Ipr.word.docx

UNIVERSITY INSTITUTE OF LEGAL STUDIES, PU, CHANDIGARH

PROJECT A. PROCEDURE FOR REGISTRATION OF TRADE MARKS AND IT’S REFUSAL(QUESTION NO. 15, SECTION

C)

B. CASE BASED ON INFRINGEMENT AND PASSING OFF OF TRADE MARK (PROBLEM NO. 15, SECTION B)

Submitted to – Ms. Harman Shergill Submitted by- Isha Dua Class – B.A LLB (Hons.), 10TH Semester Section – A Roll no. – 221/11

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ACKNOWLEDGEMENT

I would like to take this opportunity to express my profound gratitude and deep regard to my Ms. Harman Shergill for his exemplary guidance, valuable feedback and constant encouragement throughout the duration of my project. Her valuable suggestions were of immense help throughout my work. The blessing, help and guidance given by him time to time shall carry me a long way in the journey of life on which we are about to embark. Also, the guideline provided by her to stick to the deadline was also encouraging. Her perceptive criticism kept me working to make my work in a much better way. Working under his guidance was an extremely knowledgeable experience for me. I would also like to give my sincere gratitude to all my friends and colleagues for their exemplary guidance without which this project won’t be possible. I would also like to thanks the librarian of our institution who provided me all the necessary books required for my project and make somehow make my work easier. In the end I would like to pay sense of gratitude to the almighty god whose hand on my head helped me to complete this research work on time and my family who encouraged me to complete this project.

ISHA

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TABLE OF CONTENTS

Acknowledgement .................................................................................................................................. 2 Table of Contents .................................................................................................................................... 3 Introduction ............................................................................................................................................ 4 Definition : Trade Mark ....................................................................................................................... 5 Object of Trade Marks Law ................................................................................................................. 5 Registration of Trade marks ................................................................................................................ 6 Procedure for registration .................................................................................................................. 6 Grounds of Opposition........................................................................................................................ 9 Registration of Trade Mark (section 23) ........................................................................................... 11 Duration and Renewal of Trade Mark Registration .......................................................................... 11 Conditions for registration ................................................................................................................ 12 Relative Grounds (Section 11) .......................................................................................................... 17 conclusion ............................................................................................................................................. 22 Problem no. 15...................................................................................................................................... 23 Facts of the case are: ........................................................................................................................ 23 Moot point ........................................................................................................................................ 24 Analysis ............................................................................................................................................. 24

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INTRODUCTION Intellectual Property is the most important part of the modern business. Intellectual property which is a combination of copyright, trademark, design, geographical indication, patent, industrial design, integrated circuit, is valuable assets of any company. IP can create healthy competition in the market; consequently the manufacturer and traders can develop their products more effectively. Trade mark is a branch of Intellectual Property Right. A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. Trademark is a mark or symbol which is capable of distinguishing the goods or services of one from those of others1. Trademarks used for the goods or services in the course of business or trade identify themselves with the goodwill or reputation of the traders and businessman earned by them in respect of goods or services with which trade mark is associated. For example, trade mark of a three pointed star in a circle/ ring with the trade name “Mercedes Benz” is identifiable with high priced luxury car with the world-wide reputation. Trade mark “McDonald”, PIZZA HUT has earned world-wide reputation in relation to food products and restaurants2. Historical Perspective The Indian Trade Marks Act, 1940 was the first statute law on trade marks in India. Prior to that protection of trademarks was governed by Common Law. Cases concerning trade marks were decided in the light of Section 54 of Specific Relief Act, 1877, while registration was secured by obtaining a declaration as to ownership under the Indian Registration Act, 1908. Some of the provisions of the first Trade Marks Act, 1940 came into force on 11.3.1940 and the rest became effective on 1.6.19423. The said enactment was amended by the Trade Marks (Amendment) Act, 1941 and later by two other amendments. By the Trade Marks (Amendment) Act, 1943, the Trade Marks Registry, which was formerly a part of the Patent Office, Calcutta (now Kolkata) was separated from the Patent Office to constitute a separate Trade Marks Registry under a Registrar of Trade Marks at Bombay (now Mumbai). Thereafter, the Act was amended by the Trade Marks (Amendment) Act, 1946, to give effect to the reciprocal arrangement relating to trade marks between the Government of India and the then Indian States and further amendments introduced by Part B States Laws Act, 1951. The Trade Marks Enquiry Committee, which was constituted by the Government of India in November 1953, recommended some changes, but since the report showed some divergence Meenu Paul, “Intellectual Property laws”, 3rd Ed. Allahabad Law Agency, New Delhi, 2009 www.legalseviceindia.com/article/165/ 3 Gazette of India Extraordinary, 1942. p.684 1 2

