Assignment 6

Question :

Whether passing off action can be initiated in respect of a design? Answer with citations.

Answer :

Yes the Passing off action can be initiated in respect of a design. Passing off is considered as sui
generis right on the other hand design is considered as a statutory right. A statutory right entails
its origin and extinguishment happens in terms of the statue. Prior publication of a design is a
ground for its revocation under Design Act. In terms of passing off action Delhi High court in
1999 in the case of Smithkline Beecham Plc vs. Hindustan Lever Ltd. accepted that the passing
off action is available in case of a design and the court in its judgement stated that passing off
action is also available to case of design and such right could be enforced provided the same is
available in accordance with law even in a case of design. Further in the same case the court
granted injunction as the honourable court found out that the act of defendant could lead to
misrepresentation and the defendant was restrained.

Again in the case of Micolube India Ltd. vs. Rakesh Kumar & Ors. it was held that a passing
off action lies in the case of a design also. A full bench of Hon’ble Judges’ of the Delhi High
court held that a plaintiff could institute a suit for infringement of a design against a defendant,
who was also a holder of a registered design. “ The plaintiff would be entitled to institute an
action of passing off in respect of a design used by him as a trade mark provided the action
contains the necessary ingredients to maintain such a proceeding. The argument that such a suit
could be instituted only after the expiry of the statutory period provided under Section 11 of the
Designs Act, does not find favour with us. This is for the reason that in a given fact situation the
plaintiff may have commenced the use of the design as a trademark after its registration. While
Section 2(d) of the Designs Act excludes from the definition of a design, any trademark which is
defined as such in clause (v) of sub-Section (1) of Section 2 of the 1958 Act or property mark, as
defined in Section 479 of the IPC, or any artistic work as defined in clause (c) of Section 2 of the
Copyright Act - the use of the design as a trademark post its registration, is not stipulated as a
ground for cancellation under Section 19 of the Designs Act.”

Further in terms of passing off action in the case of Gorbatschow Wodka K.G. v. John
Distilleries Limited 2011 (47) PTC 100 (Bom) The Ld. Judge granted an interim injunction in a
passing off action against a defendant, which had a registered design in its favour. The plaintiff
in that case filed a passing off action against the defendant in which he asserted that the shape of
its Wodka bottles was distinctive and formed an intrinsic part of its goodwill and reputation. The
plaintiff claimed that, it had registered the shape of its bottle in various jurisdictions across the
world, and that, in India, it had applied for registration of the shape of its bottle, as a trademark
under the Trademarks Act. The defendants, had obtained registration under the Designs Act and
thus inter alia pleaded that an action for passing off would not lie. The Bombay High Court in its
judgement under para 15 stated that

“ The fact that the Defendant has obtained registration under the Designs Act, 2000, does not
impinge the right of the Plaintiff to move an action for passing off. Section 27(2) of the
Trademark Act, 1999 provides that nothing in the Act shall be deemed to affect the right of
action against any person for passing off goods or services. Section 27(2) is a statutory
recognition of the principle that the remedy of passing off lies and is founded in common law.”

Assignment 7

Question :

Design has a life span of 15 years. Whether passing off action can be initiated even after expiry
of its life span?

Answer :
The duration of the registration of a design is initially 10 years from the date of registration, but
in cases where claim to priority has been allowed the duration is 10 years from the priority date.
This initial period of registration may be extended by further period of 5 years on an application
made in Form-3 accompanied by prescribed fees to the Controller before the expiry of the said
initial period of ten years. The proprietor of a design may make application for such extension
even as soon as the design is registered. Passing off action can't be initiated after the expiry of
the life span of a design which is typically 10 + 5 years. In the case of Kent R-O Systems Ltd &
Anr vs Sandeep Agasrwal & Anr on 30 January, 2014 the court stated that the remedy of
the passing off in so far as the shape of the article is concerned shall also be available even
during continuing of the design monopoly or even after the expiry of same to the extent that the
claim of the feature of the shape is not covered within the novelty claim under
the Design monopoly rights and the said claim of the protection qualifies all the necessary
ingredients of the Trade Mark. A remedy of passing off in so far as the shape of the article is
concerned shall not be available even after the expiry of the Design to the extent the said feature
of the shape of the article is covered within the novelty claim as made under the Design Right as
after expiration of the Design, the novel shape claimed under the Design Act goes in public
domain.

