceedings the proceedings the original registration of the Trade mark and all
its subsequent assignments and transmissions are taken as prima facie evidence of the
validity of the trade mark.
A registered trade mark cannot be held to be invalid on the ground that if as not register
able except upon production of evidence about distinctiveness and that such evidence was
not submitted before registration, it is proved that the registered mark had been so used as
to have become distinct on the date of registration.
Registered trade mark also shall not be declaimed invalid if after registration and before
commencement of any legal proceedings challenging its validity, it had acquired
distinctiveness. This would be so evidence such trade mark was registered even though it
was decided of any distinctive character.
Amravati Enterprises v/s Karaikudi Chettinadu23, it was held that- Registration of trade
mark is prima facie evidence in favor of the holder of such mark--When a party is using
prior user as a shield in an action for infringement, it is necessary to prove that they have
been continuously using the trade mark in respect of goods manufactured or marketed by
them--The volume of sales also assumes significance--Documents not showing the
23

2008 (36) PTC 688 (MADRAS)

31

volume of sales or continuous usage--Held, that appellant has a prima facie case in the
matter and balance of convenience is also in favor of the appellant and in case injunction
is not granted, the appellant would be put to irreparable loss and hardship.

Effect of acquiescence
If the proprietor of an earlier trade mark has acquiesced for a period of 5 years in the use
of a registered trade mark, even though he was aware of it, he will not be entitled to
challenge its validity or to oppose the use of such trade mark in relation to goods or
services except in a situation where the registration of the later trade mark was not
applied in good faith.

Exclusive Right of Proprietor- According to Section 28 of the Trade Mark Act,

registration of a trade mark provides exclusive right to the registered proprietor of the
trade mark to use the trade mark in relation to the goods or services in whose respect the
trade mark is registered.
When two or more persons are registered proprietors of trade marks, which are identical
with or nearly resemble each other, the exclusive right to the use of any of those trade
marks not is deemed to have been acquired by any one of those persons as against any
other of those persons merely by registration of the trade marks. In such a case, each of
those persons has otherwise the same rights as against other persons excluding registered
users, as he would have if he were the sole registered proprietor.

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In Re Magnolia Metal Companys Trade Mark24, the respondents were making white
metal to which the inventors have given the title or name of Magnolia. The word
magnolia was also their trade marks for the same metal. The court while ordering for
the two trade marks to be expunged from the register held that the white metal could be
described only as Magnolia. It would be described so during the continuance of the
letters patent as well as after the letters patent has expired, with the result that the
respondents would have appropriated to themselves the name Magnolia in respect of
white metal they produce.
Vested Rights- Section 34 of the Trade Marks Act, 1999 provides for protecting the
vested rights, so that the proprietor of the registered trade mark or a registered user
cannot interfere with the use of any identical or similar mark if the person has been using
the mark from an earlier date. Thus Section 34 state that the proprietor or a registered
user of registered trade mark is not entitled to interfere with or restrain the use by any
person of a trade mark identical to or nearly resembling it in relation to goods or services
in relation to which that person or his predecessor has continuously used that trade mark
from a date prior- (i) to the use of the first mentioned trade mark in relation to those
goods or services be the proprietor or his predecessor; or (ii) to the date of registration of
the first-mentioned trade mark in respect of those goods or services in the name of the
proprietor or his predecessor, whichever is earlier.

24

(1897)2 Ch.371

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3. Infringement of Trade Mark and Action against Infringement

According to Wikipedia web dictionary - Trademark infringement is a violation of the
exclusive rights attaching to a trademark without the authorization of the trademark
owner or any licensees (provided that such authorization was within the scope of the
license). Infringement may occur when one party, the "infringer", uses a trademark which
is identical or confusingly similar to a trademark owned by another party, in relation to
products or services which are identical or similar to the products or services which the
registration covers. An owner of a trademark may commence legal proceedings against a
party which infringes its registration25.

Infringement of trade marks occurs when if a person other than the registered proprietor
in the course of trade, in relation to the same goods or services for which the trade mark
is registered, uses the same mark or a deceptively similar mark.

Trademark infringement claims generally involve the issues of likelihood of confusion,

counterfeit marks and dilution of marks. Likelihood of confusion occurs in situations
where consumers are likely to be confused or mislead about marks being used by two
parties. The plaintiff must show that because of the similar marks, many consumers are
likely to be confused or mislead about the source of the products that bear these marks26.

Dilution is a trade mark law concept forbidding the use of a famous trade mark in a way
that would lessen its uniqueness. In most cases, trade mark dilution involves an

25
26

http://en.wikipedia.org/wiki/Trademark_infringement
http://www.amarjitassociates.com/articles/trademark-infringement.htm

34

unauthorized use of another's trade mark on products that do not compete with, and have
little connection with, those of the trade mark owner. For example, a famous trade mark
used by one company to refer to hair care products might be diluted if another company
began using a similar mark to refer to breakfast cereals or spark plugs.

The acts that constitute an infringement of a trade mark are defined in Section 29 of the
Trade Marks Act, 1999.

Section29- Infringement of registered trade marks27

(1) A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of trade, a mark
which is identical with, or deceptively similar to, the trade mark in relation to goods or
services in respect of which the trade mark is registered and in such manner as to render
the use of the mark likely to be taken as being used as a trade mark.

(2) A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of trade, a mark
which because of-

(a) its identity with the registered trade mark and the similarity of the goods or
services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the
goods or services covered by such registered trade mark; or
27

Similar Provisions are laid down under Section 10 of the Trade Mark Act of 1994

35

(c) its identity with the registered trade mark and the identity of the goods or
services covered by such registered trade mark,

is likely to cause confusion on the part of the public, or which is likely to have an
association with the registered trade mark.

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that
it is likely to cause confusion on the part of the public.

(4) A registered trade mark is infringed by a person who, not being a registered
proprietor or a person. using by way of permitted use, uses in the course of trade, a mark
which-

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which
the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark
without due cause takes unfair advantage of or is detrimental to, the distinctive character
or repute of the registered trade mark.

(5) A registered trade mark is infringed by a person if he uses such registered trade
mark, as his trade name or part of his trade name, or name of his business concern or part
of the name, of his business concern dealing in goods or services in respect of which the
trade mark is registered.

36

(6) For the purposes of this section, a person uses a registered mark, if, in particu1ar,
he-

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks them for
those purposes under. the registered trade mark, or offers or supplies services under the
registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers or in advertising.

(7) A registered trade mark is infringed by a person who applies such registered trade
mark to a material intended to be used for labelling or packaging goods, as a business
paper, or for advertising goods or services, provided such person, when he applied the
mark, knew or had reason to believe that the application of the mark was not duly
authorised by the proprietor or a licensee.

(8) A registered trade mark is infringed by any advertising of that trade mark if such
advertising-

(a) takes unfair advantage of and is contrary to honest practices in industrial or

commercial matters; or

(b) is detrimental to its distinctive character; or

(c) is against the reputation of the trade mark.

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(9) Where the distinctive elements of a registered trade mark consist of or include
words, the trade mark may be infringed by the spoken use of those words as well as by
their visual representation and reference in this section to the use of a mark shall be
construed accordingly.

3.1Necessary and sufficient conditions-

Essentials

Any person trespassing on the rights conferred by registration of a trade mark infringes
the registered trade mark. What are 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 fulfill the following requirement28- I
(a) the mark used by the person must either identical with or deceptively similar29 to the
registered trade mark;
(b) the goods or services in respect of which it is used must be specifically covered by the
registration;
(c) the use made by the mark must be in the course of the trade in areas covered by the
registration;
d) the use must be in such manner as to render it likely to be taken as being use as a trade
mark

28

P.Narayanan, Law of Trade mark and Passing off, Eastern Law House, 6th Edition, Page No-531.

29

Section 2(h) of Trade Marks Act of 1999 "deceptively similar"-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;

38

e) the defendants should not be permitted users under Section 2(1)(r)30 which includes
both registered user and unregistered user.
These conditions are necessary and sufficient for establishing infringement.
However under Section 29 the following uses also constitutes infringement, if such use is
likely to cause confusion among the public or likely to have an association with the
registered mark:
a) Identical mark used in relation
b) Similar mark used in relation to identical or similar goods or services.
c) Identical mark used in relation to identical goods or services.

30

Section 2(1)(r) of the TMA of 1999 permitted use", in relation to a registered trade mark, means the use
of trade mark (i) by a registered user of the trade mark in relation to goods or services(a) with which he is connected in the course of trade; and
(b) in respect of which the trade mark remains registered for the time being; and
(c) for which he is registered as registered user; and
(d) which complies with any conditions or limitations to which the registration of registered user
is subject; or
(ii) by a person other than the registered proprietor and registered user in relation to goods or
services (a) with which he is connected in the course of trade; and
(b) in respect of which the trade mark remains registered for the time being; and
(c) by consent of such registered proprietor in a written agreement; and
(d) which complies with any conditions or limitations to which such user is subject and to which
the registration of the trade mark is subject;

39

In a case falling under item (c) above the court presumes that it is likely to cause
confusion on the part of the public.
Where the respective marks or products or services are not identical, similarity will
generally be assessed by reference to whether there is a likelihood of confusion that
consumers will believe the products or services originated from the trademark owner.

Likelihood of confusion is not necessarily measured by actual consumer confusion,

though normally one of the elements, but by a series of criteria Courts have established.
A prime example is the test announced by the Ninth Circuit Court of Appeals in AMF,
Inc v Sleekcraft Boats, 599 F.2d 341 (C.A.9) 1979. The Court there announced eight
specific elements to measure likelihood of confusion:
Strength of the mark
Proximity of the goods
Similarity of the marks
Evidence of actual confusion
Marketing channels used
Type of goods and the degree of care likely to be exercised by the purchaser
Defendant's intent in selecting the mark
Likelihood of expansion of the product lines

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Other Courts have fashioned their own tests for likelihood of confusion -- like those
announced in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973), known collectively as the DuPont31factors.

II. A registered trade mark is also infringed if the following conditions are satisfied:
a) mark identical with or similar to registered trade mark
b) goods or services not similar,
c) the registered trade mark has a reputation in India,
d) the use of the mark by defendant must be without the due cause, and
e) the use of the mark takes unfair advantage of, or is detrimental to, the distinctive
character or repute of the registered trade mark.
In Hearst Corporation v. Dalal Street Communication Ltd32it was laid down that the
main ingredients of infringement are:
I. the Plaintiff must be the registered owner of a mark.
II. Defendants must use a mark deceptively similar to the Plaintiff mark.
III. The use of the mark must be in relation to the goods in respect of which the mark
is registered.
IV Use by the defendant must be in the course of trade

3.2 Forms of Infringement

A registered trade mark is infringed if used in the course of trade by a person other than
the registered proprietor or permitted user of such trade mark. The infringement occurs
because such mark used by the one other than the registered proprietor or permitted user
31
32

Please refer to Appendix No. 1

1996 PTC (16)

41

is likely to cause confusion in the mind of public or is likely to cause impression of

association with the registered trade mark. And such confusion is caused because of the
identity of such mark with the registered trade mark as also the similarity of goods or
services covered by such registered trade mark. Such confusion can also occur because of
similarity of such mark to the registered trade mark and the identity or similarity of the
goods or services covered by such registered trade mark. The confusion would also be
caused because of such marks identity with the registered trade mark as well as the
identity of the goods or services covered by such registered trade marks.

In a case where the infringing mark is identical with the registered trade mark and the
goods or services are also identical with the goods or services covered by the registered
the court shall presume that such trade mark is likely to cause confusion on the part of the
public.

Infringement of a registered trade mark would also occur if a person who is not the
registered proprietor or a permitted user of such trade mark uses in course of trade a mark
which is similar to identical to the registered trade mark.
Infringement would also occur if such person uses a mark which is used in relation to
goods and services which are similar to those for which the trade mark is registered.
Infringement would also occur if the registered trade mark has acquires a reputation in
India and the use of such mark or mark identical or similar to it without due cause takes
undue advantage of is detrimental to the distinctive character or repute of the registered
trade mark.

42

A registered trade mark is also infringed by a person if he uses such registered trade mark
as his trade mark or part of his trade mark, or name of his business concern or part of
such name dealing in goods or services in respect of which the trade mark is registered.
A trade mark is also infringed by a person who applies such trade mark to a material
intended to the used for labeling or packaging goods, as a business paper or it is used for
advertising goods or services provided that when he applied the mark in such manner,
knew or had reason to believe that such application of the trade mark was not duly
authorized by the proprietor or a license of the registered trade mark.

A registered trade mark is also infringed by any advertising of that trade mark if such
advertising takes unfair advantage of and is contrary to honest practices in industrial or
commercial matters. Also if it is detrimental to the distinctive character of the registered
trade mark. Also if it against the reputation of the registered trade mark.

A registered trade mark will also be infringed by words spoken as well as by their visual
representation in cases where the distinctive elements of a registered trade mark consist
of or include such work.

Using a deceptively similar mark

The infringement that deception or confusion has been caused may arise in the following
ways:-

43

1. Deception or confusion as to goods- A person may buy the goods seeing one mark
thinking that it is the brand, which is in his mind, which in fact is not the case. This is the
most common type of confusion or deception.

2. Deception or confusion as to trade origin- A person looking at a mark may buy the
goods thinking that it is coming from the same source as some other goods bearing a
similar mark with which he is familiar. This is deception or confusion as to trade source.

3. Deception or confusion as to trade connection- A person looking at the mark may not
think that it is the same as one with different brand in his mind but the similarity may
make him believe that the two are in some way or the other connected with each other.
The use of the mark might give rise to a belief in the purchasers, mind of there being
some connection with the goods and the owner of the registered trade mark.

3.3 Test of Infringement- deceptive similarity

In Durga Dutt Sharma v. Navaratna Pharmacy Laboratories33 , the Supreme Court has
stated the law as follows-

1. Where the two marks are identical, no further questions arise for, then the infringement
is made out.
2. Where the two marks are not identical the plaintiff would have to establish that the
mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is

33

AIR 1965 SC 980

44

likely to deceive or cause confusion in relation to the goods in respect of which it is

registered.
3. The onus would be on the plaintiff.
4. The court has to compare the two marks- the degree of resemblance which is necessary
to exist to cause deception not being capable of definition by laying down objective
standard. The persons who would be deceived are of course the purchasers of the goods
and it is the likelihood of their being deceived that is the subject for consideration. The
purpose of the comparison is for determining whether the essential features of the
plaintiffs trade mark are to be found used by the defendant. The ultimate test is whether
the mark used by he defendant as a whole is deceptively similar to that of the registered
mark of the plaintiff.
5. The Resemblances may be phonetic, visual, or in the basic idea represented by the
plaintiffs mark.
6. The identification of the essential features of the mark is in essence a question a fact
and depends on the judgment of the court based on evidence led before it as regards the
usage of the trade.

In Rustom and Hornby Ltd. v. Zamindara34, the Supreme Court has stated as follows1. Where the infringing trade mark is not identical with the complaining trade mark on
the register, but something similar to it, the test of infringement is same as in action for
passing off.
2. In a passing off action the issue is; is the defendant selling goods so marked as to be
designed or calculated to lead purchasers to believe that they are the plaintiffs goods?
34

AIR 1970 SC 1649

45

3. In an infringement action the issue is; is the defendant selling goods so marked as to be
designed or calculated to lead purchaser to believe that they are the plaintiffs goods?
4. The element of deception or confusion becomes irrelevant in the second issue (as the
same is implicit, inherent and presumed to be present).
The test laid down in Re Pianotist Company Ltd35, for determining the deceptive
similarity between the words/marks in the context of registration, have been approved
and applied in cases of infringement by the Courts in India, including the Supreme Court
of India. The test laid down is as follows-

You must take the two words. You must judge of them, both by their looks and by their
sound. You must consider the goods to which they are to be applied. You must consider
the nature and the kind of customer who would be likely to buy those goods. In fact you
must consider all the surrounding circumstances; and you must further consider what is
likely to happen if each of those trade marks is used in a normal way as a trade mark of
the goods of the respective owners of the marks. If, considering all those circumstances,
you come to the conclusion that there will be confusion, that is to say, not necessarily that
one man will be injured and other will gain illicit benefit, but there will be confusion in
the mind of the public which will lead to confusion in the goods then you may refuse the
registration, or rather-you must refuse the registration in that case.

In Rajkamal Metal Industries v. Mahadev Steel Products36, it was held that the crucial test
to be applied for judging an action for infringement or passing off action is as to whether

35
36

23 (1906) RPC 747,777.

2001 PTC 510(Del)

46

the customers of average intelligence and of imperfect relocation are likely to be

confused on the first impression. The plaintiff has to prove not only the similarity in the
trade names but also that the defendants goods as so marked, lead them to mistake the
defendants goods for those of the plaintiffs.

In Cox Distillery and another v. McDowell and Co. Ltd and another37 it was held that
while deciding whether one trade mark is the infringement of another trade mark, the
court has to see the following:
i. Whether the broad features and scheme of the two marks are such that an innocent
purchaser would consider one to be the other.
ii. The Court has not to process on the line as to what are detailed points of dissimilarities
between the two marks, as if the court was solving a pictorial quiz to count the number
of hidden or not so hidden dissimilarities in two, apparently similar pictures.
iii. The test is, what would be the impression on the mind of a person who is acquainted
with the plaintiffs mark, on seeking the defendants infringing mark, when the two
marks are not side by side before him. If he is likely to consider the infringing mark as
that of plaintiffs goods, there is clear deceptive similarity resulting in infringement of
plaintiffs trade mark. So, the best test is of impression on the mind of an innocent
purchaser.

3.4 Acts constituting Infringement with illustrative case lawsIn Lakme ltd. v. Subhash Trading38, plaintiff was selling products under the registered
Trade mark Lakme. Defendant was using the trade mark Like- me for the same class
37

1999 PTC (19) 507

47

of products. It was held that there was striking similarity between the words. The two
words are phonetically similar. There is every possibility of deception and confusion
being caused in the minds of the prospective buyers of the plaintiffs products. Injunction
was made permanent.
Pepsico Inc. v/s Sunrise Beverages , there was Infringement of registered trade mark
7UP & SEVEN UP by the defendant, use of deceptively similar design and logo by
defendant -- Visual, phonetic, ocular and structural similarity with the offending trade
mark '7th UP'. Injunction granted.

In M/S Mitaso Appliances Ltd v. Joginder Singh39, the plaintiffs were registered
proprietors of the registered Trade Mark MITASO; the defendants used the mark
METASHOW. Infringement was alleged on the ground that the two marks on the face
of it were deceptively similar phonetically and any ordinary customer could be easily
mislead in treating the goods of one as coming form the source of another. Injunction
restraining the defendants from using the trade mark META-SHOW was granted.