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of opinion among the members, Mr. Justice Rajagopala Ayyangar 4, was appointed by the Government of India to examine the Trade Marks Act, 1940, with reference to the report of the Trade Marks Enquiry Committee and to recommend as to what changes in the then law were necessary. On the basis of the report of Mr. Justice Ayyangar, the Trade Marks Act, 1940 was replaced by the Trade & Merchandise Marks Act, 1958. The Trade & Merchandise Marks Act, 1958 consolidated the provisions of the Trade Marks Act, 1940, the Indian Merchandise Marks Act, 18895 and the provisions relating to trade marks in the Indian Penal Code. The Trade & Merchandise Marks Act, 1958 was brought into force on 25th November 1959. Certain minor amendments were carried out by the Repealing & Amending Act, 1960 and the Patents Act, 1970. Thus, the history of legal protection to trade marks in India is more than a century old. Definition: Trade Mark A trade mark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise from those of others. As stated above, the definition of "trade mark" under Section 2(1) (zb)6 of Trade Marks Act, 1999 has been enlarged to mean a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from others and may include shape of goods, their packaging and combination of colours and covers both goods and services. Object of Trade Marks Law The object of trade mark law has been explained by the Supreme Court in Dau Dayal v. State of Utttar Pradesh7, in the following words: “The object of trade mark law is to protect the rights of persons who manufacture and sell goods with distinct trade marks against invasion by other persons passing off their goods fraudulently and with counterfeit trademarks as those of the manufacturers. Normally, the remedy for such infringement will be by action in Civil Courts. But in view of the delay which is incidental to civil proceedings and the great injustice which might result if the rights of manufacturers are not promptly protected, the law gives them the right to take the matter before the Criminal Courts, and prosecute the offenders, so as to enable them to effectively and speedily vindicate their rights”. The distinction between a trade mark and a property mark has been stated by the Supreme Court in the case of Sumat Prasad Jain v. Sheojanam Prasad and Ors.8, The Apex Court held: 4

A Judge of the Madras High Court, who later served and retired as a judge of the Supreme Court The Indian Merchandise Marks Act, 1889 which was in force since 1.4.1889 6 Section 2(1(zb)) - “trade mark” 7 AIR 1959 SC 433 5

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“…Thus, the distinction between a trade mark and a property mark is that whereas the former denotes the manufacture or quality of the goods to which it is attached, the latter denotes the ownership in them. In other words, a trade mark concerns the goods themselves, while a property mark concerns the proprietor. A property mark attached to the movable property of a person remains even if part of such property goes out of his hands and ceases to be his.” The trade mark law in India is a ‘first-to-file’ system that requires no evidence of prior use of the mark. A trade mark application can be filed on a ‘proposed to be used or intent-to-use’ basis or based on use of the mark. The term ‘use’ under the Trade Marks Act, 1999 has acquired a broad meaning and does not necessarily mean the physical presence of the goods in India. Presence of the trade mark on the Internet and publication in international magazines and journals having circulation in India are also considered as use in India. One of the first landmark judgments in this regard is the “Whirlpool case” [N. R. Dongre v. Whirlpool Corporation9,] in which the Court held that a rights holder can maintain a passing off action against an infringer on the basis of the trans-border reputation of its trademarks and that the actual presence of the goods or the actual use of the mark in India is not mandatory. It would suffice if the rights holder has attained reputation and goodwill in respect of the mark in India through advertisements or other means.

Registration of Trade marks Trademark may be registered or unregistered. Legal remedies against infringement are provided for both. The registration offers prime facie evidence of ownership of trade mark, whereas, in case of non- registration the user of trade-mark has to establish the prior use and passing off. The whole subject of registration can be explained in two parts viz. , conditions and grounds for registration and procedure of registration. Procedure for registration Section 18 to 21 of chapter 3 of the Trade Marks Act, 1999 provide for the procedure for registration of the Trade marks. Following is the procedure for registration of trademarks under the Trade Marks law:1. Acceptance of application for registration (section 18) 2. Withdrawal of acceptance (section 19) 3. Opposition to registration (section 21) 4. Correction and amendment of application (section 22) 5. Registration 1. Acceptance of application for registration (section 18) – Who can apply- the proprietor of a trademark may also apply to the registrar for registration of the trade mark which he: i) he has used, ii) proposes to use 8 9