Further in the case of Super Smelters Limited & Ors. Vs Srmb Srijan Limited on 18 December
2019 the action in passing off having regard to the facts of the case . It was argued that there had
been no revocation under the Design Act, the respondent in the present case continued to enjoy a
monopoly over the design for a period of 15 years and not thereafter. The court was of the
opinion that no action for passing off on the basis of the registered design after expiry of its
statutory validity period could be maintainable under the Trade Marks Act by treating the said
design as a mark under the Trade Marks Act.

Assignment 8

Question :
Where does the territorial jurisdiction in a composite suit for infringement of Copyright and
passing off action of Trademark lie? Support with citations.

Answer :

The Apex Court in the case of Dabur India Ltd. v. K.R.Industries CIVIL APPEAL NO. 3637
OF 2008 the Supreme court in its judgement dismissed their appeal on grounds of lack of
territorial jurisdiction to entertain the matter. The claim by Dabur Industries was first filed in
High Court of Delhi in the year 2002 seeking permanent injunction against the
defendant, K.R.Industries on two grounds:

Firstly to restrain them to reproduce any of the artistic feature of the plaintiff's Dabur Red tooth
Powder including colour combination, get up, lay out, arrangement or packaging which shall
amount to infringement of a copyright as the work was claimed to fall within the meaning of
"artistic work" as defined by Section 2(v) (c) of the Copyright Act, 1957.
Secondly to manufacture and sell or offer to sell tooth powder which is an imitation or
substantial reproduction of the plaintiff's Dabur Red Tooth Powder that shall amount to passing
off.

The respondent's application for rejecting the plaint under order 7 Rule 11, Code of Civil
Procedure, 1908 was accepted by the single judge of high court on grounds of lack of
jurisdiction, the respondent company being a resident of Andhra Pradesh.

An intra court appeal was dismissed thereby relying upon Dhodha House Judgment. The
plaintiff also failed to prove that defendants carried out business in Delhi. While dismissing the
appeal it was also mentioned that a suit for infringement of copyright and passing off cannot lie
in the same forum, since Section 62 Copyright Act, 1957 provides for an additional forum which
is not the case with passing off.

Section 62(1) of the Copyright Act, 1957 defines a "district court having jurisdiction" to include
the district court where the plaintiff resides, whereas the Trademark Act doesn't confer any such
jurisdiction. The question that came into consideration in the Dhodha Case was that whether the
said district will have jurisdiction, the cause of action being both in terms of the Copyright and
the Trademark Act.

Division Bench of the High Court held that whereas the HC shall have jurisdiction to determine
the matter based on the copyright infringement, the plaintiff is entitled to file for a fresh suit or
passing off.

This Hon'ble Court has concurred with the aforesaid view holding that it stood clear after
reading the said provisions of the Copyright and Trademark Act that an additional forum i.e.
district court within the jurisdiction of which the plaintiff resides, was provided for, only in the
case of copyright infringement or a registered trademark but not for passing off.

It has been made explicit after the Dhodha House v. S.K. Maingi (2006) 9 SCC 41 judgment that
an order passed by the Court having no territorial jurisdiction shall be a nullity. the Court
observed that a composite suit based on infringement of trade mark, copyright, passing off and
for rendition of accounts of profits as also injunction having been filed, the Delhi High Court had
the territorial jurisdiction to entertain the suit.

This would imply that where a copyright is infringed the Court shall have the incidental power to
invoke jurisdiction. The judgment cannot, however, be taken to mean that two suits having
different causes of action be club together as a composite suit. The language of Order II Rule 3
of the Civil Procedure Code makes it clear that a composite suit cannot entitle a court to entertain
a suit in respect of which it has no jurisdiction.