In United Decorative Pvt. Ltd v. Prem Traders, the plaintiffs were a reputed manufacturer
of dental cream COLGATE. Defendants used the mark COLLEGIATE which is
phonetically similar to the plaintiffs mark with deceptively similar letters in white with
the red background so as to cause confusion in the minds of the customers as pass off its
products as COLGATE. Hence the mark was restrained through injunction.

38
39

1996 PTC 567

1995 PTC, 105

48

In Amritdhara v. Satya Deo, the Supreme Court observed that the ordinary purchaser
would go more by the overall structure and phonetic similarity and the nature of medicine
he has previously purchased or has been told about, or about which he has otherwise
learnt and which he wants to purchase. The words Amritdhara were held deceptively
similar through registration of Lakshmandhara were allowed on the basis of honest
concurrent user.
Besides the instances illustrated in the above cited cases the following activities would
also amount to infringementIn Centron Industrial Alliance Ltd. v. Gillette UK Ltd40, the plaintiffs were registered
owners of 7 Oclock for blades which was used extensively in India for a long period
except for a few years due to special circumstances. The defendants adopted trade marks
containing 7-up and 7 baje with the device of a clock and get up and color scheme
similar to that of the plaintiffs mark. Interim injunction granted by trial court confirmed
by the Division Bench.
In B.P Amoco PLC v. John Kelly Ltd41, plaintiffs registered trade mark consisted of
heralding shading in green color as applied to the exterior surfaces of the depicted
premises (petrol filling station in respect of petroleum products). Defendants used a dark
green color for their filling stations with the letter TOP in lower case and other features.
The plaintiffs used two trade marks (green mark and the logo and shield). The claim was
dismissed on the grounds:

40
41

1998 PCT 288(Bom) (DB)

[2001] FSR 307

49

I. The average consumer would perceive the plaintiffs mark in its overall effect as
representing the badge of origin. In the case of the defendants the consumer would
perceive the green format and the letters TOP and the colored wings as the badge of
origin.
II The average consumer normally perceived a mark as a whole and did not proceed to
analyze its various details. Where the proprietor used his mark in combination with
another mark in order to create a composite badge of origin, the average consumer would
normally perceive the whole and not proceed to analyze its various details. The plaintiff
had used its relevant trade mark with other marks so as to create a composite badge of
origin which reduced the separate distinctiveness of the green marks.
III. There was no evidence of likelihood of confusion
IV The plaintiffs claim for passing off failed because the use of the mark TOP
distinguished the defendants goods from those of the plaintiffs.

Taking essential or substantial feature of a mark sufficient

The question of resemblance and the likelihood of deception are to be considered by
reference not only to the whole of the mark, but also to its distinguishing or essential
feature, if any42.
In Brooke Bond v. National Coffee Traders43, the defendants had copied the colour
scheme and design of the label registered by the plaintiff for coffee. Held infringement
established.

42
43

Saville Perfumery v June (1941) 58 RPC 147

(1977) ALT 772

50

In GTC v. ITC44, the defendants, GTC had copied the roundel design with the
intersecting rectangle with the words, GOLD FLAKE written across, the presence of
three stars, the color scheme and the rectangular border lines in strips of red and tarnished
gold, which formed the essential features of the plaintiffs label. Injunction was granted,
although the defendants were registered proprietors of different labels containing inter
alia the words GOLD FLAKE

Goods known by a particular name

If the use of a registered trade mark is such that the goods bearing the mark come to be
known and identified by a particular word among the public, the use of such word by any
other trader may constitute infringement45.

Value of evidence in deciding deceptive resemblances

The question of infringement is a matter upon which the Judge must decide. He cannot
abdicate the decision in that matter to witnesses before him. On the other hand, it is
equally true that he must be guided in all these matters by evidence before him, and
where the evidence is that there has been no confusion, that is a material fact which the
Judge must take into account46. Opinion evidence of what the public might think is in
admissible, but the evidence of experts in a highly specialized trade is admissible. Prima
facie view on likelihood of confusion may be modified by evidence to the contrary from
knowledgeable persons47. When the intrinsic similarities of the rival marks do not

44

AIR 1992 Mad 253.

De Cordova v. Vick Chemical (1951) 68 RPC 103.
46
Electrolux v, Electrix (1954) 71 RPC 23 at 31
47
Sanrus (1937) 54 RPC 341 at 349
45

51

provoke the conclusion that in use one will approximated to the other, there should be
evidence to show whether as a matter of experience the similarity has in fact rendered
them likely to be confused48.
Plaintiffs mark used along with defendants name
Use of the plaintiffs mark along with the defendants name even if prominently
displayed may constitute infringement.
This principle is equally applicable to trade marks which are not registered.
In Blackwell v. Crabb49, it was held that Crabbs pickles on a label resembling
Blackwells pickles on a label was not infringement of plaintiffs label as the customers
would be able identify the goods by the name of the manufacturer. The elements of labels
were common to the trade.
In Levi v. Shah50, the plaintiffs had registered trade mark consisting of labels
respectively colored, orange, white, black and blew sewn in to the left hand seam of the
rear pocket of a pair of jeans. The word Levis also a registered trade mark was
invariably added to the tabs. The defendants sold jeans with the white tabs. It was held an
infringement. The addition of the word KING to the defendants tab did not avoid
infringement.

Use of disclaimed feature

If the plaintiff has a disclaimed a particular feature appearing in the mark, he cannot
succeed in an infringement action against defendant who has taken only the feature

48

Goya v. Gala (1952)69 RPC 188 at 192

(1867) 36 LJ Ch.504
50
(1985) RPC 371
49

52

disclaimed, but not the combination51. A disclaimed feature is not an essential particular.
But copying of the manner of representation of the disclaimed feature, especially when
that representations distinctive, will constitute infringement. Disclaimer, however does
not affect the issue in a passing off action

When mark is copied

If the infringer has absolutely copied the mark and made a facsimile representation of it,
no further evidence is required. That is sufficient by itself without more. The thing speaks
for itself52. When the similarities are so close as to make it impossible to suppose that
such marks were devised independently of each other, in the absence of evidence of a
common origin, the conclusion must be that one party copied the mark of the other53. In
such cases lack of explanation of the circumstances in which the device was adopted is
important.

Goods
The expression in relation to any goods in respect of which the trade mark is registered
in Section 29(1) makes it clear that there is no infringement of the mark unless the
infringer uses the mark in relation some goods covered by the registration. Where the
goods are goods of the same description or closely associated with plaintiffs goods, no
action for infringement will lie, but an action for passing off may lie. To overcome this
difficulty trade marks are often registered for a wider specification of goods than for
51

In Brooke Bond v. Raj Kamal, 1999 PTC 237 where the defendant had copied deliberately the color
scheme get-up and the words Super Dust Tea of the plaintiffs registered trade mark, interim injunction
was granted.
52
Taw v. Notek (1951) 68 RPC 271
53
Subbiah Nadar v. Kumaraval (1946)63 RPC 265 at 273(HL)

53

which they are intended to be used by making it comprehensive enough to include goods
of same description and associated goods such as parts and accessories. Under Section 29
of the Trade marks Act, 1999 the use of a similar mark in relation to similar goods is an
infringement.
1. The description of goods apparatus, devices and fittings for use with electric lights
and electric light installation was held to include lamp-holders. General Electric v.
Pyara Singh54.
2. In Jay v. Ladler55, it was held that the plaintiff was entitled on the strength of the
registered trade mark only to an injunction to restraint defendant from using his device in
respect of goods mentioned in the register.
3. In Nestle v. Milkmade56, it was held that toffees do not come within the ambit of milk
and milk preserves, cream, butter, cheese and edible oils and fats
4. In Philip Morris v. Golden Tobacco57, it was held based on the definition of cigarettes
in Websters Dictionary, that the description of goods tobacco manufactured and un
manufactured included cigarettes.
5. In Brijlalal v. Paras58, it was held that Bathroom and sanitary fittings (class11)
included gratings and soap discs

54

AIR 1974 P&H 14

(1889)6 RPC 136
56
AIR 1974 Del 40
57
AIR 1986 Del 145 at 146
58
1986 PTC 380 at 387
55

54

Comparative advertisement- what is and what is not permissible

In Reckitt & Colman of India Ltd. v. M.P. Ramachandran59 and in Reckitt & Colman v.
Kiwi TTK60, the court after considering the cases on the subject summarized the law as
follows:
1. The tradesman is entitled to declare his goods to be the best, in the world, even though
the declaration untrue.
2. He can also say that his goods are better than his competitors, even though such
statement is untrue.
3. For the purpose of saying that his goods are the best in the world or his goods over the
goods of others.
4. he, however, cannot , while saying that his goods are better than his competitors, say
that his competitors goods are bad. If he says so, he really slanders the goods of his
competitors. In other words he defames his competitors and their goods which is not
permissible.
5. If there is no defamation to the goods or to the manufacturer of such goods no action
lies, but if there is such defamation an action lies and if an action lies the recovery of
damages for defamation, then the court is also competent to grant an order of injunction
restraining repetition of such defamation.
Section 29(9) under which the advertising of the mark constitutes infringement in certain
circumstances.

59
60

1999 PTC 741(Cal)

1996 PTC 393 at 339(Del)

55

Malicious falsehood- comparative advertisement- poster claiming to under cut

competitors process - The issues for the court in a malicious action concerning
comparative pricing were:1. Whether the defendants statements were directed at the claimant;
2. The meaning of the statements;
3. Whether the meaning was false;
4. Whether they were intended and likely to be taken, seriously;
5. Whether they were published maliciously; and
6. Whether there was a likelihood of the claimant sustaining actual damage as result of
publication of the statements.

Cases of comparative advertising give rise to a cause of action where a trader sought to
denigrate his competitors goods or services. In assessing whether price competition
denigrated competitors goods or services, the correct test was whether the statements
were specifically aimed at the claimant in direct comparison with the defendant61.

Infringement and passing off- comparative advertisement- disparagement

In Pepsico Inc v. Hindustan Coca Cola62, the defendant had compared the two drinks and
explained to the consumers that one drink was strong and the other drink was sweet and
that children like the sweet. This was only an attempt to puff up its products only. Prima
facie no case was made out for disparagement and the defendants were passing off their
goods as those of the plaintiffs.

61
62

DSG Retail Ltd v. Comet Group Plc. [2002] FSR 899 at 907
2001 PTC 699 (Del)

56

In order to succeed in an action the plaintiffs have to establish the following key
elements:
1. A false or misleading statement of fact about a product.
2. That statement either deceived, or had the capacity to deceive, a substantial segment of
potential consumer.
3. The deception was material, in that it was likely to influence consumers purchasing
decisions.

Disparagement- dictionary definition

Blacks law dictionary defines disparagement of goods as A statement about
competitors goods which is untrue or misleading and statement made to influence or
tends to influence the public not to buy. Disparagement in the Chambers Dictionary
means to dishonor by comparison with what is inferior; to talk slightly of, to belittle.
This was quoted in Pepsi Co Inc v. Hindustan Coca Cola63.
In order to decide the question of disparagement the court has to come to the conclusion
as to how many customers would be influenced by advertisement material into not
purchasing a particular product instead of purchasing the rival product.
To suggest that the drink is liked by the children and to say that Pepsi is a sweet drink but
not a strong drink, is hardly disparaging. To say that adults prefer Thumps Up and Pepsi
is a sweet drink but not a strong drink, even though not true would not be disparagement.
The expression Be cool not a fool also does not denigrate or disparage the goods of the
plaintiffs.

63

2001 PTC 699 (Del)

57

It is a well known law that merely puffing is not dishonest and poking fun at a
competitor is a normal practice in comparative advertising and is acceptable in the
market64.

Use in accordance with Section 2(2) of the 1999 Act

The expression uses in the course of trade, a mark.. in Section 29(1) shows that the
defendant must use the mark in conformity with definition of use under Section 2(2)
and need not necessarily use it as a trade mark. In other words, the purpose for which the
mark is applied is immaterial65.

Use of mark as part of trading style or corporate name

The use of a registered trade mark as part of trading style of another dealing in same kind
of goods will constitute infringement of the mark. Such use is now an infringement under
Section 29(5) of the Trade Marks Act, 1999.
In Ellora Industries v. Banarasi Dass66, the plaintiff was the registered proprietor of the
trade mark ELORA for watches, time pieces, clocks, etc., The defendants sold time
pieces under the mark Gargon but used their trading style Ellora Enterprise on the
cardboard container and in advertisement. Injunction was granted.

64

P.Narayanan, Law of Trade Marks and Passing off, , 6th Ed. Eastern Law House.
Unic v. Lyndeau [1964] RPC 37 at 41
66
AIR 1980 Del 254.
65

58

In Sarabhai International v. Sara Exports67, Sara Exports International was held an

infringement of the registered trade mark SARA. The plaintiffs were also the proprietor
of the trade mark Sarabhai
In Poddar Tyres v. Bedrock Sales Corporation68, it was held that the fact that a person is
selling exclusively goods bearing a registered trade mark as permitted users or
manufactured by permitted users does not entitle him to use the mark as part of his
trading style or company name.

Use of translation of the registered trade mark as a part of corporate mark

In Bhatia Plastics v. Peacock Industries69, it was held that the use of the peacock (English
translation of Mayur, a registered trade mark) as part of the defendants corporate name
was held infringement of the registered trade mark.
In Dolphin Laboratories Ltd. v. Dolphin Organics Ltd70, the plaintiffs had registered and
used the trade mark DOLPHIN for pharmaceutical preparations. The defendant company
was established subsequently for manufacture of similar products. Injunction restraining
the use of the word as part of the corporate name or as a trade mark was granted.
Defendants also restrained from proceedings with the proposed public issue under any
name containing the word Dolphin.

67

1985 PTC 105

AIR 1993 Bom 237
69
AIR 1995 Del 144
70
1995 AIPC 23
68

59

Use of mark as part of title of publication

In Biochem Pharmaceutical Industries v. Biochem Synergy Ltd71, the plaintiff had
registered the word BIOCHEM in Part B in respect of pharmaceutical preparations and
used it over 33 years. The defendants were manufacturers of bulk drugs, intermediates
and chemicals. Their corporate name included the word BIOCHEM. Interim injunction in
respect of infringement alone granted.
Use of a registered trade mark as a part of the corporate name of a third party
manufacturing similar goods is an infringement of the registered trade mark.
In Century Continuous Stationary Pvt. Ltd. v. Radhey Shyam Gupta72, the plaintiff
respondent was the prior user and the registered proprietor of the mark CENTURY for
stationary for use in computers. Defendant appellants were manufacturing paper for use
in computers-Stationary included paper-Plaintiff entitled to injunctive relief.

Similarity in design of the article

Where the defendant has copied the design or shape of the article sold by the plaintiff, it
may be a relevant matter for consideration under passing off and not under infringement;
for design or shape of the article does not form part of the trade mark. A distinctive
picture of the shape of the goods may be registered as a trade mark in which case it may
be infringed by the use of such picture but not by making an article of that shape73.

71

1998 PTC 267

1998 PTC 553(Del)
73
James Tm (1886)3 RPC 340
72

60

No association between the products of the two companies

In Raymond Limited v/s Raymond Pharmaceuticals Private Ltd74, there was infringement
of trade mark 'Raymond' . Defendant was using the mark as part of its corporate name
since 1983. No action taken till 2005. The name 'Raymond' found to be a common name
.There was no attempt by defendant to take unfair advantage of the plaintiff. Both
companies in different business and goods .No association between the products of the
two companies. Held that plaintiff is not entitled to Interim injunction.

Mere laches or acquiescence cannot deny the Relief of injunction

Pfizer Products Inc v/s Rajesh Chopra75, there was an application seeking interim
injunction against infringement of trade mark "Zoloft" .Defendant also claiming
ownership of the mark and filed application for registration while seeking cancellation of
the mark of the plaintiff. Both the parties were using the marks for pharmaceutical
products. Defendant did not claim to be a long user of the mark. It was held that mere
laches or acquiescence cannot deny the Relief of injunction. Prima facie case of
infringement as well as of dishonest passing off made out, so interim injunction granted
The same principle was also held in NOVARTIS AG v/s Wanbury Ltd. & Anr76 .

Whether the numeral is an essential part of the label

In Shaw Wallace & Co. Ltd. & Anr v/s Mohan Rocky Spring Water Breweries Ltd77 the
plaintiff was claiming infringement of its trade mark "Haywards 5000" used for strong

74

2007 (35) PTC 334 (BOMBAY)

2007 (35) PTC 59 (DELHI)
76
2005 (31) PTC 75 (DELHI)
77
2006 (33) PTC 180 (BOMBAY)
75

61

beer. Defendant was using trade marks "Prestige 5000" and "Four Square 5000" for its
bottled water. Use of numeral "5000" by the defendant was identical to the trade mark of
plaintiff. The numeral "5000" not disclaimed by the plaintiff as is apparent from the
registration. The court was of the opinion that, it cannot be said in the present case that
the numeral "5000" is not an essential part of the trade-mark of the Plaintiff and is not
associated exclusively with the Plaintiffs. It was held that Held that it cannot be said that
numeral "5000" was not essential part of trade mark of plaintiff .Interim injunction
against use of numeral "5000" by the defendant, granted.

3.5 Acts not constituting infringement with illustrative case laws

Statutory provisions- Section 30 of the Trade marks Act, 1999 deals with certain
instances of use of the trade mark which in the circumstances mentioned therein do not
constitute infringement. Apart from these specific cases, any use of the trade mark
beyond the scope of the registration will not be considered an infringement of the mark.
Section 28(2) provides that the exclusive right conferred by registration is subject to any
conditions or limitations entered on the register. Section 28(3) protects the rights of
proprietors of similar marks concurrently registered. In appropriate cases the validity of
the registration itself can be challenged, for the rights conferred by registration are
subject to the registration being valid78. The registered proprietor cannot interfere with
the rights of prior users of similar marks79. The right to bona fide use of a name, place of
business and descriptive words is protected by Section 35.