AIR 1972 SC 413. 1996 (16) PTC 583

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The application for the registration is made to the registrar in writing and is filed in the office of the Trade Marks Registry. Where to apply- the application for the registration of Trade Mark is filed In case of single applicant in the office of Trade Mark Registry within whose territorial limits the principal place of business of the applicant is situate,  In case of joint applicants in the office of the Trade Marks Registry within whose territorial limits the principal place in India of that applicant is situate whose name is first mentioned in the application. Upon the receipt of the application the registrar may: i) refuse the application ; or ii)accept it absolutely; or iii) accept it subjects to such amendments, modifications, conditions or limitations, if any, as he may thinks fit10. In case of refusal or conditional acceptance of the application, the registrar has to record in writing the grounds for such refusal or conditional acceptance of the application. The registrar is also record in writing about the material used by him in arriving at this decision of his. Section 18(1) provides in its general terms that an applicant for the registration of a trade mark must possess a definite claim to be proprietor of the trade mark sought to be registered by him. 2. Withdrawal of acceptance of application (section 19) - section 19 of the Trade Marks Act, 1999 provides for the withdrawal of the application accepted for registration. According to section 19, the registrar of trademarks may withdraw an application for registration after it had been accepted by him. But this withdrawal of application can be made by the registrar only before the registration of the trade mark. An application accepted by the registrar may be withdrawn by the registrar before registration if he is satisfied that the application: v) has been accepted in error; or vi) in the circumstances the trade mark sought to be registered in the application should not be registered. 3. Advertisement of accepted application- Section 20 of Trade Marks Act, 1999 provides for the advertisement of the application accepted for registration for trade mark. According to section 20, the application is advertised by the registrar so that if any person has opposition to this registration may give a notice of this opposition to the registrar. After the advertisement, the application may be corrected or amended by the registrar. In such a case the registrar re-advertises the accepted or amended, as the case may be. The registrar instead of re-advertises the accepted application after its correction or amendment, as the case may be. The registrar instead of re-advertising the corrected or amended application may notify only the corrections or amendments made in already advertised application.

4. Opposition of RegistrationSection 2111 provides that “any person” may give a Notice of Opposition to the application for registration of a trade mark whether he has or has not any commercial or personal interest in 10

Meenu Paul, “Intellectual Property laws”, 3rd Ed. Allahabad Law Agency, New Delhi, 2009

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the matter. The person need not be a prior registered trade mark owner. He can be a customer, a purchaser or member of the public likely to use the goods. The question of bona fides of the opponent does not arise. Essential requirements for filing Notice of Opposition:  In all cases (whether an ordinary trade mark, collective mark or certification mark), the Notice of Opposition should be on the prescribed form TM-5, accompanied by the prescribed fee of Rs.2, 500.  It should be filed at the appropriate office  The provisions of rule 18 regarding 'address for service' must be complied with, where necessary12.  The Notice of Opposition should contain particulars as prescribed in Rule 48, which runs as follows: A Notice of Opposition shall contain,(a) in respect of an application against which opposition is entered(i) the application number against which opposition is entered; (ii) an indication of the goods or services listed in the trade mark application against which opposition is entered; and (iii) the name of the applicant for the trade mark. (b) in respect of the earlier mark or the earlier right on which the opposition is based,(I) where the opposition is based on an earlier mark, a statement to that effect and an indication of the status of earlier mark; (ii) Where available, the application number or registration number and the filing date, including the priority date of the earlier mark; (iii) where the opposition is based on an earlier mark which is alleged to be a well-known trade mark within the meaning of sub-section (2) of section 11, an indication to that effect that an indication of the country or countries in which the earlier mark is recognized to be well known. (iv) Where the opposition is based on an earlier trade mark having a reputation within the meaning of paragraph (b) of sub-clause (2) of section 11 of the Act, an indication to that effect and an indication of whether the earlier mark is registered or applied for; (v) A representation of the mark of the opponent and where appropriate, a description of the mark or earlier right, and (vi) Where the goods or services in respect of which earlier mark has been registered or applied for an in respect of which the earlier mark is well-known within the meaning of subsection (2) of section 11 or has a reputation within the meaning of that section, the opponent shall when indicating all the goods or services for which the earlier mark is protected, also indicate those goods or services on which the opposition is based. (c) In respect of the opposing party(i) where the opposition is entered by the proprietor of the earlier mark or of the earlier right, his name and address and an indication that he is the proprietor of such mark or right;

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Section 21 – Opposition of Registration www.icsi.com

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(ii) where opposition is entered by a licensee not being a registered user, the name of the licensee and his address and an indication that he has been authorized to enter the opposition. (iii) where the opposition is entered by the successor in title to the registered proprietor of a trade mark who has not yet been registered as new proprietor, an indication to that effect, the name and address of the opposing party and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office or, where this information is not available, was sent to the appropriate office; and (iv) where the opposing party has no place of business in India, the name of the opponents and his address for service in India.