Assignment 9

Question :

Whether photocopy can be considered as primary evidence or secondary evidence under

evidence act
Answer :

Photocopy is considered as secondary evidence. Secondary evidence is the evidence that has
been reproduced from an original document or substituted for an original item. For example, a
photocopy of a document or photograph would be considered secondary evidence. Courts prefer
original, or primary, evidence. They usually try to avoid using secondary evidence wherever
possible. This approach is called the best evidence rule. Nevertheless, a court may allow a party
to introduce secondary evidence in a number of situations. The court after hearing the arguments
of both the parties decides whether to admit secondary evidence after determining whether the
evidence is in fact authentic or whether it would be unfair to admit the duplicate. However, when
a party questions whether an asserted writing ever existed, or whether a writing, recording, or
photograph is the original, the trier of fact makes the ultimate determination. The trier of fact is
the judge if it is a bench trial; in a jury trial, the trier of fact is the jury. Section 63 of the Indian
Evidence Act 1872 – Secondary evidence means and includes –

1. Certified copies given under the provisions hereinafter contained;

2. Copies made from the original by mechanical process which in themselves ensure the
accuracy of the copy, and copies compared with such copies;
3. Copies from or compared with the original;
4. Counterparts of documents as against the parties who did not execute them;
5. Oral accounts of the contents of a document given by some person who has himself seen
it.

Clause 1 to 3 deals with copies of document

This section is exhaustive in regards to the kinds of secondary evidence admissible under the
Act. The expression “means and includes in this section” make it clear that the five clauses
referring to secondary evidence are exhaustive.

However secondary evidence cannot be made admissible mechanically. Sufficient reason for
non-production of the original document must be shown. For e.g. tenant file Xerox copy of
money receipt in his plea without giving proper reason and Xerox is authentic then it will be not
admissible.
 Assignment 10

Question :

A suit for passing off was instituted in the district court of Bangalore in respect of a trademark
not registered by the plaintiff claiming that his trademark has been copied by the defendant. The
defendants ordinary place of the business is Chennai he does not sell his products in Bangalore
however few shops were selling this product in Bangalore can the district court of Bangalore
entertain the suite for passing of action ?

Answer :

As mentioned a suit was instituted in the high court of Bangalore in respect of a unregistered
trademark however the trademark act 1999 not only protects the registered trademark but also the
unregistered trademark under the trademark law section 28 provides statutory remedies for the
registered trademark. But 27(2) of the trademark also provides remedy for an unauthorized use
of an unregistered trademark. Passing off is common law torts which is most normally used to
ensure altruism that is appended to the unregistered trademark. Passing off is essentially when
one individual is making his products or administrations look like that of someone else. An
activity of giving is accessible to both enrolled and unregistered brand names, however a suit for
infringement is accessible for just enlisted brand names. While the target that is meant to be
accomplished continues as before in the two suits, still they are an altogether different ideas.
Sorts of alleviation accessible in both the suits are changeless directive, between time order,
harms or record of benefits, conveyance of the encroaching merchandise for pulverization and
cost of the legitimate procedures. an infringement suit, proving deceptive similarity would be
enough to establish that the infringer is liable, under an action of passing off, the plaintiff will
not only have to prove deceptive similarity but also prove how the defendant's mark is likely to
cause confusion among the public and also has a likelihood of causing injury to plaintiff's
goodwill. It is important for the plaintiff to prove how his mark has become distinctive to his
goods and people associate the mark to his own goods. The first step to proving passing off is for
the plaintiff to establish that the plaintiff was a prior user of the mark. As stated in Consolidated
Foods Corporation v. Brandon & Co. pvt Ltd,"Priority in adoption and use of a trade mark is
superior to priority in registration". Supreme Court has also laid emphasis on prior use in the
case of Satyam Infoway Ltd. vs. Siffynet Solutions (P) Ltd, (2004) 6 SCC 1452 "The action is
normally available to the owner of a distinctive trademark and the person who, if the word or
name is an invented one, invents and uses it. If two trade rivals claim to have individually
invented the same mark, then the trader who is able to establish prior user will succeed. The
question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove
long user to establish reputation in a passing off action. It would depend upon the volume of
sales and extent of advertisement." . In terms to whether district court can entertain the suit for
passing off in regards to that the registered proprietor can file suit in the local limits of where
actually and voluntarily resides or carries on business or personally work for gain, during the
institution of the suit. But a suit of passing off has to follow the regular rules of jurisdiction as
per section 20 of Code of Civil procedure which means that a passing off suit can only be filed in
a District Court.