Section 30 of the Trade Mark Act, 1999- Limits on effect of registered trade mark
78
79

Section 28(1) of the Trade Marks Act, 1999

Section 34 of the Trade Marks Act, 1999

62

(1) Nothing in Section 29 shall be construed as preventing the use of a registered trade
mark by any person for the purposes of identifying goods or services as those of the
proprietor provided the use(a) is in accordance with honest practices in industrial or commercial matters, and
(b) is not such as to take unfair advantage of or be detrimental to the distinctive
character or repute of the trade mark.
(2) A registered trade mark is not infringed where(a) the use in relation to goods or services indicates the kind, quality, quantity,
intended purpose, value, geographical origin, the time of production of goods or of
rendering of services or other characteristics of goods or services;
(b) a trade mark is registered subject to any conditions or limitations, the use of the
trade mark in any manner in relation to goods to be sold or otherwise traded in, in any
place, or in relation to goods to be exported to any market or in relation to services for
use or available or acceptance in any place or country outside India or in any other
circumstances, to which, having regard to those conditions or limitations, the registration
does not extend;
(c) the use by a person of a trade mark(i) in relation to goods connected in the course of trade with the proprietor or a
registered user of the trade mark if, as to those goods or a bulk or which they form part,
the registered proprietor or the registered user conforming to the permitted use has
applied the trade mark and has not subsequently removed or obliterated it, or has at any
time expressly or impliedly consented to the use of the trade mark; or

63

(ii) in relation to services to which the proprietor of such mark or of a registered

user conforming to the permitted use has applied the mark, where the purpose and effect
of the use of the mark is to indicate, in accordance with the fact, that those services have
been performed by the proprietor or a registered user of the mark;
(d) the use of a trade mark by a person in relation to goods adapted to form part of,
or to be accessory to, other goods or services in relation to which the trade mark has been
used without infringement of the right given by registration under this Act or might for
the time being be so used, if the use of the trade mark is reasonably necessary in order to
indicate that the goods or services are so adapted, and neither the purpose nor the effect
of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a
connection in the course of trade between any person and the goods or services, as the
case may be;
(e) the use of a registered trade mark, being one of two or more trade marks
registered under this Act which are identical or nearly resemble each other, in exercise of
the right to the use of that trade mark given by registration under this Act.
(3) Where the goods bearing a registered trade mark are lawfully acquired by a person,
the sale of the goods in the market or otherwise dealing in those goods by that person or
by a person claiming under or through him is not infringement of a trade by reason only
of(a) the registered trade mark having been assigned by the registered proprietor to
some other person, after the acquisition of those goods; or
(b) the goods having been put on the market under the registered trade mark by the
proprietor or with his consent.

64

(4) Sub-section (3) shall not apply where there exists legitimate reasons for the
proprietor to oppose further dealings in the goods in particular, where the condition of the
goods, has been changed or impaired after they have been put on the market.

Use for identifying the goods or services as that of the proprietor- Section 30(1)
Any person can use the mark for identifying the goods as that of the proprietor if such
usea) Is in accordance with the honest practices in industrial or commercial matters, and
b) Does not take unfair advantage of or be detrimental to the distinctive character or
repute of the trade mark. This applies to use in comparative advertisement.

Use not covered by registration- Section 30(2) (b)

Section 30(2) (b) merely expresses in clear terms that the use of the registered trade mark
by any person in any manner in any place or in any circumstance not covered by the
scope of the registration, does not constitute infringement, for, obviously, infringement
arises only when the infringer trespasses on the territory of the registered propiretors
right and not otherwise.

Use of a registered proprietors goods- Section 30(2) (c) (i)

When a person uses the trade mark in relation to goods upon which the registered had
once applied the mark and had not subsequently removed it or had consented to the use of
the mark, such use does not amount to infringement. The original application of the mark

65

by the registered proprietor may be on the goods actually sold or on a bulk of which they
form part.
In relation to services to which the proprietor has applied the mark; where the purpose
and effect of the use of the mark is to indicate that those services have been performed by
the proprietor- Section 30 (2) (ii)
The object of this section is to prevent the owner of a trade mark claiming infringement
in respect of a product which he has produced and to which he has attached the trade
mark80. It has been held that where a parent company chooses to manufacture and sell
wholly or partly through subsidiary companies in different parts of the world products
which bear the same trade mark, neither the parent nor any member of the group nor any
subsidiary can complain in any country if those products are sold or resold under that
trade mark. The legal ownership of the trade mark does not go further and enable the
owner or registered user to ensure that products manufactured elsewhere are not sold
within the territory of any country81.

Winthrop v. Sun Ocean, the plaintiffs were group of companies controlled by one
manufactured and sold in various countries inter alia an analgesic under the brand name
PANADOL without any condition as to resale or export of the product of the purchasers.
The defendants bought the product manufactured in the U.K by one of the group
companies and imported and sold it in Malaysia. An action for infringement and passing
off were dismissed

80
81

P.Narayanan, Law of Trade Marks and Passing off, 6th Ed. Eastern Law House.
Winthrop v. Sun Ocean [1988] FSR 430 at 437 (HC of Malaysia)

66

Use on parts and accessories- Section 30(2) (d)

This section provides that a trade mark registered for any goods can, under certain
circumstances, be legitimately used in relation to their parts and accessories
manufactured by others. The question of infringement will arise only when the mark is
registered for parts and accessories. There may, however be no need for invoking the
section when the registration does not cover parts and accessories. There may, therefore,
be no need for invoking the section when the registration does not cover parts and
accessories. The section however, does not exclude the possibility of passing off resulting
from the use of the mark even if such use does not amount to infringement82. In order to
use the mark within the scope of this section the following conditions have to be
satisfied:
a) The goods on which the mark is used must be adapted to form part of, or accessory, to
some goods for which it is registered;
b) The use of the mark must be reasonably necessary in order to indicate that the goods
are so adapted; and
c) Neither the purpose nor the effect of the use of the mark must be to indicate a
connection in the course of trade between any person and the goods, which is not in
accordance with the fact.

What goods are adapted to form part of or necessary to other goods, what is meant by
reasonably necessary, and what is the effect of the use of the mark are all questions

82

Kodak v. London Stereoscopic (1903) 20 RPC 337 at 348

67

which depend for their answers on the particular fact of the case. The exact scope of the
section has not yet been clarified by judicial interpretation83.

Use of similar marks by other registered proprietors

Section 30(2) (e) provides that the use by different persons of goods bearing a registered
trade mark, the sale of or dealing in those trade marks in not considered infringement of
one another. This section acts as a corollary to Section 28(3) which defines the scope of
the rights conferred by concurrent registration of similar goods.

3.6 Dilution of Trade Mark

Dilution is the use that causes a gradual diminution in the marks distinctiveness
effectiveness and hence value. This kind of infringement corrodes the senor users
interest in the trade mark by blurring its product identification or by damaging positive
associations that have attached to it.84
Dilution can occur in three ways; by Blurring by Tranishment and by Cyber
squatting. Under dilution by blurring, customers or prospective customers will see the
plaintiffs mark used by other persons to identify one source may be diluted and
weakened.
But no confusion as to source, sponsorship, affiliation or connection has occurred. Thus
the trade mark per se will not indicate one source. Accordingly the uniqueness and
exclusivility of the mark will be eroded.

83
84

P.Narayanan, Law of Trade Marks and Passing off, 6th Ed. Eastern Law House
Ameritech Inc. v American Information Technologies Corp. 811 F 2d 960.

68

Dilution by tranishment occurs when the effect of unauthorized use by a third party will
result in degradation; or dilution of the distinctive quality of the mark.
Cybersquatting- This activity is defined to be the conduct of one who reserves with a
network information centre a domain name consisting of the mark or name of the
company for the purpose of relinquishing the right to that domain back to the legitimate
owner for a price85.
Judicial Definition of Dilution- The underlying rationale of the dilution doctrine is that
the gradual diminution or whittling away of the value of a trade mark, resulting from use
by another, constitutes an invasion of senior users property right and goodwill in his
mark and gives rise to an independent wrong. The wrong is dependent neither upon a
showing of competitive relationship nor that the goods are related, nor of a likelihood of
confusion86.

4. Action for Infringement

4.1 JurisdictionSection 134 of the Trade Marks Act, 1999 deals with jurisdiction in matters relating filing
a suit for infringement.

Section 134- Suit for infringement, etc., to be instituted before District Court
(1) No suit(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
85
86

McCarthy of Trademarks and Unfair Competition, 4th Ed., Vol 4.

G.B Kent & Sons Ltd. v. P.Lorillard Co 114 F Supp 621.

69

(c) for passing off arising out of the use by the defendant of any trade mark which is
identical with or deceptively similar to the plaintiffs trade mark, whether registered or
unregistered,
shall be instituted in any court inferior to a District Court having jurisdiction to try the
suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1), a "District Court having
jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure,
1908 or any other law for the time being in force, include a District Court within the local
limits of whose jurisdiction, at the time of the institution of the suit or other proceeding,
the person instituting the suit or proceeding, or, where there are more than one such
persons any of them, actually and voluntarily resides or carries on business or personally
works for gain.
Explanation: For the purposes of sub-section (2), "person" includes the registered
proprietor and the registered user.

A suit for infringement of registered trade mark must be filed in a District Court having
jurisdiction or in a High Court having original jurisdiction to entertain such suits. The
jurisdiction of the court and the procedure are governed by the Code of Civil Procedure.
The infringement must have taken place within the territorial jurisdiction of the court.
The period of limitation for filing the suit is three years from the date of
infringement87.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 wrong88.

87
88

Under Limitation Act, 1963

Amruthanjan v. Mehta (1977)2 IPLR 20 at 38

70

Under Section 134(2) the District Court within whose territorial jurisdiction the person
instituting the suit or proceeding actually or voluntarily resides or carries on business or
personally works for gain can entertain a suit for infringement of registered trade mark.
This may act as deterrent against infringement by persons carrying on business far away
from the place of business of the potential plaintiff.
In Surendra Kumar Maingi v Dodha House89, it was held that the defendant must be
carrying on business within the jurisdiction of the District Court.
Where there was no instance of sale of infringing goods and the plaintiff had no office or
branch in Delhi, nor any pleading to that effect, Delhi H.C had no jurisdiction to entertain
the suit. Ex parte injunction grant vacated90.
In deciding the question of jurisdiction of the court to entertain an application for interim
injunction, the averments in the plaint should be considered. It does not depend upon the
defense of the defendant91
Maintainability of suit for infringement- Where a suit filed for infringement is subsequent
to the date of application for registration, the suit is maintainable since the mark when
registered will date back to the date of application for registration92.
The question of jurisdiction being a mixed question of fact and law can be decided at the
interlocutory stage. If the plaintiff has pleaded the necessary facts in the plaint to invoke
territorial jurisdiction, that is sufficient93.

89

AIR 1998 All 43.

Gupta Bros Conduit Pipe Manufacturing Co. v. Anil Gupta, 2002(24) PTC 318 (Del)
91
Indian Herbs Research & Supply Co. v. Lalji Mal 2002(24) PTC 318 (Del).
92
Mumtaz Ahmed v. Pakeeza Chemicals 2003(26) PTC 567
93
Brooke Bond v. Raj Kamal 1989 PTC 237 at 242.
90

71

ProcedureThe procedure to be followed in conducting a suit for infringement is not laid down in the
Act or the Rules frames there under. They are governed by the relevant provisions of the
Civil Procedure Code and the rules if any framed by the High Court.
Two suits filed at different times
Where a suit for infringement of trade mark and passing off was filed at one time based
on facts existing at the date of that suit, a second suit filed subsequently for infringement
and passing off on the same subject- matter based on facts existing at the date of second
suit is not barred by Order 2 of CPC94.
Civil and Criminal Proceedings
The Act provides for civil as well as criminal proceedings against infringement action of
trade marks95. Both these actions can proceed simultaneously, and if so, no prejudice is
likely to be caused to any of the parties, in as much as both the actions are not mutually,
but clearly co-extensive and quite different in content and consequence96.

4.2 Persons who can be sue in infringement

The Plaintiff in a suit for infringement must be one of the following persons:
a) The registered proprietor of the trade mark or his legal successors97. Registered
proprietor is the person for the time being entered in the register as proprietor of the
trade mark98.
94

Bengal Waterproof v. Bombay Waterproof, AIR 1997 SC 1398

See Section 103, 104 and 134 of the Trade Marks Act, 1999
96
Sumeet Machines v. Sumeet Research and Holding 1993 PTC 75 (Mad)
97
An unregistered firm as registered proprietor can file a suit for infringement notwithstanding Section
69(2) of the Partnership Act as such suit is not for the enforcement of rights arising from any contract.
Virendra v. Varindera AIR 1982 Del 482 at 486 is also an important case in this regard.
95

72

b) A registered user of the trade mark subject to the provisions if Section 5299.

Applicant for registration of a mark- Since registration of a mark is granted with effect
from the date of application, an applicant for registration is qualified to file a suit for
infringement provided the trademark is registered before the hearing the suit100.

In a combined suit for infringement and passing off if the trade mark is not registered at
the date of hearing but the plaintiff succeeded in passing off and obtained relief, the court
may grant leave to apply for an injunction for infringement when the mark is
registered101.

Assignee of a registered markThe assignee of a registered trade mark can file a suit for infringement before the
registration of the assignment is effected, for registration of the assignment is not a

Section 69(2)- Effect of non-registration-(2) No suit to enforce a right arising form a contract shall be
instituted in any court by or on behalf of a firm against any third party unless the firm is registered and the
persons suing are or have been shown in the Register of Firms as partners in the firm.
98
See Section 2(1) (w), Section 45, Section 28(1) and (2) of the Partnership Act.
99
52. Right of registered user to take proceedings against infringement
(1) Subject to any agreement subsisting between the parties, a registered user may institute proceedings for
infringement in his own name as if he were the registered proprietor, making the registered proprietor a
defendant and the rights and obligations of such registered user in such case being concurrent with those of
the registered proprietor.
(2) Notwithstanding anything contained in any other law, a registered proprietor so added as defendant
shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
100
101

Anwar Basha v. Natarajan AIR 1980 Mad 56.

Ihlee v Henshaw (1886)3 RPC 15.

73

condition precedent to the suing102. The assignment confers title to the mark on the
assignee and registration of the assignment is only the completion of his title.

Legal heirs of the deceased proprietor

After the death of the registered proprietor his legal heirs could bring an action for
infringement even if they had not taken steps to register their title under Section 45 of the
Act. The cause of action is the infringement of the trade mark. Registration of the title
under Section 45 does not by itself give a cause of action. All that it gives is recognition
of the title which already inheres in the legal representatives of the deceased proprietor103.

Limited companies
When a private limited company is converted into a public limited company, there is no
change in the legal personality of the company in question. There is only an alteration in
the articles of association of the company. Such a company can maintain a suit for
infringement of its registered trade mark even if the alteration in its name has not been
effected in the Registrar of Trade Marks104.

Executors of the proprietor

Where the registered proprietor dies during the pendency of the action, the action would
be continued by his executors105. This is based on the principle that infringement of a

102

Blightty v Scottish House (1927) 44 RPC 269

Modi Theads v Soms 1993 PTC 32.
104
Hindustan Lever v. Bombay Soda, AIR 1964 Mys 173.
105
John Onkey v Dalton (1887)4 RPC 313
103

74

trade mark causes injury to the estate of the proprietor. The cause of action is not
extinguished by the death of the plaintiff but survives to his executors.

Sole Selling agents and importers

The sole selling agents of the registered owners of a trade mark cannot sue for
infringement of the mark but may join as co-plaintiff with registered owners106.

Registered user
A registered user can sue for infringement in the circumstances stated in Section 52. This
is subject to any agreement between the proprietor of the mark and the registered user.
A licensed user not registered as registered use is not competent to file a suit for
infringement. In such a case the suit will be dismissed107.

Court Receiver
In Court Receiver, High Court of Bombay v R.R Ommerbhoy Pvt. Ltd108. it was held that
the court receiver appointed to administer the assets of a firm in dissolution can file a suit
for protecting the registered trade mark of the dissolved firm.

Foreigners
A foreign proprietor of a trade mark registered in India can sue for infringement in India.
This applies equally to passing off action where the foreign plaintiff has built up a

106

Richard v. Buthcer (1890) 7 RPC 288

Glaxo v Samrat AIR 1984 Del 265
108
2003(27) PTC 555(Bom)
107

75

reputation for his goods in India. A foreign plaintiff could sue to protect his goodwill and
reputation in India109.

4.3 The persons who may be sued

The defendant in a suit for infringement is the infringer, that is, the person who uses or
contemplates or threatens to use a trade mark similar to the plaintiffs registered mark in
respect of the same goods. Thus a quia timet110 action will lie.
Section 29(2) to (9) lists various kinds of uses which constitute infringement. Any person
who uses the registered trade mark within the scope of any one or more of such uses can
be sued for infringement.

Applicant for registration

Where an application for registration of a trade mark is filed by the owner of a similar
mark(whether registered or not) may file a suit for infringement or passing off, as the
case may be, against the applicant because the applicant is deemed to have proposed to
use the mark. The suit may be filed anywhere in India unless application is limited to
specified territories. Where the applicant has claimed user of his mark a fortiori111 the
suit can be filed.

109

Panhard v. Panhard (1901) 18 RPC 405.

A legal doctrine that allows a person to seek equitable relief from future probable harm to a specific
right or interest. (Black, 7th Edn. 1999)
111
An argument which concludes that something does not take place, because causes much weaker than
those operate to bring it about are effective in another case.
110

76

Master responsible for servants acts

A master being liable for the acts of his servants can be sued for the infringement
committed by his servant whether the servant has acted with or without the knowledge of
the master. This is so even if even if the servant has acted contrary to the masters express
orders.

Directors and promoters of a limited company

Where a limited company is the defendant, the directors of the company cannot be joined
as co-defendants unless they have personally committed or directed infringing acts.
Persons directly responsible for the promotion of a company e.g. the signatories of the
memorandum of association for the purpose of committing a wrongful act are liable to be
made defendants. Where a company had deliberately engaged in a course of dishonest
trading for the purpose of passing off, the directors of the company may be held liable112.

Personal Liability of directors

A director of a company is not automatically to be identified with his company for the
purpose of the law of tort. However small the company may be and however powerful his
control its affairs. In every case where it is sought to make him liable for his companys
torts, it is necessary to examine with care what part he played personally in regard to the
acts or acts complained of.
Prima facie a managing director is not liable for tortuous acts done by the servants of the
company unless he himself is privy to the act, that is to say unless he ordered or procured
the acts to be done.
112

Oertli v Bowman [1956] RPC 282.

77

The mere fact that a person is director of a limited company does not by itself render him
liable for torts committed by the company during the period of his directorship.
Nevertheless a director is liable for those tortuous acts of his company which he has
personally directed or procured to be done113.

Joint tort feasor

A joint tort feasor is one who must have acted in concert with another person in the
commission of the tort. The mere sale in the ordinary way of business of goods which the
vendor was entitled to sell is not tortuous, even though the purchaser might subsequently
use the goods wrongly. The sale of articles which did not in itself infringe a registered
trade mark would not amount to an infringement even if the seller knew that the articles
would be used for the purpose114.