Grounds of Opposition Section 21, which provides for filing Notice of Opposition, does not refer to any ground on which the opposition may be filed. The opponent is thus at liberty to set up any ground which may support his opposition against the registration of the trade mark under any of the provisions of the Trade Marks Act, 1999 and the Rules prescribed there under. However, under section 11(5), a trade mark shall not be refused registration on the grounds specified in subsection (2) and (3), unless objection on any one or more of those grounds is raised in opposition proceedings by the proprietor of the earlier trade mark. In this connection, it is to be noted that section 9 contains 'absolute grounds for refusal of registration' and section 11 contains provision for 'relative grounds for refusal of registration'. The following is a list of possible grounds for opposition to the registration. (1) That the trade mark advertised is not registrable in that it is neither distinctive nor capable of distinguishing or that it does not satisfy the requirements of the Act as to registrability; (2) The essential part of the said trade mark is a word in ordinary use, descriptive of the character or quality of the goods and the applicant is not entitled to acquire an exclusive right therein by registration; (3) That the trade mark is not capable of being represented graphically; (4) That the trade mark is devoid of distinctive character, that is to say, not capable of distinguishing the goods, or services of one person from those of another person; (5) That the trade mark consists exclusively of marks of indication which may serve to designate the kind, quality, intended purpose, values, geographical origin or the time of production of the goods or rendering of the services or other characteristics of the goods or services (mark which is directly descriptive of the character or quality of the goods or services or indicating geographical origin); (6) That the trade mark consists exclusively of marks or indications which have become in the current language or in the bona fide and established practice of the trade (may refer to generic names or Marks common to the trade); (7) That the trade mark is of such a nature as to deceive the public or cause confusion; (8) That the trade mark contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; 9|Page

(9) That the trade mark comprises or contains scandalous or obscene matter; (10) That the trade mark is : (a) identical with or similar to an earlier trade mark, and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, and the earlier trade mark is a well known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark; (11) That the use of the applicant’s mark would be an infringement of the opponent’s registration which could be restrained by the Court and the mark is therefore disentitled to protection in a Court; (12) That the applicants are not entitled to registration under s. 12 of the Act; (13) That the user claimed in the application for registration is not true; In Torrent Pharmaceuticals Ltd. v. The Wellcome Foundation Ltd.13, the registration of trade mark TROVIREX for a medicinal preparation was opposed by the Wellcome Foundation Ltd. under section 21 of the TMM ACT, 1958 on the ground that the trade mark TROVIREX was deceptively similar to the trade mark ZOVIREX for a medicinal preparation that has already been registered by the Wellcome Foundation Ltd. Accepting the contention of the Wellcome Foundation Ltd., the Asstt. Registrar of the trade marks refused the registration of the trade mark TROVIREX. The Torrent Pharamaceuticals Ltd. appealed against this order of the Asstt. Registrar who was dismissed by the Gujarat High Court in this case held, “the probability of confusion and deception is more because the trademarks are used in relation to the pharmaceutical products, i.e., similar goods. In my view in this case the deception and confusion of goods is clearly established.” According to section 21, when an opposition to the registration of a trade- mark is filed, the applicant for registration has to file the counter statement within the prescribed period of time. In the case of Raymond Ltd. v. Chankya Beverages14, the court held that “the registrar can review his order only on the grounds which are mentioned in the review application. Review of the order on the grounds which are mentioned in the application would result in violation of the principle of Natural Justice.” I.Correction and amendment of application (section 22) – an application given for registration for trade mark may be corrected or amended by the registrar at any time. According to section 2215 of Trade Marks Act, 1999 the registrar may amend or correct any error in the application for registration before as well as after the acceptance of the application for registration. Such correction or amendments of the application may be made on such terms as the registrar may think fit.

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2002 (24) PTC 580 (Guj.) 2002 (24) PTC 52 (Bomb.) 15 Section 22 - Correction and amendment of application.14

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II.Registration of Trade Mark (section 23) – The registrar of Trade marks under section 2316, registers the trade mark if after the acceptance of the application for registration, the application for registration:  Has not been opposed; or  If opposed decided in the favour of the applicant who has applied for the registration of the trade- mark. After the registration of the trade- mark, the registrar issues to the applicant a certificate of registration of trade mark that has been registered. The certificate of registration of trade mark is sealed with the seal of the Trade Marks Registry.

Trade marks owned jointly by two or more proprietors (section 24) - A trade mark may be registered jointly may be registered as joint proprietors under section 2417 of Trade Marks Act, 1999. Such registration of trade mark in the favour of two or more persons jointly may be made if the relationship between such persons is such that no one of them is entitled as between himself and the other or the others of them to use it except 

On behalf of both or all of them; or In relation to an article or services with which both or all of them are connected in the course of trade.