Assignment 11

Question :
What is the lifespan of a design ? What are the legal requirements for registration of design ? In
case of an infringement of design, can a criminal case be filed ?

Answer :

Under the Designs Act 2000 the total period of validity of registration of a Design under the
(Indian) Designs Act, 2000 is 15 years. Initially, a design is registered for a period of 10 years,
giving the owner of registered design exclusive rights to sell, make or import the articles and
initiate a legal action against infringement. This initial period of 10 years can be further extended
by a period of 5 years on the payment of renewal fees. But the renewal fee of ₹2000/- for further
extension of 5years is to be paid before the expiry of 10 years duration.

The legal requirements for registration of design are :

 The design should be new or original, not previously published or used in any country
before the date of application for registration. The novelty may reside in the application
of a known shape or pattern to new subject matter. However, if the design for which
application is made does not involve any real mental activity for conception, then
registration may not be considered.
 The design should relate to features of shape, configuration, pattern or ornamentation
applied or applicable to an article. Thus, designs of industrial plans, layouts and
installations are not registerable under the Act.

 The design should be applied or applicable to any article by any industrial process.
Normally, designs of artistic nature like painting, sculptures and the like which are not
produced in bulk by any industrial process are excluded from registration under the Act.

 The features of the designs in the finished article should appeal to and are judged solely
by the eye. This implies that the design must appear and should be visible on the finished
article, for which it is meant. Thus, any design in the inside arrangement of a box, money
purse or almirah may not be considered for showing such articles in the open state, as
those articles are generally put in the market in the closed state.

 Any mode or principle of construction or operation or any thing, which is in Substance a

mere mechanical device, would not be registrable design. For instance, a key having its
 novelty only in the shape of its corrugation or bend at the portion intended to engage with
levers inside the lock associated with, cannot be registered as a design under the Act.
However, when any design suggests any mode or principle of construction or mechanical
or other action of a mechanism, a suitable disclaimer in respect there of is required to be
inserted on its representation, provided there are other registrable features in the design.
 The design should not include any trade mark or property mark or artistic works.

Indian law provides civil remedies to registered designs against infringement, including
interim and permanent injunctions, as well as damages. Such civil action enforcing a
registered design can be filed before the district court where the defendant resides or
conducts business or where infringement has taken place. The infringer can avail the
defences of non-infringement as well as invalidity of the design on the grounds that the
design lacks novelty, is indistinguishable from a known design or contains scandalous matter.
In case, the infringer claims the defence of invalidity, the suit is transferred to the high court
with jurisdiction over the concerned district court. The act mandates that the registered owner
of a design should mark the article with the word 'Regd' or 'Registered' and the registration
number, except in cases of textile designs and articles made of charcoal dust. The design
owner cannot claim damages in the absence of such mark from the article. Indian courts
regularly deal with design infringement matters and a robust body of case laws lays down the
established legal principles. Similar to trademarks, an unregistered design may be protected
under the common law tort of passing off, if it has become distinctive due to long and
continuous use. In order to claim such remedy, the design owner must establish that the
design had become distinctive in respect of such goods due to long and continuous use.
Designs may also be protected under the Copyright Act, 1957 if such design is not registered
under the Designs Act. However, in such cases protection is limited and expires once the
design has been applied to more than 50 articles by an industrial process.

A special bench of five judges of the Delhi High Court, in its judgment in Carlsberg
Breweries v. Som Distilleries and Breweries, held that a composite suit for two distinct
causes of action – one for infringement of a registered design and the other for passing off –
is maintainable. In this case, both the causes of action originated from the same fact, i.e. the
sale or offer for sale by the defendant of their products. Since the plaintiff approached the
 court regarding the action for passing off and design infringement due to the aforementioned
sale or offer for sale, the court stated that such cause of action cannot be split. It further noted
when the claim for design infringement is prima facie weak, on the basis of same set of facts;
the court can provide relief to the plaintiff in form of a passing off action.