Plaintiffs title
The basis for an action for infringement is the existence if a valid registration. If the
defendant does not admit the entry on the register, it must be proved by production of a
certificate from the registrar. The certificate issued at the time of registration is not
sufficient for this purpose, since it may not reflect the correct state of the entry at the time
of of filing the suit. A certified copy of the entry on the register must be obtained. In all
legal proceedings relating to trade mark the original registration and all subsequent
assignment and transmissions of the trade mark shall be prima facie evidence of the

113
114

Evans & Sons v. Spritebrand [1985] FSR 267

Cadbury v. Ulmer [1988] FSR 385

78

validity thereof115. Unless, therefore, the validity of the registration is challenged by the
defendant, proof of title to the mark is complete by the production of a certified copy of
the entry on the register.

4.4 Pleadings
There is no special form of pleading prescribed for infringement suit116. The pleadings
must contain clear and concise statements of all material facts relied upon by the plaintiff.
It should specifically allege that the defendant has infringed or threatened to infringe the
registered mark and the relief sought. The reliefs available are an injunction, damages or
account of profits and delivery up of infringing labels. Particulars of the acts committed
by the defendant which form the basis for the alleged infringement must be given. Where
fraud is desired to be raised, it must be specifically pleaded and particulars of fraud
stated. In an infringement action there is no need to plead user of the registered mark or
particulars of user, though it is often given. But in a combined suit for infringement and
passing off of trade mark, the plaintiff should plead that he has used the trade mark and
that by virtue of such user the mark has become distinctive of his goods and acquired
goodwill and reputation.

Written Statements
The defendant in his written statement or statement of defenses should state all the
material facts relied upon him . Where the validity of registration is attacked by way of
defense the defendant must state his grounds and make an application to the appropriate

115
116

Section 31(1) of the TMA, 1999

Order 6 of CPC

79

High Court for the rectification of the register. In such a case the Trial Court will order
stay of the suit pending decision on the rectification proceeding.

The defenses which may be set up by the defendant

The defendant may set up any of the following defenses in an action for infringement
against him depending upon the applicability of the relevant defenses to his case.
1. That the plaintiff in the suit has no title to sue. Questioning the proprietorship of the
trade mark owner may do this.
2. That the use of the mark by the defendant is not an infringement or is protected by the
provisions of Section30 which lists out the acts which do not constitute infringement.
3. That the defendants right to use the contested marks arises by virtue of concurrent
registration.
4 That the defendant is the prior user if the disputed mark
5. That the defendant has been an honest concurrent user.
6. That the use of complained of is merely the defendants bonafide use of his own name,
addresses and description of goods which are protected by the act
7. That the exclusive rights claimed by the plaintiff over the disputed trade mark have
ceased to exist by virtue of the word claimed by the plaintiff becoming a common word,
that is public juris. The words that are within the public domain cannot be claimed as
exclusive proprietorship.
8. That the defendant can attack the validity of the registration of the plaintiff.

80

9. That the plaintiff is debarred from suing or claiming the relief sought by his own
conduct. Example- by his own acquiesce delay or laches or his having acquired his rights
on the trade mark fraudulently.

Defenses which cannot be setup

1. Honest adoption of the mark is not a defense. The defendant cannot plead that he had
adopted the plaintiffs mark without the knowledge of the existence of the plaintiffs trade
mark
2. Innocent infringement cannot be pleaded

The prescribed format that has to be followed for opposing a registered Trademark and
filling a counter statements, etc. are laid down in Trademark Rule 2002. Few formats of
the forms that are required, are added in appendix 2.

81

Chapter 3
Passing off of Trade Marks
1. What is passing off?
Passing off is selling ones own goods under the pretence that they are the goods of
another man.
Passing off occurs when one trader attempts to pass off goods by misrepresenting them so
as to make the consumers believe that his goods are the same as those of another trader.
For example, using a mark Colgate on a tooth paste with a similar get up to pass it off
as Colgate

1.1 Object of the law of passing off

The object of 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.
Goodwill, misrepresentation and damage are the three elements of the tort of passing off,
which is often referred to as the classical trinity of passing off.
The law of passing off has been equated to unfair competition by misrepresentation by
Chistopher Wadlow in the Third Edition of his book The Law of Passing Off.

82

In U.S.A passing off is treated as a form of unfair competition and the subject is referred
to under that heading117. In Canada the courts speak not of passing off but of wrongful
appropriation of the plaintiffs personality, he having a proprietary right in the exclusive
marketing for gain in his personality118
The substantive law of passing off is entirely based on common law, i.e., case law. It is
not defined in the Trade MarksAct, 1999. It is referred to in Section 27(2), Section
134(1)(c) and Section 135. Section 27(2) states that the rights of action against any
person for passing off 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 trade mark. Section 135 specifies
the remedies available in respect of passing off arising from the use of a trade mark.

Relevance of English authorities

In Rob Mathys India v. Synthes AG Chur119, it was held-In cases of passing off action
English authorities may prevail to a certain extent for we have borrowed from and
followed entire gamut of English Common Law and precedents of other countries based
on common mixture of English Common Law developed in the light of local and
statutory perception may not be good guide. Of course; the law laid down by the Supreme
Court being law of the land under Article 141 of the Constitution, has to be followed

1.2 General Principles and the Scope of the Law of passing off

117

Nims on Unfair Competition

Salmond and Haustons Law of Torts, 18th Ed. P.379
119
1997 PTC 669 at 693 (Del) (DB)
118

83

It has been held in various decisions the no man is entitled to represent the goods or
business as being the goods or business of another whether such representation is made
by the use of any mark, name sign, or symbol, device or other means. It is therefore
actionable wrong for any person to pass off his goods or business as the goods or
business of another by whatever means that result may be achieved120.
A trader is not permitted to use any mark, device or other means whereby, although he
does not make a false representation to a direct purchaser of his goods, he enables such a
purchaser to make a false representation to ultimate purchasers of those goods. Where
goods are sold to trade customers who are not themselves deceived but the goods are so
marked or got up as to be calculated to deceive ultimate purchasers, the plaintiffs cause
of action for passing off is regarded as complete, both at law and in equity as soon as the
goods are disposed of to the trade customers.
According to Halsburys Law of England- It is not enough that the goods are merely
capable of being used by dealers to perpetrate frauds on their customers; the goods or
leaflets or other material supplied with them, must be intended or must be of such a
nature as to suggest, or readily or easily lend themselves to such passing off, as otherwise
the consequence is too remote to be attributed to the supplier of the goods.
The basic underlying principle of such an action was stated by Lonngdale M.R. in Perry
v. Truefitt121 to be A man is not to sell his own goods under the pretence that they are
the goods of another man Accordingly a misrepresentation achieving such a result is
actionable because it constitutes an invasion of proprietary rights vested in the plaintiff.
However it is prerequisite of any successful passing off action that the plaintiffs goods

120
121

Office Cleaning Case (1944) 61 RPC 133

(1842) 6 Beav 66 at 73

84

have acquired a reputation in the market and are known by some distinguishing feature. It
is also prerequisite that the misrepresentation has deceived or is; likely to deceive and
that the plaintiff is likely to suffer damage by such deception. Mere confusion which does
not lead to a sale is not sufficient122.

Passing off future goodwill

The court has to decide the case on the basis of the goodwill which is established at the
date the defendant commences the complained of.
The action of passing off can, as the law stands, adequately protect the development of a
growing business. Thus if a claimant has at the relevant date only a modest business in
one or two line of goods, he can still succeed in a passing off action against a company
selling other goods. If the claimants reputation at the relevant date is inadequate to
induce people to believe that the goods and services are the claimants, or connected with
him, then it is the end of the matter.

There is no requirement in the law of passing off for the claimant and the defendant to be
operating in the same field123. However that is not to say that the existence or otherwise

122

Reckitt & Colman v Borden [1990] RPC 341.

The expression common field of activity was coined by Wynne Parry J. in Mc Culloch v. Levis A.
May(Product Distributors) Ltd. reported in 65 RPC 58 in which he held that its presence or absence was
conclusive in determining whether or not there was passing off. However, the requirement that a common
field of activity is conclusive in determining whether there can be passing off has been extensively
criticized by Manning J. in case of Henderson v. Radio Corp. Pty (1969) RPC 218 holding that it would be
unsafe to adopt the view expressed in Mc Culloch case that what has been called a common field of activity
must be established in every case to entitle the plaintiff to succeed. Wit the passage of time, law on the
requirement of common field of activity in a passing off action radically changed. There is no requirement
for a common field of activity to found a claim in passing off. In Marage Studies v. Counter Feat Clothing
Co. Ltd (1991) FSR 145, the so called requirement of the law that there should be a common field of
activity is now discredited. The real question in each case is whether there is as a result of
misrepresentation a real likelihood of confusion or deception of the public and consequent damage to the
123

85

of an overlap is not highly relevant to assessing the evidence of misrepresentation. The

question of whether two companies trade in the same field can be affected by the level of
particularity with which one defines the field. In a vast and extremely diverse industry
such as computer telecommunications industry, care must be taken not to assume that
everyone working within it is working in the same field.

Scope of the Law

The concept of passing off which is a form of tort has undergone changes in course of
time. At first it was restricted to the representation of ones goods as those of another.
Later it was extended to business and services. Subsequently it was further applied
professions and non- trading activities. Today it is applied to many forms of unfair
trading and unfair competition where the activities of one person cause damage or injury
to the goodwill associated with the activities of another person or group of persons.
The gist of the concept of passing off is that the goods are in effect telling a falsehood
about themselves, are saying something about themselves which is calculated to mislead.
The law on this matter is designed to protect traders against that form of unfair
competition which consists in acquiring for oneself, by means of false or misleading
devices, the benefit of the reputation already achieved by the rival traders124. The basic
question in this tort turns upon whether the defendants conduct is such as to tend to

plaintiff. The focus is shifted from external objective test of making comparison of activities of parties to
the state of mind of public in deciding whether it will be confused.
124
Salmond and Heuston, Law of Torts, 17th Ed., at p. 401, quoted in Ellora v. Banarasi Dass AIR 1980 Del
254 at 257.

86

mislead the public to believe that the defendants business is the plaintiffs or to cause
confusion between the business activities of the two125.

Width of the principle of Passing off

The tort (of passing off) is no longer anchored, as in its nineteenth century formulation,
to the name or trade mark of a product or business. It is wide enough to encompass other
descriptive material, such as slogans or visual images, which radio, television or news
paper advertising campaign can lead the market to associate with a plaintiffs product,
provided always that such descriptive material has become part of the goodwill of the
product. And the test is whether the product has derived from the advertising a distinctive
character which the market recognizes126

1.3 Characteristic Elements of Passing off127

The three elements of passing off- classical formulation

The three elements of a passing off action are (1) Reputation (2) Deception (3) Damage.
These are sometimes referred to as the Classical trinity128.
Once misrepresentation is established it is reasonable to infer that customers of the goods
bought them on that misrepresentation, unless there is evidence to the contrary129.
125

Ellora v.Banarasi Dass AIR 1980 Del 254 at 257.

126

Cadbury- Schweppes v Pubsquash [1981] RPC 429.

The Supreme Court in Laxmikant Patel v. Chetanbhai Shah [2002] 3 SCC 65, stipulated three elements
to establish a passing off action: the reputation of goods, the possibility of deception and the likelihood of
damages to the plaintiff
128
Harrods v. Harrodian School [1996] RPC 697

127

87

Essential Characteristics of Passing Off- modern formulation

The essential characteristics which must be present in order to create a valid cause of
action for passing off as stated by Lord Diplock130 are: (1) Misrepresentation, (2) made
by a person in course of trade, (3) to prospective customers of or ultimate consumers of
goods or services supplied by him, (4) which is calculated to injure the business or
goodwill of another trader and (5) which causes actual damage to a business or goodwill
of another trader by whom action is brought (in a quia timet action) will probably do
soIt does not follow that because all passing off actions can be shown to present
these characteristics give rise to a cause of action for passing off. No claim could
however succeed, in absence of all five.
What is relevant is whether the plaintiffs goodwill has suffered or likely to suffer
damage and not whether the defendant has reaped any positive benefit from a
misrepresentation of goodwill.
In Reckitt & Colman v. Borden131, Lord Oliver of Aylmerton summarized the law of
passing off as follows: The law of passing off can be summarized in one short general
proposition- no man may pass off his goods as those of another. More specifically, it may
be expressed in terms of the elements which the plaintiff in such an action has to prove in
order to succeed. These are three in number. First, he must establish a goodwill, or
reputation attached to the goods or services which he supplies in the mind of the
purchasing public by association with the identifying get up under which his particular
goods or services are offered to the public, such that the getup is recognized by the public
129

Mirage Studio v. Counter Feat Clothings [1991] FSR 145.

Erven v. Townend [1980] RPC 697.
131
[1990] RPC 341 at p.406 (HL)
130

88

as distinctive specifically of the plaintiffs goods or services. Secondly, he must

demonstrate a misrepresentation by the defendant to the public leading or likely to lead
the public to believe that goods or services offered by him are the goods or services of the
plaintiff. Whether the public is aware of the plaintiffs identity as the manufacturer or
supplier of the goods or services is immaterial, so long as they are identified with a
particular source which is in fact the plaintiffs. Thirdly, he must demonstrate that he
suffers or, in quia timet action that he is likely to suffer, damage by reason of the
erroneous belief engendered by the defendants misrepresentation that the source of the
defendants goods or services is the same as of the source of those offered by the
plaintiff.
The essentials mentioned above have been adopted by the Courts in India in deciding
cases of passing off. These principles have been time and again reiterated in various cases
decided by the Supreme Court, High Court and the Lower courts as well.

1.4 Means adopted for passing off

The methods adopted by persons for representing their goods or business as goods or
business of other persons include: (1) direct false representation; (2) adoption of a trade
mark which is the same or a colorable imitation of the trade mark of a rival trader; (3)
adoption of an essential part of the rival traders name; (4) copying the get-up or color
scheme of the label used by a trader; (5) imitating the design or shape of the goods; and
(6) adopting the word or name by which the rival traders goods or business is known in
the market.

89

Proof of damage
Although damage or likelihood of damage is the gist of an action of passing off, to
maintain an action proof of damage is not necessary132. But the plaintiff must show that
there is reasonable probability of his being injured by the defendants action, even if the
conduct of the defendant might be calculated to deceive the public133.
The relevant question in passing off is whether the plaintiffs goodwill has suffered or is
likely to suffer damage and not whether the defendant has reaped any positive benefit
misappropriation of goodwill134.
Mere fear of damage is not sufficient; it must be based on substantial grounds135.
In Aktiebolaget Volvo v. Volvo Steels Ltd.136, it was held that the crux of the passing off
action lies in actual or possible or probable deception. The plaintiffs necessarily have to
establish reputation and goodwill. In quia timet action he must show that the probability
of the plaintiffs suffering damage either in trade or to his goodwill.

2. Evidence in a Passing off action

It is essential for success in a passing off action based on the use of a mark or get-up that
the plaintiff should show that the disputed mark or get up has become by user distinctive
of the plaintiffs goods so that the use in relation to any goods of the kind dealt in by the
plaintiff of that mark or get up will be understood by the trade and the public as

132

Century v.Roshanlal AIR 1978 Del 258.

Bulmer v. Bollinger [1978] RPC 79 at 108.
134
Stringfellow case [1984] RPC 501.
135
Stringfellow case [1984] RPC 501
136
1998 PTC (18)(DB) 47
133

90

indicating the plaintiffs goods137. It is not necessary to prove that all persons or
substantially all persons in the market are aware of his mark or get up. However the
plaintiff must show that to a substantial proportion of persons who are purchasers or
probable purchasers of goods of the kind in question the name, mark or other symbol or
origin indicates the goods of the plaintiff; but it is not necessary that all or almost all such
purchasers must entertain that view138. Where the defendants use of it is limited to a
particular area, it is not necessary for the plaintiff to prove that his mark is recognized by
everyone in the area; it is sufficient if there is user in the area of the mark exclusively in
connection with the plaintiffs business139.
The term distinctive when used in connection with passing off must be taken as
meaning factually distinctive and not merely inherently distinctive.
In Aktiebolaget Volvo v. Volvo Steels Ltd140, it was held that deception may be of
several kinds i.e that the public may think that the goods manufactured by the defendants
are in fact manufactured by the plaintiffs or that there is some trade connection or
association of the defendant with the plaintiffs.
The party alleging passing off should prove in the first instance that any name which he
claims as his trade name has been so exclusively used in connection with his
manufacture, or with the goods which he sells, that his goods have come to be known in
the market by that name, that anyone to whom the name was used would understand that
his goods were referred.

137

Kala Niketan v. Kala Niketan AIR 1983 Del 161.

Saville Perfumary v June (1941) 58 RPC 147 at 175
139
Chattar Extractions v Kochar Oil Mills AIR 1996 Del 144 (DB)
140
1998 PTC (18)(DB) 47
138

91

Distinctiveness or reputation of the plaintiffs mark must relate to the territorial

jurisdiction of the court. What is means else where or the extent to which the defendants
have marketed their goods under the mark anywhere consuming population in the
territory, for example tourists and residents, are from another country, evidence of what
that section of the community knew by the word in question could be relevant.
In a passing off action the plaintiff should positively establish a prior user of his own,
pram facie141.
Quia timet action
It is latin word which means because he fears or apprehends. In legal terminology it has
been defined as an action by which a person may obtain an injunction to prevent or
restrain some threatened act being done, would cause him substantial damage, and for
which money would be no adequate or sufficient remedy quoted in Mars Incorporated v.
Kumar Krishna Mukerjee142. In an action for passing off of the plaintiff has to establish
that the defendants activities or proposed activities will lead to passing off. Hence a quia
timet action will lie.

3. Likelihood of Confusion or deception

The onus of proving deception or likelihood of deception is on the plaintiff.
The question whether or not there is likelihood of deception of the public is ultimately for
the court and not for the witnesses to decide. The court will consider whether the
resemblances and the differences are such as naturally arise from the necessity of the
case, or whether, on the other hand the differences are simply colorable and the

141
142

Wander v Antox 1991 PTC 1 (SC)

2003 PTC 60

92

resemblances are such as are obviously intended to deceive the purchaser of the one
article into the belief of its being the manufacture of another person. Where there is no
reason for the resemblance, except for the purpose of misleading, it will infer that the
resemblance is adopted for the purpose of misleading.

Tests of comparison of marks or get-up

Where the alleged passing off is based on the similarity of trade marks, or get up, the
principles of comparison of the marks or get-up are the same as those which arise under
infringement or in opposition proceedings. No general rule can be laid down on what is a
colorable imitation or not. Each case must be dealt having regard to its own
circumstances.