Duration and Renewal of Trade Mark Registration Trade mark protection in India is perpetual subject to renewal of the registration after every 10 years. The application for renewal can be filed six months before the expiry of the validity period of the trade mark. Section 2518 of the Act allows registration of a trade mark for a period of 10 years. In keeping with the generally accepted international practice and to reduce the work-load of the Trade Marks Office, Section 25 allows renewal of registration for successive periods of 10 years, from the date of the original registration or the last renewal. With a view to facilitate renewal of registration, Section 25(3) provides for a grace period of six months for payment of renewal fee after expiry of registration, subject to the payment of the prescribed surcharge. Sub-section (4) provides for restoration of the trade marks to the register and renews the registration on payment of renewal fees. Unlike patents, copyright or industrial designs, trade mark rights can last indefinitely if the owner continues to use the mark. However, if a registered trade mark is not renewed, it is liable to be removed from the register. Should the rights holder of a trade mark come across a trade mark that is deceptively similar to their mark and which has been published in the Trade Marks Journal, they can oppose the impugned mark within three months of the publication of the journal. 16

Section 23 – Registration Section 24 – Trade marks owned jointly by two or more proprietors 18 Section 25 – Duration, Renewal and removal of registration of trade marks 17

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The Supreme Court in Commissioner of Income-tax v. Finlay Mills Ltd.19, has held that the expenditure incurred on registration of trade mark is capital expenditure thus allowable deduction under the Income-tax Act. In the case of Ramdev Food Products (P) Ltd. v. Arvind Bhai Rambai Patel20, the Apex Court held that the registration of trade marks is envisaged to remove any confusion in the minds of the consumers. If, thus, goods are sold which are produced from two sources, the same may lead to confusion in the mind of the consumers. In a given situation, it may also amount to fraud on the public. A proprietor of a registered trade mark indisputably has a statutory right thereto. In the event of such use by any person other than the person in whose name the trade mark is registered, he will have a statutory remedy in terms of Section 21 of the Trade & Merchandise Marks Act, 1958. Ordinarily, therefore, two people are not entitled to the same trade mark, unless there exists an express licence in that behalf. Effect of removal of trade mark from the registrar of trade marks for the failure to pay renewal fee- According to section 2621 of the Trade Marks Act, 1999, a registered trade mark is deemed to be a trade mark on the register of trade marks for one year even after its removal from the register of trade marks. However, a removed registered trade mark is not deemed to be on register for one year after its removal if the tribunal is satisfied The removed registered trade mark was not in bonafide trade use during the two years immediately preceding its removal; or  Removal of registered trade mark would not cause deception or confusion that may arise from the use of another trade mark which is the subject of registration.

A.

Conditions for registration

The conditions for registration for trade marks provided under Trade and Merchandise Marks Act, 1958 has been significantly changed by Trade Marks Act, 1999. Therefore, the conditions of registration of trademarks as provided under Trade and Merchandise Marks Act, 1958 and the conditions for registration for trade marks under Trade Marks Act, 1999 are also given. 1. Conditions for registration under the Trade and Merchandise Marks Act, 1958. With the coming into force of Trade Marks Act, 1999, the Trade and Merchandise Marks Act, 1958 stands repealed. The TMM Act, 1958 remained in force till the Trade Marks Act, 1999, and many important cases were decided on the basis of TMM Act, 1958. Therefore, prohibition of registration of certain Trade marks under TMM Act, 1958 is also explained here.

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AIR 1951 SC 464 2006 (8) SCC 726

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Section 26 - Effect of removal of trade mark from the registrar of trade marks for the failure to pay renewal fee

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Earlier sections 1122 and 12 of TMM Act, 1958 provided for prohibition of registration of certain Trade Marks. Under section 11 of TMM Act, 1958 the registration of a Trade mark is prohibited on certain groups. One of the grounds for prohibition of registration under section 11 (a) is that if the trade mark is registered then it is likely to deceive or cause confusion. Whereas to prohibit the registration under section 12 of TMM Act, 1958 one has to prove that it is deceptively similar to a Trade mark which is already registered under the Trade mark Law. Provisions for the prohibition of registration of trade marks under section 11 and section 12 of the said statute is as under1. Prohibition of Registration of Marks on certain Grounds (Section 11) Section 11 of the TMM Act, 1958 provided for prohibition of registration of certain trade marks on certain grounds. According to section 11, a mark is not registered if:  The use of the mark would be likely to deceive or cause confusion; or  The use of the mark would be contrary to any law for the time being in the force,  The mark comprises or contains scandalous or obscene matter, or  The mark comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of citizens of India  The mark would otherwise be disentitled to protection in a court. Likely to deceive or cause confusion- likely to deceive or cause confusion was one of the grounds under section (a) of section 11 of TMM Act, 1958 upon which registrar of trade marks may refuse to register the trade mark. The TMM Act, 1958 did not lay down criteria for determining as to when confusion or deceit is likely to be caused or as to when passing off is said to take place. Therefore, likelihood of deception or confusion was to be judged on the basis of fact and circumstances of each case. In the landmark case of Amritdhara Pharmacy Vs Satya Deo Gupta23,In the said case the test for determining the similarity in two words relevant to an infringement action was stated by Supreme Court that: You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and 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 normal ways as a trade mark for the goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion that there will be a confusion- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a 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 the case of Tosiba Appliances v. Kabushiki Toshiba24, the tosiba Appliances Company of Delhi applied for registration of Trade Mark “TOSIBA” for its electrical goods. This application of the applicant for registration was opposed by Kabushiki Toshiba under section 22