In another significant case, Vega Auto Accessories (P) Ltd v. SK Jain Bros Helmet (I) Pvt
Ltd, the Delhi High Court held that the registered proprietor of a design could not use the
invalidity or prior publication of the plaintiff's design as a defence in a suit for design
infringement. The court noted that once a party has filed an application – claiming that its
design is new or original, has not been published before and is distinguishable from known
designs – the party cannot oppose the claim for infringement by a prior registrant on the
ground that such prior registrant's design is not novel or original. It was thus held that where
the plaintiff has prior registration of a design, and the defendant is the registered proprietor of
a design that has infringed registered design of the plaintiff, the defendant is stopped from
pleading invalidity of the registration in favour of plaintiff.

Assignment 12

Question :

What are the differences between trademarks and geographical indications ?

Answer :

Geographical indications (GIs) identify a good as originating from a particular place. By

contrast, a trademark identifies a good or service as originating from a particular company.

A trademark often consists of a fanciful or arbitrary sign. In contrast, the name used as a
geographical indication is usually predetermined by the name of a geographical area.
 Finally, a trademark can be assigned or licensed to anyone, anywhere in the world, because it is
linked to a specific company and not to a particular place. In contrast, a GI may be used by any
persons in the area of origin, who produces the good according to specified standards, but
because of its link with the place of origin, a GI cannot be assigned or licensed to someone
outside that place or not belonging to the group of authorized producers.

As per Section 2(1)(e) of the Geographical Indications of Goods (Registration and

Protection) Act, 1999, a geographical indication refers to an indication capable of identifying
goods, including natural goods, agricultural goods, or manufactured goods, as manufactured or
originating in a country’s territory, or a locality or region within that territory, where a specific
quality, reputation, or any other attribute of such good is particularly a characteristic to its
geographical origin. In the case of manufactured goods, one of the activities corresponding to the
processing, production, or preparation of goods, should take place in the territory, region, or
locality.

As per the Indian Trademarks Act 1999, a trademark is defined as a mark, which can be
represented graphically and can distinguish the goods or services of one individual from those of
others.

Differentiating a trademark and GI.

 A trademark can be name, sign, or identity of a brand or business, which further differentiates
the goods or services of one business entity from the others. A technology company is still a
technology company; however, based on the manufacturer’s trademark, it can be well-
distinguished. For instance, Microsoft and Apple are the Registered Trademarks of individual
technology companies.
 A Trademark Registration is usually filed by a single business entity or individual,
whereas Geographical Indication Protection is granted to a group of manufacturers, who
belong to a particular location, where the good was first originated.
 Only a single person, business entity, or a manufacturer can use a registered trademark, while
all the producers or manufacturers in the same locality or region are permitted to the use the
same GI.
 A trademark can be a word, letter, numeral (or numerals), a combination of numerals and
letters, hologram, sound, smell, an abbreviation, a name, or a device. However, GIs can only
be names or symbols corresponding to a particular region or place.
 A trademark is a result of human creativity or intellect, which further determines its
uniqueness or distinctiveness. A trademark can be suggestive, arbitrary, or distinctive. On the
other hand, GIs identify the goods based on their place of origin. Factors like climate,
topography, human work (of a specific geographical location), amongst many others,
determine the nature of the GIs.

Assignment 13

Question :

Mysore silk is a GI. It was used by a shopkeeper as a trademark. He used to buy Mysore silk
sarees from KSIC the registered proprietor of Mysore silk and used to sell those sarees in
Bangalore. Does his action amount to infringement of GI and/ or trademark ?

Answer :

Mysore silk which is registered GI and this the rights resides in the hands of authorised user and
the community which produces the same understanding that what leads to an infringement of the
GI . Firstly when an unauthorised user uses a geographical indication that indicates or suggests
that such goods originate in a geographical area other than the true place of origin of such goods
in a manner which mislead the public as to the geographical origin of such goods. Secondly
when the use of geographical indication result in an unfair competition including passing off in
respect of registered geographical indication. Lastly when the use of another geographical
indication results in false representation to the public that goods originate in a territory in respect
of which a registered geographical indication relates. Since the seller used to buy the silk sarees
from the KSIC from a registered proprietor of Mysore silk and later used to sell those sarees
would not lead to infringement as he was purchasing the sarees from a registered proprietor and
reselling under the same brand name without modification thus it would not lead to infringement
of the GI.
 Assignment 14

Question :

A painter created an art work in respect of Lord Krishna. He did not register his work under the
provisions of the copyright act. another artist also created a bronze model of Krishna on the basis
of our painting with few cosmetic changes. He was attempting to sell the same in the market. the
painter who painted the original paintings and the subsequent artist for copyright infringement.
Will he succeed ?