Likelihood of comparison and deception

In Halsburys Laws of England, 4th Ed., Reissue 1995, the subject has been dealt with as
follows:
To establish a likelihood of deception or confusion in an action for passing off where
there has been no direct misrepresentation generally requires the presence of two factual
elements1. That a name, mark or other distinctive feature used by the plaintiff has acquired a
reputation among a relevant class of persons; and
2. That members of the class will mistakenly infer from the defendants use of a name,
mark or other feature which is the same or sufficiently similar that the defendants goods
or business are from the source of or connected.

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While it is helpful to think of these two factual elements as two successive hurdles which
the plaintiff must surmount consideration of these two aspects, cannot be completely
separated from each other, as whether deception or confusion is likely is ultimately a
single question of fact.
In arriving at the conclusion of fact as to whether deception or confusion is likely, the
court will regard to:
A. the nature and extent of the reputation relied upon;
B. the closeness or otherwise of the respective fields of the activity in which the plaintiff
and the defendant carry on business;
C. the similarity of the mark, name etc. used by the defendant to that of the plaintiff;
D. the manner in which the defendants makes use of the name, mark etc. complained of
and collateral factors, and
E. the manner in which the particular trade is carried on, the class of persons who it is
alleged is likely to be deceived and all other surrounding circumstances.
In assessing whether confusion or deception is likely, the court attaches importance to the
question whether the defendant can be shown to have acted with a fraudulent intent,
although a fraudulent intent is not necessary part of the cause of action, quoted in
Monogram Tm143 and in SBL Ltd. v Himalaya Drug144.

Passing off- unregistered trade mark

143
144

[2001] RPC 355

67(97) DLT 803

94

In Cadila Health Care v. Cadila Pharmaceutical Limited145, it was held that in action for
passing off on the basis of deceptive similarity the following factors are to be considered
are:1. Nature of the marks i.e. whether the marks are word marks or labels marks or
composite marks i.e. both words and label works.
2. The degree of resemblance between the marks, phonetically similar and similar in idea.
3. The nature of the goods in respect of which they are used as trade marks.
4. The similarity in the nature, character and performance of the goods of the rival
traders.
5. The class of purchasers who are likely to buy the goods bearing the marks they require,
on their education and intelligence and a degree of care they are likely to exercise in
purchasing and/or using the goods.
6. The mode of purchasing the goods or placing orders for the goods, and
7. Any other surrounding circumferences which may be relevant in the extent of
dissimilarity between the competing marks.
Weight age to be given to each of the aforesaid factors depends upon facts of each case
and the same weight age cannot be given to each factor in every case.

In Coca- Cola v. Pepsi- Cola146, the Privy Council has laid down the following principles
which was also quoted in SBL Ltd. v. Himalaya Drug147 as followsI. In considering similarity comparison must be between the defendants mark as used
and a normally imperfect recollection of the plaintiffs mark.
145

2001 (1) CTR 288(SC)

(1942) 59 RPC 127(PC)
147
67(1997) DLT 803 at 813 (DB)
146

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II. In making a comparison no regard should be paid to the fact that some part of the
mark- common to both marks has a descriptive flavor unless it is proved that such part is
in common use in the trade.
III. If after applying he aforesaid propositions the conclusion is reached that the marks
are similar it is irrelevant that the defendant had used differentiating features of get up.

In Amritdhara Pharmacy v. Satya Dev Gupta148, the Supreme Court has laid down as
followsThe Act149 does not lay down any criteria for determining what is likely to deceive or
cause confusion within the meaning of Section 8(c) and Section 19(1). Therefore every
case must depend upon its own particular facts, and the value of authorities lies not so
much in the actual decision as in the tests applied for determining what is likely to
deceive or cause confusion.
A trade mark is likely to deceive or cause confusion by its resemblance to another already
on the register, if it is likely to do so in the course of its legitimate use in a market where
the two marks are assumed to be in use by traders in that market. In considering that
matter, all the circumstances of the case must be considered.
What degree of resemblance is necessary to deceive or cause confusion must be in the
nature of things be incapable of priori. For deceptive resemblance two important
questions are: (1) who are the persons to whom the resemblance must be likely to deceive
or confuse, and (2) what rules of comparison are to be adopted in judging whether such
resemblance exists. As to confusion, it is perhaps an appropriate description of the state

148
149

AIR 1963 SC 449

Trade and Merchandise Act, 1958

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of mind of a customer who on seeing the mark thinks that it differs from the mark on
goods which he had previously brought, but is doubtful whether hat impression is not due
to imperfect recollection
In this case Amritdhara and Lakshmandhara were held similar because of the overall
structural and phonetic similarity.

In Harrods Ltd. v Harrodian School Ltd.150, Millett, LJ observed that;

Deception is the gist of the tort of passing off, but it is not necessary for a plaintiff to
establish that the defendant consciously intended to deceive the public if that is the
probable result of his conduct. Nevertheless the question why the defendant chose to
adopt a particular name or get up is always highly relevant. It is a question which falls to
be asked and answered.

Medicines and pharmaceutical- essentials laid down

In SBL Ltd. v. Himalaya Drug Co151, the court has summed up the principles as follows:
1. The crucial tests to be applied for judging an infringement action or a passing off
action in the field of medicinal and pharmaceutical preparations remain the same as are
applicable to other goods. However the case of preparations trading whereof is governed
by statutory rules or regulations additional considerations become relevant. They are:
i. the manner in which the trade is carried on, such as sales being made only by
authorized or licensed vendors who will be educated, also having special knowledge of
medicines and pharmacy;

150
151

[1996] RPC 697 at 706

67(1997) DLT 803 (DB)

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ii. the class of persons who would be the purchasers, whether they would be accompanied
by doctors prescription and would in all probability remain in touch with doctor while
consuming the medicine purchased. The court would ask- is there such a similarity
between the two trade marks that a doctor or a chemist or the both by some carelessness
in expression, some obscurity in handwriting, some slip of recollection or some careless
mistake not expected of a trained professional like doctor or chemist might lead to the
one being confused for the other? Regard shall be had not to the hypothetical possibilities
but to ordinary practical business probabilities as applies to circumstances of an
individual case.
2. The decision on the question of likelihood or deception is to be left to the court.
3. Nobody can claim exclusive right to use any word, abbreviation, or acronym which has
become publici juris. In the trade of drugs it is common practice to name a drug by the
name of the organ or ailment which it treats or the main ingredients of the drug. Such
organ, ailment or ingredients being publici juris or generic cannot be owned by anyone
for use as trade mark
4. Whether such feature is publici juris or generic is a question of fact.
5. If the two trade marks by two competing traders use a generic word or an expression
publici juris common to both the trade marks it has to be seen if the customers who
purchase the goods would be guided by the use of such word or expression or would
ignore it and give emphasis to prefixes or suffixes or words used in association therewith.
The primary question to be asked is- what would remain in the memory of customer? The
surrounding circumstances such as the presentation of goods, color scheme and lettering
style etc. used on the packaging also assume significance.

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It is always necessary in a case of potential passing off to consider the totality of what the
defendant is doing in order to determine whether or not there is likelihood of
confusion152.
Where the rival marks are not identical but only similar, the test as to likelihood of
confusion or deception arising from similarity of marks is the same as both in
infringement and passing off actions153.
In Sunstar Lubricants v. Federal Chemical Industries154, the plaintiffs registered
proprietor of Golden Cruiser 1200 for the same product. Get up and color scheme
different. Marks not deceptively similar: Interim injunction refused.
In J&P Coats Ltd. v. Popular Thread Mills155, plaintiffs using the mark MOOR in a
particular style get up and color scheme etc. for the same goods. Interim injunction
granted restraining the defendant from using the word in the same style, color scheme
and get up. Defendant accordingly changed the label. On appeal the court held that the
amended label will not cause confusion and dismissed appeal.

4. Trade Names and Domain Names

The advent of the Domain Name System has led to attempts by trademark holders to
enforce their rights over domain names that are similar or identical to their existing
trademarks, particularly by seeking control over the domain names at issue. As with
dilution protection, enforcing trademark rights over domain name owners involves

152

Passing Off, Law and Practice by John Drysdale and Michael: Silverleaf, 2nd Ed., Para 4.01
Rustom & Hornby v Zamindara Engineering ; AIR 1970 SC 1649.
154
1997 PTC 64(Del)
155
1996 PTC 688
153

99

protecting a trademark outside the obvious context of its consumer market, because
domain names are global and not limited by goods or service.

This conflict was more easily resolved when the domain name user actually used his
website to compete with the trademark owner. Cyber squatting, however, involves no
such competition, but instead an unlicensed user registering the trademark as a domain
name in order to pressure a payoff (or other benefit) from the lawful mark owner. The
practice that's come to be known as cyber squatting originated at a time when most
businesses were not concerned about the commercial opportunities on the cyberspace.
Some enterprising guys registered the names or trademarks of well-known companies as
domain names, with the sole intention of selling the names back to the companies when
they finally woke up. Panasonic, Tata, Bennet & Coleman and Avon were among the
"victims" of cyber squatters. This practice has reaped rich dividends for some who rushed
madly to register trade marks or names close to trade marks and then demanded high
prices to sell these domain names back to the interested companies. As already mentioned
there is no connection between trademark registration and domain name registration. This
lack of connection has been exploited to the maximum by these cyber squatters. The first
come, first-served nature of domain name registration has made it easy for the system to
be abused by speculators, such as where a domain name is registered by someone with
the sole purpose of selling it at a premium to a trademark owner. Typo squatters are those
who register common misspellings of trademarks as domain names. They have also been
targeted successfully in trademark infringement suits.

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This clash of the new technology with preexisting trade mark rights resulted in several
high profile decisions as the courts of many countries tried to coherently address the issue
(and not always successfully) within the framework of existing trade mark law. As the
website itself was not the product being purchased, there was no actual consumer
confusion, and so initial interest confusion was a concept applied instead.

Most courts particularly frowned on cyber squatting, and found that it was itself a
sufficiently commercial use (i.e., "trafficking" in trade marks) to reach into the area of
trademark infringement. Most jurisdictions have since amended their trademark laws to
address domain names specifically, and to provide explicit remedies against cyber
squatters.

This international legal change has also led to the creation of ICANN (international
community for assigned names and numbers), Uniform Domain-Name DisputeResolution Policy (UDRP), which attempt to streamline the process of resolving who
should own a domain. This is particularly desirable to trade mark owners when the
domain name registrant may be in another country or even anonymous.

Registrants of domain names also sometimes wish to register the domain names
themselves (e.g., "XYZ.COM") as trade marks for perceived advantages, such as an extra
bulwark against their domain being hijacked, and to avail themselves of such remedies as
confusion or passing off against other domain holders with confusingly similar or
intentionally misspelled domain names.

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As with other trade marks, the domain name will not be subject to registration unless the
proposed mark is actually used to identify the registrant's goods or services to the public,
rather than simply being the location on the Internet where the applicant's web site
appears. Amazon.com is a prime example of a protected trademark for a domain name
central to the public's identification of the company and its products.

The above concepts can be explained with the help of the following case laws:

Rediff Communication Ltd V Cyberbooth and another156

Facts of the case: The plaintiff was using the trade mark/domain name "Rediff.com"
Defendant started business by using the mark/domain name "Radiff.com". Plaintiff filed
a suit for passing off against the defendant company.

Held: It was held that there is no doubt that the two names are almost similar, and there is
every possibility that the Internet user may be deceived and confused. Therefore the court
accepted the prayer of the plaintiff.
Yahoo Inc V Akash Arora157

Facts of the case: plaintiff is the owner of the Trade mark "Yahoo!" and domain name
"yahoo.com", which are very well known. The Defendants adopted the trade
mark/domain name "Yahooindia.com". A suit was filed by the plaintiff for passing off
against the defendant.
156
157

2000 PTC 209 Bom

1999 PTC 201 (Del)

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Held: The said word "Yahoo" has acquired distinctiveness and is associated with the
business of the plaintiff. The use of Trade mark/domain name "yahooindia.com" will lead
to passing off of the business of the plaintiff. The prayer of plaintiff was disposed off and
an injunction restraining the defendant to use the impugned mark was granted.

5. Issues in a Passing off action

The following issues arise in an action for passing off:

1. Whether the plaintiff has established a goodwill or reputation in connection with a
business, profession, service or any other activity, among the general public or among a
particular class of people, prior to the first use of the defendant.
2. Whether the defendants activities or proposed activities amount to misrepresentation
which is likely to injure the business or goodwill of the plaintiff and cause or likely to
cause

damage

to

his

business

or

goodwill.

3. Whether the defendant succeeds in one or more of the defenses set by him.
4. If the plaintiff succeeds what relieves he is entitled to.

6. Defenses in Passing off Action

In an action for passing off the defendant may setup the following defenses:

103

1. The name, mark or other symbol, the use of which is sought to be restrained, is not
distinctive of the plaintiffs goods or business.
2. The defendants use of the name, mark or other symbol is not such as to be likely to
pass off his goods or business as those of the plaintiff.
3. The defendant has a right of his own to use the name, mark or other symbol
complained of.
4. Isolated cases of passing off.
5. The plaintiff is not entitled to relief on account of delay, estoppel, and acquiescence,
deceptive use of the mark or symbol, misrepresentation of facts or fraudulent trade.
6. The goods or businesses of the plaintiff and of the defendant are wholly different.
7. Defendant using the word complained of for bona fide description of his goods

Section 35 of the Trade Marks Act, 1999- surname and personal name.
Section 35 of the Act does not apply to artificial persons like incorporated company. In
the case of incorporated company its adoption of the name is by choice whereas in the
case of natural persons, the adoption of the surname is not by choice158.
Moreover Section 35 is available only in an action for passing off and not in a passing off
action.
The defense that a person has a right to use his personal name is not available in a passing
off action. No man is entitled even by the honest use his own name, so to describe or
mark his goods as in fact to represent that they are the goods of another159.

158
159

Kirlosker Diesel Recon v. Kirlosker Proprietary AIR 1996 Bom 149

Ibid

104

7. Procedure in suits for passing off

A suit for passing off arising out of the use by the defendant of any trade mark
resembling the plaintiffs trade mark must be instituted in a court not inferior to a District
Court having jurisdiction in a Court not inferior to a District Court having jurisdiction to
try the suit. Where the passing off does not involve the use of any trade mark or where
there is no sale of goods the suit may be filed in a subordinate judges court or a court
superior to it.
Section 135(c) relates to jurisdiction of court in respect of passing off arising out of the
use of a trade mark. However under the definition of trade mark in Section 2(1)(zb)
includes service marks as well. Accordingly in Section 135(c) applies to both trade marks
relating to goods and those relating to services.
The plaintiff in a suit for passing off must be the owner of a trade mark which has
acquired reputation in relation to some goods or the owner of the goodwill in a trade
name, or get-up relating to some goods or business or profession. The defendant in the
suit must be a person who has passed off or whose activities are likely to pass off his
goods or business as the goods or business of the plaintiffs.
Passing off action may be instituted by many plaintiffs in a representative capacity
provided there is common interest, common grievance and a remedy beneficial to all.
The rules governing the preparation of the plaint and the subsequent proceedings are the
same as in any other suit and are governed by the Code of Civil Procedure.

8. Persons who can be sued and who can sue in an action for passing off

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The plaintiff in a suit for passing off must the owner of a trade mark which has acquired
reputation in relation to some goods or the owner of the goodwill in a trade name, or
getup relating to some goods or business or profession. An unregistered firm can file a
suit for passing off against a third party notwithstanding the prohibition contained in
Section 69(2)160 of the Partnership Act, as a suit for passing off is not for enforcing rights
arising from any contract161.
A mortgagee of a business and its trade name, who had never used and had no intention
to use the trade mark, cannot sue for passing off.
The defendant in a suit for passing off must be a person, who had passed off or whose
activities are likely to pass off his goods as the goods of another person, the plaintiff.
A person who is the agent of the registered proprietor of a trade mark and has the sole
franchise for selling the goods of the registered proprietor and who had extensively
advertised the mark in the territory has locus standi to file a suit for passing off, though
not for infringement of the mark.
The proprietor of an unregistered trade mark using the mark through a licensee can bring
an action for passing off162.
Action for passing off can be maintained by an unregistered firm and such a suit will not
be hit by the provisions of Section 9(2) of the Partnership Act163.
An unregistered partnership firm can file a suit for infringement of trade mark and
passing off, Section 69(2) does not apply.

160

Section 69(2) No suit to enforce a right arising form a contract shall be instituted in any court by or on
behalf of a firm against any third party unless the firm is registered and the persons suing are or have been
shown in the Register of Firms as partners in the firm
161
Virendra v. Varindra AIR 1982 Del 482
162
WWF International v Mahavir Spinning Mills 1994 PTC 250 at 258
163
Novelty Emporium v. Novelty Creations Private Limited 2002(24)PTC 285(Del)

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The right to obtain injunction in respect of infringement of trade mark and passing off are
based on statutory right under the Trade Marks Act and the common law action for
passing off. They did not arise under any contract. Hence Section 69(2) of the Partnership
Act is not a bar to filing such a suit164.
Directors Liability
Before a director can be held personally liable for a tort committed by his company, he
must not only commit or direct the tortuous act or conduct but he must do so deliberately
or recklessly and so as to make it his own, as distinct from the act or conduct of the
company. It is unnecessary for him to know, or have the means of knowing that the act or
conduct is tortuous. The facts of each case must be broadly considered in order to see
whether, as a matter of policy requiring the balancing of the two principles of limited
liability and answerability for tortuous acts or conduct, they call for the director to be
held personally liable.

Passing off action by many plaintiffs in a representative capacity

A representative action cannot be brought unless the whole of the claim is appropriate to
that form of action. The suitability for representative proceedings will normally be
established where for the purposes of the dispute the threefold test of common interest,
common grievance and a remedy beneficial to all is satisfied. The court has discretion to
refuse or allow the proceedings to continue as representative action where it would be
unfair or inconvenient for them to continue thus.