Section 11 of the TMM Act, 1958- Prohibition of registration of certain marks. AIR 1963 SC 449 24 2002 (24) PTC 654 (Reg.) 23

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11(a) of TMM Act, 1958. The opponent contended that opponent’s trade-mark TOSHIBA in respect of electrical goods is a well- known trade mark in India and abroad. Therefore, registration should not be granted. Accepting the contention raised by the opponent the registrar of trade marks refused registration of the applicant’s trade- mark ‘TOSIBA’. 2. Prohibition of registration of ‘Identical’ or Deceptively similar Trade Marks (section 12) Section 12 of TMM Act, 1958 prohibited the registration of Trade mark in respect of any goods or description of goods which is: identical similar, deceptively similar to a trade mark which is already registered in the name of different proprietor in respect of the same goods or description of goods. According to section 12(1) of the TMM Act, 1958, “no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to trade mark which is already registered in the name of different proprietor in respect of the same goods or description of goods.” Deceptively similar- The term ‘deceptively similar’ has been defined under the TMM Act, 1958 as well as Trade Marks Act, 1999. Section 2(1(d)) of TMM Act, 1958 and section 2(1(h)) of Trade Marks Act, 1999 defines the term ‘deceptively similar’ in the same manner as followsA trade mark is deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. In the Medley laboratories (P) Ltd. v. Alkem Laboratories Ltd25, defendant started selling pharmaceutical preprations under the mark SUPAXIN, which was deceptively similar to plaintiff’s registered trade mark SPOXIN. The Bombay High Court granted injunction in the favour of the plaintiff and restrained the defendant from the use of the trade mark SUPAXIN. Because SUPAXIN is deceptively similar to SPOXIN under section 2(1(d)) of TMM Act, 1958. Deceptively similar includes “Visual”, “Phonetic” and otherwise similarity-0 Section 12 of TMM Act, 1958 provides for the prohibition of registration of trade mark in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of different proprietor in respect of the same goods or description of goods. By the phonetic and visual similarity between two marks means similarity between them with reference to the ear as well as eye. In the Amritdhara v. Staya Deo26, the respondent had applied for the registration of the trade name “Lakshmandhara” in respect of a medicinal preparation for the alleviation of various ailments. This was opposed by the appellant whose trade mark ‘Amritdhara’ had already been registered in respect of similar medicinal preparation. The ground for opposition was that the name ‘Lakshmandhara’ was deceptively similar to the already registered trade name ‘Amritdhara’, which is likely to deceive the public or cause confusion to the trade. Accepting the contention of the appellant, the Supreme Court allowed the appeal of the appellant and refused registration to the trade name ‘Lakshamandhara’. 25 26

2002 (25) PTC 592 (Bomb) AIR 1963 SC 449

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B.

Conditions for registration under the Trade Marks Act, 1999 Earlier the TMM Act, 1958 did not classify the goods or services for the purpose of registration of the trade marks. The Trade Marks Act, 1999 for first time provides for the classification of goods or services for the purpose for registration of trade marks. The Trade Marks Act, 1999 classifies the goods and services for the purpose of registration in accordance with the international classification of goods or services.

“Capable of Distinguishing the Goods or Services” A mark which has a direct reference to the character or quality of the goods/services is considered as inherently not capable of distinguishing. If the reference to the character or quality is only indirect or suggestive, the mark may be considered as possessing sufficient degree of inherent capacity to distinguish. As under the old law in determining whether a trade mark is capable of distinguishing, the tribunal should have regard to the extent to which the mark is inherently capable of distinguishing and also the extent to which it is in fact capable of distinguishing by virtue of use of the mark or of other circumstances. The fundamental principle is that “traders should not obtain any monopoly in the use of words as trade marks to the detriment of the members of the public, who, in the future and in connection with their goods might desire to use them”27. Thus, the legal requirements to register a trade mark under the Act are: — The selected mark should be capable of being represented graphically (that is in the paper form). — It should be capable of distinguishing the goods or services of one undertaking from those of others. It should be used or proposed to be used as a mark 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 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. Grounds for refusal for registration for certain Trade Marks under Trade Marks Act, 1999 The Trade Marks Act, 1999 divides the grounds for refusal for the registration of trade marks as follows: 1. Absolute grounds for refusal of registration: Section 928(1) to (3) of the Act lists the absolute grounds for refusal of registration. Section 9(1) prohibits the registration of those trade marks-

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York Trade Mark 1982 FSR 101(House of Lords) Section 9 – absolute grounds for refusal for registration