Answer :

In terms of the present situation where up painter create an artwork but didn't registered the same
under the copyright act and another artist created and dimensional figure of the same painting
and ultimately an suit for infringement was filed. As in the case of Microfibers Inc. vs Girdhar
& Co. & Anr. on 28 May, 2009 the respondents’ fabrics being colorable imitations or
substantially similar copies of the original underlying modified paintings of the appellant
amounted to infringement of the artistic copyright therein. Particularly inspite of the work of the
respondent being claimed to be independent, no details of such original independent work were
forthcoming. Reliance was placed on the judgment in the case of Rajesh Masrani vs. Tahiliani
Designs Pvt. Ltd. [2009 (39) PTC 21 (Del.)] which held that Section 2(d) of the Designs Act,
2000 does not include any artistic work as defined in Section 2(c) of the Copyright Act. It was
also held in the above judgment that it is evident from the definition of design' under the Designs
Act, 2000 that the artistic work as defined in Section 2(c) of the Copyright Act, 1957 is excluded
if any party is able to bring his case within the framework of Section 2(c) of the Copyright Act,
1957 while claiming the copyright. In such a situation, the suit for infringement is maintainable.
He will succeed as unregistered work can also be safeguard under the provisions of the law even
the plaintiff can claim damages for his loss. The another artist who modified the work and
presented the same for sale is liable for actions under the copyright laws.
 Assignment 15

Question :

What is the difference between infringement and passing off action under the trademark laws ?

Answer :

The difference between infringement and passing of action and the trademark laws are as
follows :

Infringement:

Section 29 of the Trade mark Act, 1999 states about various aspects concerning the infringement
as given in S.29(1) that 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.

Other subsections of the provision outlined that in course of the use of the trade mark, it is said to
be infringing the rights of other company due to use of identical or similar trade mark using for
marketing of alike goods and services or use of a deceptively similar or identical trade mark for
any other kind of goods and services. It is further given in the Sub Section (9) of this provision
that the infringement can also be done by the spoken use of the words as well as by the visuals.

Passing Off:

Trade mark Act, 1999 does not have an explicit provision that specifically describes passing off
but there are n no. of common law judgments that lets the courts draw its meaning as to whether
the infringement of trade mark done is in such a way that the mark is not only deceptively similar
to the trade mark of that other company but its also capable of creating or is creating confusion
for the customers, which ultimately results in damage for business of the company.
The fundamental principle behind the tort of passing off is that "A man is not to sell his goods
under the pretense that they are the goods of another man" (Perry v Truefitt (1842)).

In the case of Cadbury India Limited and Ors. V. Neeraj Food Products, the High Court of
Delhi explained the difference between passing off action and an action for trade mark
infringement as under:

An action for trade mark infringement is a statutory remedy and on the other hand, an action for
passing off is a common law remedy.

The use of the trade mark of the plaintiff, by the defendant, is also a prerequisite in the case of an
action for infringement while it is not a necessity of an action for passing off.

In an action for infringement of the plaintiff's trade mark, it is immaterial that the outfit, outer
covering and other written marks on the goods originate from a different source than that of a
registered proprietor's trade mark. The liability of the defendant in such a case may be absolute.
However, in case of passing off of trade mark, the defendant may escape liability if he can show
that the material added by him is sufficient to distinguish his goods from that of the plaintiff's
goods.

In an action for infringement, the Plaintiff on account of it being a registered trade mark in
dispute claims to have an exclusive right to use the mark concerning those goods. However, a
passing off by a person of his goods as those of another, in essence, is an action of deceit.

In a recent case of S. Syed Mohideen v. P. SulochanaBai, the Apex Court of the country stated
that passing off right is a wider remedy than that of infringement. This is because the passing off
doctrine operates on the general principle that no person is entitled to represent his or her
business as the business of another person. The said action of deceit is maintainable for diverse
reasons other than that of registered rights which are allocated rights under the Act.

Submitted by : Aditya Das 2nd Year

B.Com LLB ( Hons. ) [ 2018 – 2023 ]
NEF Law College, Guwahati