164

Haldiram Bhujiawala v. Anand Kumar Deepak Kumar 2000 PTC 147 (SC)

107

Chapter 4
Difference between Infringement and Passing off
The broad purpose of infringement action and an action for passing off is the same,
namely, to protect the industrial property and to prevent particular type of deception of
the public.
The remedy of passing off has been found in one form or another for centuries. It is part
of the common or so-called unwritten law. In contrast, the system of statutory protection
of trade marks by way of the registration thereof, has, relatively speaking, not been in
existence that long. The law relating to passing off was thus, put differently, made by
judges, and the law relating to trade mark infringement was created by the relevant
legislative bodies. The latter origin does not necessarily indicate a greater degree of
rigidity insofar as the application of legislative instruments is concerned. The courts
obviously interpret the legislation continuously, and in a sense the words of the statute
form only a broad framework within which the judiciary functions, and "finds" the law.
From the above follows the distinction between the acquisitions of rights in terms of the
two systems. Rights relating to passing off are established "gradually", with use, and the
central question would be when it can be said that a reputation has been acquired insofar
as a specific mark is concerned. The establishment of a reputation is dependent on a
number of factors, including the nature of a mark, that is, the degree of distinctiveness,
sales figures, promotional expenditure on the marketing of products bearing the mark or
get-up, and the period of use. Protection in terms of the Act is available immediately, on
registration, and is not, in the short term, dependent on use of the mark. Although the
obtainment of statutory rights would seem, from this perspective, to be a more convenient

108

way in which to obtain rights, such an observation is not borne out by reality. This is on
account of the fact that the time frame within which an application will proceed to
registration can be a matter of up to three or four years at this stage. This factual
consideration does however not change the theoretical position.
A further difference is that in cases of alleged passing off, it is said that it is the goodwill
built up through the use of a mark that is protected, whilst in instances of trade mark
infringement, it is the right to the mark itself that is being protected. Flowing from this
fact is a practical difference between the two remedies, namely that passing off involves a
comparison of the two marks and the get-up of the products in relation to which they are
used. In other words, the mere fact that a mark, whether registered or not, is used by A,
does not automatically imply that he would be liable towards B for passing off. Colors
and shapes or the addition of other distinctive material can thus be considered by the
court to determine whether or not there is a likelihood of confusion. On the other hand, in
the instance of trade mark infringement, the comparison is solely between the two marks
themselves, and extraneous matter cannot be taken into consideration. In a manner of
speaking, a holistic approach is adopted in passing off cases. Trade mark infringement is
concerned only with the mark that has been registered, and if that mark is used by the
respondent along with other distinctive material, the addition of the latter is disregarded.
In line with the above, in infringement cases there is a prohibition on the use of the mark
in issue, but the wording of an interdict in passing off cases rather relates to steps to be
taken to distinguish the products concerned.
It is important to bear in mind that the remedy of passing off relates to a particular
geographical area in which a reputation can be said to exist. In other words, where a mark

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is used in Delhi, it will not necessarily be possible to prevent the use of the mark in
Chennai. In the case of a registered mark, the registration will in principle be enforceable
in the whole country. In summary, it appears that there are a number of instances where
relief in terms of passing off will achieve the rights holders objective of the protection of
his intellectual property, whilst in other instances relief in terms of the Trade Marks
Act,1999 will be more appropriate.

Infringement based on statutory right

An action for infringement is based on the exclusive right to the use of a trade mark 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 trade mark
which is identical with or is a colorable imitation of the registered trade mark. Such use is
deemed to be likely to deceive or cause confusion whether or not it in fact produces that
result. The property sought to be protected is the exclusive right to the use of the
registered trade mark, which is precisely defined by the statute. The deception that is
sought to be prevented is that arising from the use of a similar trade mark.

Passing off based on property in goodwill

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. The basis of such an action is the false representation by
the defendant in regard to trade origin of the goods. The nature of the right, the invasion
of which is the subject of a passing off action, is not so clearly defined as in an
infringement action. The property which is sought to be protected is property in the

110

business or goodwill likely to be injured by the misrepresentation. Use of a trade mark

whether registered or unregistered is only one means by which passing off can be
effected. Misrepresentation by the use of a mark, name or get-up or even direct
misrepresentation without infringement of any trade mark comes within the ambit of a
passing off action.

Other difference between infringement and passing off

There are also other important points of difference between the two kinds of action. 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 based solely on deception and in
order to succeed, deception or a likelihood of deception must be established. In an
infringement action once it is found that the defendants mark is used as a trade mark, the
fact that he makes it clear that the commercial origin of the goods indicated by the trade
mark is some business other than that of the plaintiff avails him, nothing since
infringement consists in using the mark as trade mark, that is indicating origin. Thus the
defendant in an infringement action can be restrained from using the registered trade
mark; all that can be done is to restrain him from selling the article under a label
containing that mark without clearly distinguishing his goods from the goods of the
plaintiff, which is a different thing.
Saville Perfumery v June165, the law in this regard is stated as followsThe statute law relating to infringement of Trade Marks is based on the same
fundamental idea as the law relating to passing off. But it differs from the law in two
165

(1941)58 RPC 147

111

particulars, namely, (1) is concerned only with one method of passing off, namely, the
use of a trade mark and (2) that statutory protection is absolute in the sense that once a
mark is shown to offend, the user of it cannot escape by showing that by something
outside the actual mark itself he has distinguished his goods from those of the registered
proprietor. Accordingly, in considering the question of infringement, the courts have
held, and now it is expressly provided by the Trade Marks Act, 1938, Section 4, that
infringement takes place not merely by exact imitation but by the use of a mark so nearly
resembling the registered mark as is likely to deceive. The questions, therefore arise;
First, is there a resemblance and, second, is the resemblance so close as to be likely to
cause deception166

Plaintiff must prove distinctiveness of mark

In a passing off action the plaintiff must establish that the mark, name or get-up, the use
of which by the defendant is the subject of the action, is distinctive of his goods in the
eyes of the public or a class of the public. It must be proved that his goods are identified
in the market by a particular mark or symbol. There is no such requirement in an action
for infringement of a registered trade mark. Even if the registered proprietor has never
used the mark, he can restrain the defendant from using the mark.
It may be possible to prove distinctiveness of the mark even without the sale of the
goods.

166

Section 29 of the Indian Act corresponds to Section 4 of the U.K Trade Marks Act of 1938

112

Copying of mark per se sufficient for infringement but not for passing off
A trade mark is infringed if a person other than the registered proprietor or authorized
user uses, in relation to goods covered by registration, one or more of the trade marks
essential particulars. On the other hand, in an action for passing off proof of the use of a
device or of an essential particular of a device by which the plaintiffs products are
characterized does not suffice to establish the cause of action. The court must further be
satisfied that the manner of use is not such as adequately to distinguish the goods of the
defendant from those of the plaintiffs.
Copying by itself is not passing off; it is merely lawful competition if there is no
misrepresentation as to its origin.

Now let us move on to few land mark decisions of the Supreme Court and various High
Court where the essential distinction between infringement and passing off were
discussedIn Durga Dutt Sharma v. N.P .Laboratories167 Honorable Ayyangar J. laid down the
distinction as underWhile an action for passing off action is a common law remedy being in substance an
action for deceit, that is, 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 trade mark for the
vindication of the exclusive right to the use of the trade mark in relation to those goods

167

AIR 1965 SC 980

113

(Vide Section 21 of the Act)168. The use by the defendant of the trade mark of the
plaintiff is not essential in an action for passing off, but is sine qua non in action for
infringement. No doubt where the evidence in respect of passing off consists merely of
the colorable use of the registered trade mark, the essential features of both the actions
might coincide in the sense that what would be a colorable imitation of a trade mark in a
passing off action would also be such in an action for infringement of the same trade
mark. But there is correspondence between the two cases. In an action for infringement,
the plaintiff must, no doubt make out that the use of the defendants mark is likely to
deceive, but where the similarity between the plaintiffs mark and the defendants mark is
so close either visually, phonetically or otherwise and the court reaches the conclusion
that there is an imitation, no further evidence is required to establish that the plaintiffs
rights are violated. Expressed in another way, if the essential features of the trade mark of
the plaintiff have been adopted by the defendant, the fact that the get-up, packing and
other writing or marks on the goods or on the packets in which he offers his goods for
sale show marked differences, or indicate clearly a trade origin different from that of the
registered proprietor of the mark would be immaterial; whereas in the case of passing off
he can show that the added matter is sufficient to distinguish his goods from those of the
plaintiff.

In Rustom & Hornby Ltd. v. Z.Engineering Co.169 , the essential distinction between
infringement action and passing off action is laid down as follows-

168

This is a case under the Trade Marks Act, 1940. Section 21 mentioned above corresponds to Section 28
and Section 29 of the Trade Marks Act,1999.
169
AIR 1970 SC 1649

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The distinction between an infringement action and a passing off action is important.
Apart from the question as to the nature of the trade mark the issue in an infringement
action is quite different from the issue in a passing off action. In a passing off action the
issue is as followsIs the defendant selling goods so marked as to be designed or calculated to lead
purchasers to believe that they are the plaintiffs goods?
But in an infringement action the issue is as followsIs the defendant using a mark which is the same as or which is a colorable imitation of
the plaintiffs registered trade mark?
It very often happens that although the defendant is not using the trade mark of the
plaintiff, the get-up of the defendants goods may be so much like the plaintiffs that a
clear case of passing off would be proved. It is on the contrary conceivable that although
the defendant may be using the plaintiffs mark the get up of the defendants goods may
be so different from the get-up of the plaintiffs goods and the prices also may be so
different that there would be no probability of deception of the public. Nevertheless, in an
action on the trade mark, that is to say, in an infringement action, an injunction would
issue as soon as it is proved that the defendant is improperly using the plaintiffs mark
The action for infringement is a statutory right. It is dependant upon the validity of the
registration and subject to other restrictions laid down in Section 30, 34 and 35 of the
Act. On the other hand the gist of a passing off action is that A is not entitled to represent
to represent his goods as the goods of B but it is not necessary for B to prove that A did
this knowingly or with ant intent to deceive. It is enough that the get-up of Bs goods has
become distinctive of them and that there is a probability of confusion between them and

115

the goods of A. No case of actual deception or any actual damage need be proved. At
common law the action was not maintainable unless there had been fraud on As part. In
equity, however Lord Cottenham L. C. in Millington v. Fox (1833) 3 My & Cr 338 held
that it was immaterial whether the defendant had been fraudulent or not using the
plaintiffs trade mark and granted an injunction accordingly. The common law courts,
however, adhered to their view that fraud was necessary until the Judicature Acts by
fusing law and equity, gave the equitable rule the victory over the common law rule.
In Halsbury Laws of England, 4t Ed, 1984 Vol. 48, para 187, it is stated that in a passing
off action the degree of similarity of the name, mark or other features concerned is
important but not necessarily decisive, so that, an action for infringement of a registered
trade mark may succeed on the same facts where a passing off action fails or vice versa.
An infringement action may fail where the plaintiff cannot prove registration or that its
registration extends to the goods or to all the goods in question or because the registration
is invalid and yet the plaintiff may show that by imitating the mark otherwise, the
defendant has done what is calculated to pass off his goods as those of the plaintiff.170

The essential differences between infringement and passing off mentioned in the above
paragraphs can be summarized and represented in a tabular form as under-

170

Also quoted in S.M Dyechem Ltd. v. Cadbury (India) Ltd. 2000 PTC 297(SC) at 318.

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Infringement Action
1

Passing off Action

Based on property acquired by Based on property in goodwill acquired by

registration of the trade mark, user use of the mark. Registration is not relevant
of mark not relevant.

Defendant must use the offending Defendants goods need not be same; it
mark on the same goods for which may be allied or even different.
plaintiffs mark is registered.

If the

marks

are identical or Identity or similarity of the marks not

deceptively similar no further proof sufficient. The use of the mark or symbol
is required

must be likely to deceive or cause

confusion.

Use of the mark by the defendant

Use of mark by the defendant must be

need not cause any injury or likely to cause injury or damages to the
damages to the plaintiff.
5

plaintiffs goodwill

Use of the registered trade mark or Use of plaintiffs trade mark not essential.
mark similar to it necessary and Use of get up, color scheme, lay out, shape
sufficient.

of the goods, trade name etc.sufficient.

Passing off can be committed orally also.

Applies only to goods

Applies to any business whether trading or

non- trading, profit making or non0 profit
making or professionals or services.

117

Based on violation of statutory right.

Based on violation of a common law right.

Use of the mark as a trade mark is Objection to use of plaintiffs mark may be
sufficient. Use of additional matter off

set

by

added

matter

clearly

indicating a different trade source is distinguishing the defendants goods from

not material.
9

Action

for

the plaintiffs
infringement

statutory remedy.
10

is

a Action for passing off is a common law

remedy

Infringement need not necessarily Passing off by use of mark need not
lead to passing off.

necessarily lead to infringement.

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Chapter 5
Remedies for Infringement and Passing off of Trade Marks

Remedies in an action for Passing off and Infringement of trade marks include civil
remedies, criminal remedies and penal provisions. Section 135 of the Trade Marks Act,
1999 provides for the civil remedies in cases of alleged infringement and passing off of
trade marks.
Section 135 of the Trade Marks Act, 1999 provides that in any suit for infringement or
passing off, the court may grant the following civil remediesI. Injunction,
II. Damages,
III. Accounts of profit, with or without any order for the delivery-up of the infringement
labels and marks for destruction or erasure.
The order of injunction may be an ex-parte injunction or an interlocutory order. Such an
order may be for any of the following purposes(a) For discovery of documents;
(b) Preserving of infringing goods, documents or other evidence which are related to the
subject-matter of the suit;
(c) Restraining the defendant from disposing of or dealing with his assets in a manner
which may adversely affect plaintiff's ability to recover damages, costs or other pecuniary
remedies which may be finally awarded to the plaintiff.

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Relief by the way of damages or accounts of profit is not available under the following
circumstances(a) Where in a suit for infringement of a trade mark, the infringement complained of is in
relation to a certification trade mark or collective mark; or
(b) Where in a suit for infringement the defendant satisfies the court(i) That at the time he commenced to use the trade mark complained of in the suit, he
was unaware and had no reasonable ground for believing that the trade mark of the
plaintiff was on the register or that the plaintiff was a registered user using by way of
permitted use; and
(ii) That when he became aware of the existence and nature of the plaintiff's right in
the trade mark, he forthwith ceased to use the trade mark in relation to goods or services
in respect of which it was registered; or
(c) Where in a suit for passing off, the defendant satisfies the court(i) that at the time he commenced to use the trade mark complained of in the suit he was
unaware and had no reasonable ground for believing that the trade mark of the plaintiff
was in use; and
(ii) That when he became aware of the existence and nature of the plaintiff's trade mark
he forthwith ceased to use the trade mark complained of.

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1. Civil remedies
Injunction
The principles relating to the grant of temporary were laid in K.E Mohammed
Aboobacker v. Nanikram Meharchand171, where the court made a reference to the case
law and stated that:
The principles which should govern the court in granting or withholding a temporary
injunction in trade mark infringement actions are well settled.As a temporary
injunction is merely of a provisional nature and does not conclude the rights of the parties
in any way, the Court will exercise its discretion in favor of the applicant only in strong
cases. The plaintiff must take out a prima facie case in support of his application for an as
interim injunction and must satisfy the Court that his legal right has been infringed and in
all probability will succeed ultimately in he action. This does not mean, however, that the
Court would examine in detail the facts of the case and anticipate or prejudice the verdict
which might be pronounced after hearing of the suit or that the plaintiff should make out
a case which would entitle him in all events to relief at the hearing.In fact the Court
will not ordinarily grant an interlocutory injunction if a large amount if evidence is
necessary to support the plaintiffs case. The proper course in such a case is to ask for the
trial of the case. The injury must be actual or imminentWhere the defendant disputes
the plaintiffs title to the mark or contends that the plaintiff is not entitled to relief by
reason of the acquiescence or delay or other estoppel or of the defendants concurrent
rights, the Court will be guided by the balance of inconvenience which may arise from
granting or withholding the injunction as well as the justice of the cause after considering
all the circumstances in the suit. In other words, where the plaintiffs title is disputed or
171

(1957) 2 MLJ 573

121

the fact of infringement or misrepresentation amounting to a bar to the action or some

other defense is plausibly alleged upon the interlocutory motion, the Court in granting or
refusing the interim injunction is guided principally by the balance of convenience that is
by the relative amount of damage which seems likely to result if the injunction is granted
and the plaintiff ultimately fails or if it is refused and he ultimately succeeds..
It is necessary that an application for interlocutory injunction should be made
immediately after the plaintiff becomes aware of the infringement of the mark. Improper
and unexplained delay is fatal to an application for interlocutory injunction. The interim
injunction will not be granted if the plaintiff has delayed interfering until the defendant
has built up a large trade in which he has notoriously used the mark.

In Wander Ltd. v. Antox India (P) Ltd172, the Supreme Court observed that usually, the
prayer for grant of an interlocutory injunction was at a stage when the existence of the
legal right asserted, and its alleged violation were both contested and uncertain, and
remained uncertain till they were established at the trial on evidence. The court, at this
stage acted on certain well- settled principles of administration of this form of
interlocutory remedy, which was both temporary and discretionary. The object of the
interlocutory injunction, it was stated:
is to protect the plaintiff against injury by violation of his rights for which he could
not adequately be compensated in damages recoverable in the action if the uncertainty
were resolved in his favor at the trial. The need for such protection must be weighed
against the corresponding need of the defendant to be protected against injury resulting
from his having been prevented from exercising his own legal rights for which he could
172

(1990) Supp SCC 727

122

not be adequately compensated. The court must weigh one need against another and
determine where the balance of convenience lies.
An injunction based on passing off remedy could be issued against the registered owner
of the mark in appropriate cases based on the principles of prior use.
The Supreme Court stated in Midas Hygiene Industries (P) Ltd. v Sudhip Bhatia173, that
the law on the subject was well settled. In cases of infringement either of trade marks or
of copyright, normally an injunction must follow. Mere delay in bringing an action was
not sufficient to defeat grant of injunction in such cases. The grant of injunction had also
become necessary if it prima facie appeared that the adoption of the mark was itself
dishonest.

Quia Timet Action- Injunction

The Delhi High Court in Mars Incorporated v. Kumar Krishna Mukerjee174, reiterated the
settled principle for granting injunction in case of potential infringement of the trade
mark. In this case, the plaintiff is the registered proprietor of the mark MARS in respect
of chocolates, confectionary, preserved food products etc. They have business all over the
world and the mark is well known. Recently, the defendant incorporated a company
under the name of Mars Food Product Pvt Ltd., with the intention of doing business in
the food sector. They had not yet commenced the manufacture or sale of food items.
Anticipating possible trade mark infringement the plaintiff filed the present suit for
injunction restraining the defendants use of the trade mark MARS as part of their
corporate name. Regarding the question whether the plaintiff was entitled to injunction

173
174

(2004)3 SCC 90.