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(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person; (b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services; or (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practice of the trade. However, a trade mark shall not be refused registration, if the mark has in fact acquired a distinctive character as a result of the use made of it or is a well known trade mark before the date of application for registration. The basis of Section 9(1) is that a trader should not obtain a statutory monopoly through registration in a word which another trader might legitimately wish to use. A competitor should of course be entitled to make bonafide use of the word, to describe his goods or the place of manufacture. If a word, however, through use has become clearly associated in public mind with the goods/service of a particular trader, then it could not be legitimately used as a trade mark by a competitor. For this purpose the onus is on the applicant to show by cogent evidence that the trade mark, by reason of use has acquired distinctiveness in relation to his goods or services. If a trade mark is devoid of distinctive character, the same cannot be registered. In Ambalal Sarbhai Enterprises Limited v. Tata Oil Mills Company Limited29, it was held that the word PROMIX was distinctive. The Court held that even though there are many trade marks in the register with the prefix PRO which is common to the trade, the applicants have particularly coined the word PROMIX and the same was not known earlier. Applicants are the proprietors of a series of trade marks having prefixed PRO as a leading distinguishing feature. Their trade mark is distinctive and so can be registered under the Act. F. Hoffmann La Roche and Co. Ltd. v. Geoffrey Manners and Co. Pvt. Ltd.30, the Supreme Court held that if the word DROPOVIT is not a descriptive word it must be an invented word. It is true that the word DROPOVIT is coined out of words commonly used by and known to ordinary persons knowing English. But the resulting combination produces a new word, a newly coined word which does not remind an ordinary person knowing English of the original words out of which it is coined unless he is so told or unless at least he devotes some thought to it. It follows that the word DROPOVIT being an invented word, is entitled to be registered as a trade mark and is not liable to be removed from the Register on which it already exists. In Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahendra Ltd.31, the Supreme Court observed "...the name has acquired distinctiveness and a secondary meaning in the business or trade circles. People have come associate the name "Mahindra" with a certain standard 29

1988 OTC 73 Bom, AIR 1970 SC 2062, 31 AIR 2002 SC 117, 30

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of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs' group of companies. Such user may also affect the plaintiff prejudicially in its business and trading activities." Section 9(2) states that a mark shall not be registered as a trade mark if — (a) it is of such nature as to deceive the public or cause confusion; (b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; (c) it comprises or contains scandalous or obscene matter; (d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. In Group Pharmaceuticals v. Alkem Labs 32, opponent’s objections were sustained and the registration of the trade mark Metro-D for pharmaceutical preparations when opposed by the proprietor of Metro-N was refused as customers of ordinary prudence and average intelligence are likely to be deceived. Section 9(3) prohibits registration of a mark, if it consists exclusively of shape of goods which results from the nature of the goods themselves or which is necessary to obtain a technical result or which gives substantial value to the goods. It is, however, explained that the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration. Relative Grounds (Section 11) Section 1133 of the Act stipulates that where there exists a likelihood of confusion on the part of the public because of the identity with an earlier trade mark or similarity of goods or services, the trade mark shall not be registered. The registration of a mark which is merely reproduction or imitation of a well-known mark is also prohibited. Sub-section (3) prohibits the registration of a trade mark if or to the extent that, its use in India will be prevented by law of passing off or under the law of copyright unless the proprietor of the earlier trade mark consents to such registration.  The term “earlier trade mark” as per the Explanation appended to this Section means a registered trade mark or an international registration or a convention application which has a date of application earlier than the trade mark in question, or a trade mark, which on the date of application for registration or on the date of priority claimed was entitled to protection as a well known trade mark.

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1996, PTC (16)117, Section 11 – Relative grounds for refusal for registration

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 A “well known trade mark”, the Delhi High Court held in Tata Sons Ltd. v. Mr. Md. Jawed & Anron34, held that a well known trade mark is a mark which is widely known to the relevant section of the general public and enjoys a comparatively high reputation amongst them. On account of advancement of technology, fast access to information, manifold increase in international business, international travel and advertising/publicity on internet, television, magazines and periodicals, which now are widely available throughout the world of goods and services during fairs/exhibitions, more and more persons are coming to know of the trade marks which are well known in other countries, and which on account of the quality of the products being sold under those names and extensive promotional and marketing efforts, have come to enjoy trans-border reputation. It is, therefore, being increasingly felt that such trademarks need to be protected not only in the countries in which they are registered but also in the countries where they are otherwise widely known in the relevant circles so that the owners of well known trade marks are encouraged to expand their business activities under those marks to other jurisdictions as well. Further, the Court observed that the owner of a well known trade mark may (i) seek cancellation or (ii) prevent registration of a trade mark which is same or similar to the well known mark irrespective of whether the impugned mark is in relation to identical or similar goods or services or in relation to other categories of goods or services. He may also prevent others from incorporating the well known trade mark as a part of their corporate name/business name. Even if a well known trade mark is not registered in India, its owner may avail these rights in respect of the trade mark registered/used or sought to be registered/used in India, provided that the well known mark is otherwise known to or recognized by the relevant section of public in India. The Trade Marks Act, 1999 accords a statutory protection to well known marks, irrespective of whether they are Indian marks or foreign marks. The existence of actual confusion or a risk of confusion is, however, necessary for the protection of a well known trade mark, as a result of infringement.