2003 PTC 60 (Cal)

123

against a person who had not actually infringed the trade mark the court after referring to
foreign judgments observed thus:
The only tests for injunctive relief in Quia Timet Actions are:(i) Whether it is likely to cause confusion or to deceive the purchasers as to source or
origin of the trade mark or the goods to be sold in future under the said mark irrespective
of the fact whether goods intended to be sold are competitive goods or not;
(ii) Whether the intention to use the infringed mark is to trade or cash upon the reputation
and goodwill of the plaintiff earned over the years through extensive advertisement and
huge expenses;
(iii) Whether there is likelihood of real or tangible damage or injury to the plaintiff or
reasonable probability if the same would take place. In other words, whether the use of
the trade mark by the defendant is likely to be associated with the plaintiffs trade mark
of business.
(iv) Whether the hardship suffered by the plaintiff would be greater than that of the
defendants if injunction is not granted against the defendants.

Factors to be considered while dealing with Interlocutory Injunction

The decision whether or not to grant an interlocutory injunction has to be taken at a time
when the exercise of the legal right asserted by the plaintiff and its alleged violation are
both contested and remain uncertain till they are established on evidence at the trial. The
relief by way of interlocutory injunction is granted to mitigate the risk of injustice to the
plaintiff during the period before which that uncertainty could be resolved. The object of
interlocutory injunction is to protect the plaintiff against injury by violation of his right

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for which he could not be adequately compensated in damages recoverable in action if

the uncertainty were resolved in his favor at the trial.
In a number of decisions the Supreme Court has considered the factors which are to be
taken into account by the court while dealing with a prayer for interlocutory injunction.
In Transmission Corporation of A.P Ltd v. Lanco Kondapalli Power (P) Ltd.175, it was
held that the interim direction ordinarily would precede finding of a prima facie case.
When existence of a prima facie case is established, the court shall consider the other
relevant factors, namely, balance of convenience and irreparable damages.
In Hindustan Petroleum Corporation Ltd. v Sriman Narayan and anr.176 it was held that
grant of an interlocutory injunction during the pendency of the legal proceeding is a
matter requiring the exercise of discretion of the court. While exercising the discretion
the court normally applies the following tests:
i. whether the plaintiff has a prima facie case;
ii. whether the balance of convenience is in favor of the plaintiff; and
iii whether the plaintiff would suffer an irreparable injury if his prayer for interlocutory
injunction is disallowed.
In Dalpat Kumar and anr. V. Pahlad Singh and ors.177 , it was held that grant of injunction
is a discretionary relief. The exercise thereof is subject to the court satisfying that (1)
there is a serious disputed question to be tried in the suit and that an act, on the facts
before the court, there is probability of his being entitled to the relief asked for the
plaintiff/ defendant;

175

(2006)1SCC 540
(2002)5 SCC 760
177
(1992)1 SCC 719
176

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2) The Courts interference is necessary to protect the party from the species of injury. In
other words, irreparable injury or damage would ensue before the legal right would be
established at trial; and
3) that the comparative hardship or mischief or inconvenience which is likely to occur
from withholding the injunction will be greater than that would be likely to arise from
granting it.
Considerations for granting interim injunction
When an interim injunction is sought for by the plaintiff, the court must seei. Whether there is a prima facie case to go to trial,
ii. Balance of convenience and inconvenience and;
iii. Irreparable injury, that is, whether the plaintiff will suffer irreparable injury or not in
case the injunction is refused.
In Dhaniwal Industries v. M.S.S Food Products178, it was held that interim injunction is
permissible in case the plaintiff can show prima facie case that it was prior use of its
mark and balance of convenience was in his favor.

Prima facie case for injunction, Balance of Convenience and Irreparable Injury
Registration of a trade mark and user thereof per se may lead to the conclusion that the
plaintiff has a prima facie, however, existence thereof would also depend upon the
determination of the defenses raised and comparable cases of the parties.
The principle of balance of convenience applies when the scales are evenly balanced.
Irreparable injury really means the injury which the plaintiff is likely to suffer.

178

(2005)3 SCC 63

126

In trade mark infringement cases irreparable damage, in this sense, is relatively easily
shown, since infringement may easily destroy the value of a mark or at least nullify
expensive advertising in a way that is hard to quantify for the purposes of an enquiry into
damages.
In fact, when a prima facie case is made out and balance of convenience is in favor of the
appellant, it may not be necessary to show more than loss of goodwill and reputation to
fulfill the condition of irreparable injury. In fact, if the first two pre-requisites are
fulfilled, in trade mark actions irreparable loss can be presumed to have taken place.179

Damages and Accounts of Profits

The plaintiff in an action for infringement or passing off may be granted either damages
or an account of profits but not both. In an account of profit the infringer is required to
give up all his ill-gotten gains in favor of the plaintiff whose rights he has infringed.
In case of damages the defendant has to compensate the plaintiff. The damages may even
be more than the monetary profits reaped by the defendant by the misuse of the plaintiffs
mark.
The quantum of damages awarded is determined by the quantum of loss actually
sustained by the plaintiff which was the natural and direct consequence of the unlawful
acts of the defendant. Speculative and unproven damages are also not considered in
determining the quantum of damages.
In calculating the account of profit, the damage suffered by the plaintiff is immaterial.
The account of profit, is made on the basis of actual profits, the defendants has made out
of the sale of infringing goods.
179

Ramdev Food Products v. Arvindbhai Rambhai, (2006)33 PTC 281(SC).

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Actual damage suffered by the plaintiff, if required to be proved

It is well settled that the plaintiff is passing off action does not have to prove that he
suffered damages by loss of business or in any other way. A probability of damage is
enough but the actual or probable damages must be damage to him in his trade or
business i.e., damage to his goodwill in respect of the trade or business. What is likely to
be established is the likelihood of deception or confusion in the minds of the public at
large. Such likelihood or probability of deception depends on a number of factors, which
varies from one case to the other depending upon the facts.180

Punitive damages/ Exemplary damages

In Hindustan Pencil Ltd. v. Gyanendra Kumar181, the Delhi High Court has observed that
the time has come when the courts dealing actions for infringement of trade marks,
copyrights, patents etc. should not only grant compensatory damages but award punitive
damages also with a view to discourage and dishearten law-breakers who indulge in
violations with impunity out of lust for money so that they realize that in case they are
caught, they would be liable not only to reimburse the aggrieved party but would be
liable to pay punitive damages also, which may spell financial disaster for them.
In Mathias v. Accor Economy Lodging, Inc182, the factors underlining the grant of
punitive damages were discussed and it was observed that one function of punitive
damages is to relieve the pressure on the overloaded system of criminal justice by
providing a civil alternative to criminal prosecution for minor crimes. It was further
observed that the award of punitive damages serves the additional purpose of limiting the
180

(2006)2 CHN 555.

(2006)33 PTC 372
182
347 F.3d 672 (7th Cir. 2003)
181

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defendants ability to profit from its fraud by escaping detection and prosecution. If a tort
feasor is caught only half the time he commits torts, then when he is caught he should be
punished twice as heavily in order to make up for the times he gets away. This court feels
that this approach is necessitated further for the reason that it is very difficult for a
plaintiff to give proof of actual damages suffered by him as the defendants who indulge
in such activities never maintain proper accounts of their transactions since they know
that the same are objectionable and unlawful. The court is of the view that the punitive
damages should be really punitive and not flee bite and quantum thereof should depend
upon the flagrancy of infringement.

Compensatory Damages and Punitive Damages

A distinction needs to be drawn between Compensatory Damages and Punitive Damages.
The award of compensatory damages to a plaintiff is aimed at compensating him for the
loss suffered by him whereas punitive damages are aimed at deterring a wrong doer and
the like minded from indulging in such unlawful activities. Whenever an action has
criminal propensity also the punitive damages are clearly called for so that the tendency
to violate the laws and infringe the rights of others with a view to make money is curbed.
The punitive damages are founded on the philosophy of corrective justice and as such, in
appropriate cases these must be awarded to give signal to the wrongdoers that law take a
breach merely as a matter between the rival parties but feels concerned about those also
who are not party to the suit but suffer on account of the breach.

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2.Criminal Remedies
Criminal remedies are available only in an action for infringement. Action for passing off
being a tort- a civil wrong, does not call for criminal remedies in case of infringement of
unregistered trade mark.
A. Offences
Falsifying a trade mark is an offence under the Trade Marks Act, 1999. According to
Section 102 of the Act a false trade mark means a trade mark which is falsified or falsely
applied to goods or services. A person is deemed to falsify a trade mark who either(a) Without the assent of the proprietor of the trade mark makes that trade mark or a
deceptively similar mark; or
(b) Falsifies any genuine trade mark, whether by alteration, addition, effacement or
otherwise to goods or services.
A person is deemed to falsely apply to goods or services a trademark who, without the
assent of the proprietor of the trademark,(a) applies such trade mark or a deceptively similar mark to goods or services or any
package containing goods;
(b) uses any package bearing a mark which is identical with or deceptively similar to the
trade mark of such proprietor, for the purpose of packing, filling or wrapping therein any
goods other than the genuine goods of the proprietor of the trade mark.
Now the question arises what is the meaning of applying trade marks and trade
description? This is provided in Section 101 of the Act:
(1) A person shall be deemed to apply a trade mark or mark or trade description to goods
or services who-

130

(a) applies it to the goods themselves or uses it in relation to services; or

(b) applies it to any package in or with which the goods are sold, or exposed for sale, or
had in possession for sale or for any purpose of trade or manufacture; or
c) places, encloses or annexes any goods which are sold, or exposed for sale, or had in
possession for sale or for any purpose of trade or manufacture, in or with any package or
other thing to which a trade mark or mark or trade description has been applied; or
(d) uses a trade mark or mark or trade description in any manner reasonably likely to
lead to the belief that the goods or services in connection with which it is used are
designated or described by that trade mark or mark or trade description; or
(e) in relation to the goods or services uses a trade mark or trade description in any sign,
advertisement, invoice, catalogue, business letter, business paper, price list or other
commercial document and goods are delivered or services are rendered to a person in
pursuance of a request or order made by reference to the trade mark or trade description
as so used.
(2) A trade mark or mark or trade description shall be deemed to be applied to goods
whether it is woven in, impressed on, or otherwise worked into, or annexed or affixed to,
the goods or to any package or other thing.

B. Penalties- The penalties for certain offences as mentioned above are briefly mentioned
under the following heads
Section 103- Penalty for applying false trade mark

131

Section 104- Penalty for selling goods or providing services to which false trade mark or
false trade description is applied
Section 105- Enhanced penalty on second or subsequent conviction
Section 106 Penalty for removing piece goods, etc., contrary to section 81
Section 107- Penalty for falsely representing a trade mark as registered
Section 108- Penalty for improperly describing a place of business as connected with the
Trade Marks Office
Section 109-Penalty for falsification of entries in the register

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Chapter 6
Conclusion
Even after explaining the differences between the concept of infringement of trade marks
and passing off of trade marks, it has been observed that the two concepts namelyinfringement by passing off and a passing off action still needs further clarification to
understand the difference between the two, precisely. So let us move on to differentiating
the two different concepts for further clarification and explanations.
Infringement by passing off can occur only for a registered trade mark. Here the meaning
of passing off should be taken in the literal meaning, wherein the unauthorized user
infringes the registered trade mark of the proprietor and thereby passes of his goods under
the false trade mark. Here infringement is adopted as a means of passing off.
To understand the concept of infringement by passing off let us carefully examine a few
case laws in this regard.

Ranbaxy Laboratories Limited v/s Universal Twin Labs183

Here the plaintiffs are the registered proprietor of the trade mark VOLINI a medicinal
and pharmaceutical preparation & an invented word as, registered under Class 5. The
defendants commenced marketing under mark VONIGEL. It was held that the defendant
adopted a clever disguise for passing off its own product VONIGEL, by infringing the
registered trade mark of the plaintiff. There was deceptively similar color combination.
The word mark, color scheme layout and get up adopted by the defendant were held to be
deceptively similar. So it was concluded that adoption of mark was not honest.

183

2008 (36) PTC 675 (BOMBAY)

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Hindustan Petroleum Corporation Ltd. v/s H.P. Oil Corporation Ltd184

Plaintiff, Hindustan Petroleum Corporation Ltd is a large refining and marketing oil
company having a large network of retail outlets, kerosene distributors and LPG
dealership all over India. It has conceived and adopted "HP" logo, being abbreviation of
its corporate name, as a trade mark which is registered.

Defendant with name and style of Hind Petro Corporation Ltd., subsequently it was
renamed as H.P. Oil Corporation Ltd. adopting the letters "H.P." as its trade mark in
carrying on the business in cooking gas in the State of Bihar. Plaintiffs registered their
trade mark "HP" and adoption of same by defendant amounts to infringement .Held that
the defendants were trying to passing off the goods by infringing the trade mark of the
plaintiff. Hence an injunction was granted.

Asian Paints (India) Ltd v/s Balaji Paints & Chemicals & Ors185
Suit for passing off and infringement of trademarks `ASIAN'. Defendant infringing the
mark by using the marks like `SUPER ASIAN' GREAT ASIAN' & `ASIAN GOLD' etc.
with identical packing material. The suit was proceeded ex parte Held that the action of
the defendant amounted to infringement and passing off. Hence damages to the tune of
Rs. 3 lacks were awarded to the plaintiff.

184
185

2004 (28) PTC 362 (BOMBAY)

2006 (33) PTC 683 (DELHI)

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On the other hand passing off action can be initiated only for an unregistered trade mark.
Passing off occurs when one trader attempts to pass off goods by misrepresenting then so
as to make the consumers believe that his goods are the same as those of another trader.

The other aspect of the action of passing off which is a common law remedy has already
been explained in the previous chapters of the project.

Observations made from the project

Infringement action which is a statutory remedy has been adopted by the courts in the
manner as has been laid down in the statute, the Trade Marks Act, 1999. The court faces
no difficulty in deciding cases of infringement of the registered trade mark. The
substantive part, the conditions which constitutes infringement, which do not amount to
infringement, the tests etc and the procedural aspects like the jurisdiction of the courts,
the remedies have been very clearly laid down in the statute. It is a statutory remedy and
hence prevents the rights of the registered trade mark from being exploited by the
unauthorized users. The law relating to infringement of trade marks is well settled and
clear.
But, on the contrary, the law of passing off actions is still not a statutory remedy. Even
the Trade Marks Act, 1999 deals only with procedural aspect. A substantial part of it still
forms part of the common law which is completely based on case laws. The Courts have
accepted the decisions of the English Courts. The traditional tests, ingredients etc of such
an action laid down in the landmark English cases are still followed by the Indian Courts.

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Certain traditional ingredients which have be reiterated in the various judgments of the
English Courts again and again and as has been adopted in India, make it mandatory that
the plaintiff in a passing off action has to establish goodwill of his business. Goodwill
being an intangible aspect is extremely difficult to prove. In case the plaintiff fails in this
difficult test, he fails in the action, in spite of being injured by the actions of the
defendant.
India is a country which is known worldwide for having vast number of legislations and
the Constitution of the country which is regarded as one of the finest in the world has
been amended more than a hundred times within 60 years of its coming into force, mainly
to adapt to changing times and situations. The time has come for the legislature to ponder
upon the implications of the passing off action and take necessary steps to protect the
interest of the traders.
The object of the law of passing off is the protection of the economic interest of the
traders. In a developing country like India, protecting interests of traders, who are major
contributors to the growth of the nation, is a major concern.
By an action of passing off the law aims to protect even unregistered firms and their trade
marks. This is clearly shows that the law intends to safeguard the interest of even smallest
of traders. Then why not make it concrete law by taking necessary and corrective steps.
In a plethora of judgments of the various Courts in India, we have seen that the process of
referring to English cases for authorities in this regard is very cumbersome, tiring, time
consuming and at the same time vague. Due to lack of a statute there are no concrete set
of established principles that can be followed by the Courts. The High Court in its various

136

judgments had observed that the lower Courts has acted in its discretion even when it no
such discretionary power in deciding cases of passing off of trade marks.
Here the question which comes up for consideration is , what steps should the legislature
take to remove the difficulty and the vagueness that the court faces and how the protect
the interest of the a trader who fails in such an action (due to his inability to prove
goodwill etc in a passing off action), in spite of being injured by the infringer of his trade
mark?
The Supreme Court which is regarded as the custodian of our rights has always played a
very active role in safeguarding the rights of the people and the interest of the business
organization which are an intricate part of the growth of the Indian economy. It gas gone
beyond the literal meaning of the laws to deliver justice. Since the courts were facing
difficulty in deciding a case on the basis of a passing off action due lack of concrete
guidelines, the Honorable Supreme Court has laid down a set of guiding principles in
deciding such a case, in Cadila Health Care v. Cadila Pharmaceutical Limited186. Even
these guidelines are merely some guiding principles. They are not mandatory on the
Courts. Then, what is the probable solution to this practical problem faced by the courts?
The probable answer to this question is that the legislature should take steps to make
registration of trade marks compulsory. Registration confers upon the registered
proprietor of a trade mark, exclusive and absolute rights. By this step, both the interest of
the trader is protected and at the same time the difficulties faced by the Court is also
covered. The only solution to cover the lacunas is to make registration of trade marks
compulsory. Like other Intellectual property right sans copyright, registration of trade

186

2001(1) CTR 288(SC)

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marks should be made compulsory by bringing necessary amendments in the Trade

Marks Acts, 1999.
The legislature has to take up this matter seriously, so that the hackneyed law of passing
off can done away with, which would ensure uniformity in deciding cases and conferring
of concrete rights upon the proprietor of the registered trade mark. Besides conferring of
absolute right of use of the trade mark upon the proprietor, it also acts as a prima facie
evidence of its validity. Since the purpose of both the actions is similar, so it would not
bring any difference to the purpose of the law, which to protect the interest of the traders
against misrepresentation. It would rather make the law very clear and substantial on the
subject.
Under the present system, passing off is a form of tort. So no criminal proceedings can be
initiated against a wrong doer. He escapes the liability by paying damages (although
system of punitive damages exist, they are very rare) or suffers injunction. But these do
not act as deterrence. If this action is done away with, and this merged with the
infringement action, then criminal measures can be initiated every infringer, without a
chance of his escaping the punitive measures.
The Trade marks Act, 1999 has provisions for registering trade marks which are proposed
to be used in the future. After a thorough analysis of the law of infringement and passing
off and the case laws in this regard, one question still remain unanswered. Whether
infringement and passing off can be claimed against a proposed user?
The suggested answer to this question is, since, a proposed user is also a registered user,
and it has all the characteristics of a registered proprietor. So an infringement action can

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be claimed even against registered proprietor of a trade mark which is proposed to be

used within a certain statutory period (within 5 years from the date of registration).

Appendix 1

Judging the likelihood of confusion- The U.S.A Trade Mark Law

The scope of a trademark is determined by whether there is "likelihood of confusion"
(note that this is different from whether there has been any actual confusion), between
that trademark and another trademark in the minds of the consuming public. Likelihood
of confusion is generally determined by reviewing a set list of factors which, depending
on the judicial circuit, range from 7 to 13 in number. In the Federal Circuit, for example,
these are called the DuPont factors:
We determine likelihood of confusion by focusing on the question whether the
purchasing public would mistakenly assume that the applicant's goods originate
from the same source as, or are associated with, the goods in the cited
registrations. [citation]. We make that determination on a case-by-case basis,
[citation], aided by the application of the factors set out in In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Those factors are:
1. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation, and commercial impression.

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2. The similarity or dissimilarity and nature of the goods . . . described in an

application or registration or in connection with which a prior mark is in
use.
3. The similarity or dissimilarity of established, likely-to-continue trade
channels.
4. The conditions under which and buyers to whom sales are made, i.e.
"impulse" vs. careful, sophisticated purchasing.
5. The fame of the prior mark . . . .
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and the conditions under which there has been
concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used . . . .
10. The market interface between the applicant and the owner of a prior mark .
...
11. The extent to which applicant has a right to exclude others from use of its
mark on its goods.
12. The extent of potential confusion . . . .
13. Any other established fact probative of the effect of use.

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Appendix 2
FORM TM-5
THE TRADE MARKS ACT, 1999
Agents code No:
Proprietors code No:
Fee : Rs.2500
Back
Notice of opposition to application for registration of a trade
mark or a Collective mark or a certification mark[Section 21(1). 64,66, 73. rule 47(1).131(1),138(1)
(To be filed in triplicate)
In the matter of Application No...................by .................I(or we)'
...................... hereby give notice of my (or our) intention to oppose
the registration of the trade mark/certification mark/collective mark/
2
advertised under the above number for class ............in the Trade
Marks Journal dated the ............day
of.........20......No..............page.....................
The grounds of opposition are as follows:3............................. '
All communications in relation to these proceedings may be sent to the
following address in India
........................................ ...........................
................................ .......................
Dated this ....................... day of ........................ 20............
4...........................
SIGNATURE
NAME OF SIGNATORY IN

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LETTERS
To
The Registrar of Trade Marks,
The office of the Trade Marks Registry at[5]
1. State full name and address. An address for service in India
should be given if the opponent has no place of business or of
residence in India.
2. Strike out whichever is not necessary
3.If registration is opposed on the ground that the mark resembles
marks already on the register the numbers of those marks and of the
journals in which they have been advertised are to be set out.
4. Signature of the opponent or of his agent.

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5. State the name of the place of the appropriate office of the Trade
Marks Registry (See rule 4).
FORM TM-6
THE TRADE MARKS ACT, 1999
Agents code No:
Proprietors code No:
Fee: Rs. 1000/Back
Form of Counterstatement
(Sections 21(2), 47, 57, 59(2), rules 49, 93,99,101)
(To be filed in triplicate)
In the matter of an opposition No...............to application
No................in class _____for the registration of a trade mark.
I (or we)' ....................the applicant(s) for registration of the above
trade mark, hereby give notice that the following are the grounds on
which I (or we) rely for my(or our) application:I (or we) admit the following allegations in the notice of
opposition................
All communications in relation to these proceedings may be sent to the
following address in India:
................................... ................................
Dated this ............day of.........20......
2..............................
SIGNATURE
To
The Registrar of Trade Marks
The Office of the Trade Marks Registry at 4......................
1. State the full name and address as stated in the application for
registration
2. Signature of the applicant or of his agent.
3. State the name of the place of the appropriate office of the Trade
Marks Registry (See rule 4).

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Appendix 3

1. History of the Legal Protection of Trade Marks- under the English Law and the
European legal System.

The history of the legal protection of trade marks has been less well charted than most
areas of intellectual property, and the early developments are particularly obscure. It
seems that the courts first began to protect marks at the behest of traders in the sixteenth
century. Initially protections were provided by the Common Law Courts through the
action for deceit. Not much later, the Courts of Chancery used the action for passing off
to protect a trader who had developed reputation or goodwill through use of a particular
sign or symbol. This action is still available today. In reflection of its origins in the
common law of deceit, passing off always required a trader to establish that there had
been a misrepresentation which deceived consumers.

A system of registration of marks was first introduced in 1875. The impetus for this came
from foreign sources than from domestic pressure. With increasing interest in
international recognition of industrial property rights, foreign traders were unconvinced
that the British law provided them with the same level of protection against the misuse of
their signs that foreign laws afforded to British traders in similar circumstances. The
system allowed for registration of a limited range of marks that the Registry subjected to
examination prior to their entry on the Register.

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Trade Marks registration brought with it a number of benefits. The most obvious was that
it reduced the difficulties of proving goodwill and distinctiveness that arose in an action
for passing off187. In addition, registration brought with it the possibility of a sign being
protected prior to use. Other advantages of trade marks over passing off developed later:
most notably when the 1938 Act permitted the assignment of trade marks separately from
the goodwill of the business188. Despite this, passing off remained valuable in so far as
the criteria of registrability were restrictive, the process of registration was inappropriate
or unnecessary onerous, and the rights granted were broader.

One of the most important advocates for greater protection of trade marks was Frank
Schechter, who is also a leading historian of trade marks. He radically asserted that
modern trade marks law should have a rational basis189. More specifically, Schechter
proposed that the preservation of the uniqueness of a trade mark should constitute the
only rational basis for its protection. The arguments that Schechter made for expansion
have been gradually acknowledged and implemented in national law. Notable examples
including the expansion of the rights given to a trade mark proprietor to include dilution
(that is, certain uses of marks on dissimilar goods, even where consumers appreciate
there is no connection); the recognition of signs as assets; the gradual abandonment of
various restrictions on dealing with marks; and the introduction of extended infringement
provision in the Trade Marks Act, 1994 (UK).

187

Spalding v. Gamage (1915) 32 RPC 273

Trade Marks Act, 1938
8 F. Schehter, The Rational Basis of Trade Marks Protection 1927 Harvard Law Review 813, 831
The Rational Basis of Trade Marks protection, F. Schechter, 1927, Harvard Law Review, 813

188

145

Trade marks law in the European Union- European trade mark law is governed by
national law in the countries which make up Europe, together with European Law within
those European countries which are also EU member states. Trade marks may be
registered within individual countries, or across the whole of the EU (by means of a
Community Trade Mark).

Within EU member states, national law implements European Directives so that the law
in each jurisdiction is more or less equivalent, the eventual goal being harmonization of
trade mark law within the EU.

Certain aspects of law do vary on a country by country basis within the EU, such as the
protection for unregistered trade marks within the United Kingdom under the common
law tort of 'passing off' and the inclusion of provisions relating to Honest Concurrent Use
into UK national trade mark law (which have their basis in the 1938 UK legislation rather
than the Directive which led to the drafting of the UK Trade Marks Act 1994).
Notable countries within Europe but outside the EU include Norway and Switzerland.
There is also a system known as the Madrid System which applies within European
countries and provides a means of streamlining applications on a national level via a
single international registration which may have effect in several countries, as designated
by the applicant.

2 Growth and position of Trade Mark laws in Australia

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Australian trade mark law is based on the Trade Marks Act 1995 (Cth), which is
administered by IP Australia, an Australian government agency within the Department of
Industry, Tourism and Resources.
Amongst other things, the Trade Marks Act defines trade marks (including certification
marks and collective marks), what constitutes trademark infringement and defences and
exceptions thereto, and (together with the Trade Marks Regulations) sets out procedures
for registration and other proceedings before the Registrar of Trade Marks. The
legislation does not codify the law of trade marks in Australia; as a common law
jurisdiction, a trade mark owner may also (for example) seek to protect its rights through
legal proceedings for passing off.
Section 17 of the Trade Marks Act defines a trade mark as "a sign used, or intended to be
used, to distinguish goods or services dealt with or provided in the course of trade by a
person from goods or services so dealt with or provided by any other person".
The procedure to register a trade mark in Australia is much the same as other countries. A
completed application is filed with IP Australia (either by delivery to one of its regional
offices or electronically) and checked ("examined") by an examiner of trade marks for
compliance with formalities and substantive requirements (eg. registrability, and lack of
confusing similarity with a conflicting trade mark). If an application is accepted it will be
published for opposition purposes for three months, during which time third parties may
oppose registration on certain grounds. If there are no oppositions, or any oppositions are
overcome, a certificate of registration will issue.

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The term of registration in Australia is 10 years, which may be extended for additional
periods of 10 years. Failure to use a registered trade mark for a period of three years or
more may expose the registration to cancellation on the grounds of non-use.

2 Growth and position of Trade Mark Law in Canada

Canadian trade-mark law provides protection to marks under the Canadian Trade-mark
Act. Trade-mark law provides protection for distinguishing marks, certification marks,
distinguishing guises, and proposed marks against those who appropriate the goodwill of
the mark or create confusion between different vendors wares or services. A mark can be
protected either as a registered trade-mark under the act or can alternately be protected by
a common law action in passing off.
Passing off- Most of the law of passing off has been inherited from the UK case law. For
a successful action in passing off the claimant must first show that the owner of the wares
had goodwill or reputation. Second, the claimant must show that the other parties use of
the mark constitutes misrepresentation of their wares as those of the claimants. Third, the
claimant must show that the misrepresentation could potentially or actually did cause
harm.
Registerable marks- A mark must be registerable in order to protected under the Act.
Generally, all visual marks can be registered to the exception of marks that possess
certain characteristics prohibited by the Act. Among the prohibited characteristics
include:

a mark cannot be registerable if it is "primarily merely" a family name.

a mark that can produce confusion with another vendor's mark

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a mark that is "clearly descriptive" or "deceptively misdescriptive".

one of an enumerated prohibited marks such as government, royal, or

international marks.

Infringement- A mark that has been registered gives the right to the owner to sue another
party who uses a mark that interferes with the owners right. Under section 20 of the Act,
the owner must have a) registered the mark, b) used the mark, and c) used it for the sale
of identical wares or services

3 Growth and position of Trade Marks Laws in Hong Kong

European trade mark law is governed by national law in the countries which make up
Europe, together with European Law within those European countries which are also EU
member states. Trade marks may be registered within individual countries, or across the
whole of the EU (by means of a Community Trade Mark).

Within EU member states, national law implements European Directives so that the law
in each jurisdiction is more or less equivalent, the eventual goal being harmonization of
trade mark law within the EU.

Certain aspects of law do vary on a country by country basis within the EU, such as the
protection for unregistered trade marks within the United Kingdom under the common
law tort of 'passing off' and the inclusion of provisions relating to Honest Concurrent Use
into UK national trade mark law (which have their basis in the 1938 UK legislation rather
than the Directive which led to the drafting of the UK Trade Marks Act 1994).

Notable countries within Europe but outside the EU include Norway and Switzerland.

149

There is also a system known as the Madrid System which applies within European
countries and provides a means of streamlining applications on a national level via a
single international registration which may have effect in several countries, as designated
by the applicant.

4 Growth and position of Trade Mark laws in China

The system of trademark law in mainland China is administered by the Trade Mark
Office (with an appeal function administered by the Trademark Review and Adjudication
Board and the courts). The two principal pieces of legislation forming the trademark
system are the Trademark Law, and the Unfair Competition Law.

Only registered trade and service marks are protected in the PRC: there is no common
law protection for unregistered trademarks (except for "well-known" marks, as detailed
below).

Amendments to the PRCs Trademark Law on October 27, 2001, allow threedimensional trademarks and colours to be registered as trade marks. Collective and
certification trademarks can also now be registered in China. "Well-known" trademarks
are also now recognised under Chinese law (the courts and administrative bodies will
take into account the level of knowledge of the trademark by relevant consumers, the
length of use of the trademark, the amount of publicity given to the mark in China, and
the history of the mark).

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Trademark piracy is a rampant problem for trademark owners in China, despite the highly
effective and speedy administrative raid procedure available to trademark owners under
the auspices of the State Administration for Industries and Commerce.

5 Growth and position of Trade Mark law in U.S.A

Trademarks were traditionally protected in the United States only under State common
law, growing out of the tort of unfair competition. In 1946, Congress passed the Lanham
Act (15 U.S.C. 10511127) under its Commerce Clause power, which creates federal
protection and registration for trademarks, administered by the United States Patent and
Trademark Office ("USPTO"). State law continues to add its own protection,
complementing the federal system.

Judging the likelihood of confusion

The scope of a trademark is determined by whether there is "likelihood of confusion"

(note that this is different from whether there has been any actual confusion), between
that trademark and another trademark in the minds of the consuming public. Likelihood
of confusion is generally determined by reviewing a set list of factors which, depending
on the judicial circuit, range from 7 to 13 in number. In the Federal Circuit, for example,
these are called the DuPont factors:

We determine likelihood of confusion by focusing on the question whether the

purchasing public would mistakenly assume that the applicant's goods originate
from the same source as, or are associated with, the goods in the cited
registrations. We make that determination on a case-by-case basis, aided by the

151

application of the factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). Those factors are:

1. The similarity or dissimilarity of the marks in their entireties as to

appearance, sound, connotation, and commercial impression.
2. The similarity or dissimilarity and nature of the goods . . . described in an
application or registration or in connection with which a prior mark is in
use.
3. The similarity or dissimilarity of established, likely-to-continue trade
channels.
4. The conditions under which and buyers to whom sales are made, i.e.
"impulse" vs. careful, sophisticated purchasing.
5. The fame of the prior mark . . . .
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and the conditions under which there has been
concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used . . . .
10. The market interface between the applicant and the owner of a prior mark .
...
11. The extent to which applicant has a right to exclude others from use of its
mark on its goods.
12. The extent of potential confusion . . . .
13. Any other established fact probative of the effect of use.

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Obtaining a trademark

A person or business entity acquires rights in a trademark either by using it in the normal
course of business (for example on a tag or label for merchandise being sold to the
public) or by filing an application for registration of the mark in the USPTO. An
application for registration may be based upon actual use in commerce or upon a bona
fide intent to use (ITU). An ITU application will not become a registration until
documents evidencing actual use of the mark in interstate commerce, which generally
must be shown within a limited time period. Infringing use can only be stopped with
actual registration, not an ITU. The value of ITU is in establishing prioritywho
acquired the right to use the mark firstand so infringers are on borrowed time pending
that registration.

An individual may represent himself before the USPTO in attempting to register a

trademark. However, there are many pitfalls that can trap someone who is not
experienced in trademark prosecution matters. An experienced attorney who specializes
in trademark registrations typically will charge $800.00 to $1500.00 for preparing and
filing an application for trademark registration. If the application is initially rejected
because the mark is deemed descriptive or generic, then there will be additional fees for
attempting to overcome such rejections.

Recent developments in U.S. trademark law have included the adoption of the Federal
Trademark Dilution Act of 1995 (see Trademark dilution), and the 1999 AntiCybersquatting Consumer Protection Act.

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Consistent with the limited nature of trademark protection and the free speech guarantees
of the First Amendment, U.S. law provides for a fair use defense to trademark
infringement comparable to that under copyright law. The two main categories of
protected usage are nominativeusing the trademark to actually refer to the trademarked
product or trademark owner; and usage of the mark in its common sense, such as a
descriptive word or common and unoriginal symbol. For example, Pepsi advertisements
may use Coca Cola's trademark when making comparisons to Pepsi products. These uses
are still subject to the requirement that there be no consumer confusion as to source or
sponsorship. Trademarks may also be lawfully used in parodies, since in that case there is
usually no likelihood of confusion.

Registered marks versus common law marks

In the United States, a trademark which has been registered with the USPTO uses the
symbol. A business that does not actually register a trademark may instead use the
common law designation "TM" in superscript next to the mark. Using the "TM" mark
does not actually confer any legal rights in federal law, but it may nevertheless help a
business acquire secondary meaning concerning a specific mark.

Registered and non-registered trademarks are both eligible for protection under the
Lanham Act. The advantage of having a registered mark is that after five years of
unopposed use, the mark becomes "incontestable". An incontestable mark cannot be
attacked on the grounds that it is merely descriptive (even if it is). This means that the
defendant in a trademark infringement suit cannot directly attack the plaintiff's mark, but
must instead focus on showing a lack of a likelihood of confusion. Even without

154

incontestability, a registered mark has a presumption of being a valid trademark, placing

the burden on the defendant to attack the plaintiff's mark.

Differences from related laws

Unlike copyright law which provides for criminal penalties as well as civil damages,
trademark law in the United States is entirely enforced through private lawsuits. The
responsibility is entirely on the mark owner to file suit in either state or federal civil court
in order to restrict an infringing use. Failure to "police" a mark by stopping infringing
uses can result in the loss of protection.

Also in contrast to copyright or patent law, trademark protection has no expiration. As

long as the mark is continually used, it can be protected from infringement indefinitely.

Because federal trademark law is derived from Congress Commerce Clause power, and
not a specific clause in the U.S. Constitution (like copyrights and patents), there must be
some degree of interstate commerce present for a trademark to receive Lanham Act
protection. The U.S. Supreme Court invalidated the first federal trademark law by finding
that Congress could not stretch the Copyright Clause to cover trademarks, so Congress
had to fall back to only those trademarks used in interstate commerce instead.

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List of References
List of Books referred
1. Narayanan P., Law of Trade Marks and Passing off, 6th Ed. Eastern Law House
2. Wadhera B.L, Law related to Patents, Copyrights, Designs and Geographical
Indication, Universal Law Publishing.
3. Das J.K, Intellectual Property Rights, Kamal Law House.
4. Acharya N.K, Text Book on Intellectual Property, 2nd Ed. Asia Law House
5. F. Schechter, The Historical Foundation of Law Relating to Trade Marks
6. Lionel Bentley and Sherman, Intellectual Property Law, Oxford Publication.
7. McCarthy on Trade Marks and Unfair Competition, 4th Rd. Volume 1
8. Study material of WIPO
9. Nims on Unfair Competition.
List of Articles (Partial List)
1. The Legal Protection of Trade Marks, Yale Law Journal, (1948) 57
2. Expressive Genericity: Trade Marks as Language in the Pepsi Generation, R. Dreyfuss,
(1990) 65 Notre Dame Law Review.
3. The Rational Basis of Trade Marks protection, F. Schechter, 1927, Harvard Law
Review, 813
List of Law Journals
1. Patents, Trade Marks, Copyright Cases (PTC Journal)
2. AIR
3. ICFAI Law Journals.

156

List of websites
1. www.wipo.int
2. www.iprindia.com
3. www.lexorbis.com
4. www.wto.org
5. www.ipindia.nic.in
6. www.wikipedia.org

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