Concurrent Use - Exception to Section 11 To all the relative grounds of refusal, the Trade Marks Act, 1999 allows one exception in Section 12. As per Section 12 35 in the case of honest concurrent use, or of other special circumstances which make it proper so to do, the Registrar may permit the registration of trade marks which are identical or similar in respect of the same or similar goods or services, irrespective of the fact that any such trade mark is already registered or not. This is done so if in the opinion of the Registrar it is proper so to do in favour of more than one proprietor of trade mark. In such an event the Registrar is empowered to impose such conditions and limitations, as he deems fit. The provisions establish the superiority of trade mark rights acquired by use.

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(March, 2011) Section 12 – honest concurrent use of Trade marks

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Limitation as to colour of registered trade mark: A trade mark may be limited: i) wholly ii) in part to any combination of colours. So far as a trade mark is registered without limitation of colour, it shall be deemed to be registered without limitation of colour, it shall be deemed to be registered for all colours. Provisions for limitation as to colour of trade mark to be registered are given under section 1036 of the Trade Marks Act, 1999. Prohibition of registration of names of chemical elements: Section 1337 of Trade Marks Act, 1999 provides that a trade mark shall not be registered under the Trade mark law if the trade mark name: i) ii)

Is commonly used and accepted name of any single chemical element of any single chemical element or any single chemical compound, or Is declared by the World Health Organisation as an international nonproprietary name.

Trade Marks connected with the name and representatives of the persons (section 14) A trade mark may suggest under section 1438 of the act, its connection with any person who is living or dead. In such a case the registrar of trademarks proceeds with the application for registration for the trade mark if the applicant furnishes to the registrar consent in writing: i) of such person, or ii) of the legal representative of the person whose name has been connected with the trade mark has died within twenty years prior to the date of application for registration. 



Registration of trade marks (section 15): The proprietor of a trade mark may be entitled to the exclusive use of not only of the whole but of any part of trade mark. In such a case, according to section 1539 of the Trade Marks Act, 1999 the proprietor of the trade mark may apply for the registration of the a) whole of the trade mark, and b) for the part of the trade mark as a separate trade mark. Registration of the trademarks as series (section 15): A person may be the proprietor of several trade marks in respect of same goods or services or description of goods or services. The proprietor of such trade mark may apply for series of Trade marks for goods in one single registration under section 15 of the Trade marks act, 1999. Such application may be made if the goods with respect to which series of the trade marks sought to be registered resemble each other in the matters of particulars thereof yet they differ in respect ofa) statement of that goods in relation to which they are respectively used or proposed to be used; or b) statement of number, price, quality, or the names of places, or c) other matters of non-distinct which does not substantially affect the identity of trade mark; or d) colour

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Section 10 of Limitation as to colour Section 13 – Prohibition of registration of names of chemical elements 38 Section 14 – Trade marks connected with names and representatives of the persons 39 Section 15 – registration of part of trade marks and of trade marks as series 37

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Registration of trade mark as associated Trade marks (section 16): A trade mark registered with respect to any goods or services registered in the name of a proprietor may be identical with other trade mark with respect to the same goods or services in the name of same registered proprietor. In such a case, according to section 1640, of the Trade Marks Act, 1999, the registered proprietor may require the Registrar of trade marks to register such of his trademarks as associated with Trademarks. Rights conferred by Registration (section 17) The registration of a trade mark confers on the registered proprietor of the trade mark the exclusive right to use the trade mark in relation to the goods or services in respect of which the trade mark is registered. While registration of a trade mark is not compulsory, it offers better legal protection for an action for infringement. As per Section 17 41 of the Act, the registration of a trade mark confers the following rights on the registered proprietor: (i) It confers on the registered proprietor 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. (ii) If the trade mark consists of several matters, there is an exclusive right to the use of the trade mark taken as a whole. If the trade mark contains matter common to trade or is not of a distinctive character, there shall be no exclusive right in such parts. (iii) It entitles the registered proprietor to obtain relief in respect of infringement of the trade mark in the manner provided by the Trade Marks Act, 1999 when a similar mark is used on (a) same goods or services, (b) similar goods or services, (c) in respect of dissimilar goods or services.42 (iv) Registration of a trade mark forbids every other person (except the registered or unregistered permitted user) to use or to obtain the registration of the same trade mark or a confusingly similar mark in relation to the same goods or services or the same description of goods or services in relation to which the trade mark is registered. (v) After registration of the trade mark for goods or services, there shall not be registered the same or confusingly similar trade mark not only for the same goods or services but also in respect of similar goods or services by virtue of Section 11(1) of Trade Marks Act, 1999. (vi) Moreover, after registration of the trade mark for goods or services, there shall not be registered the same or confusingly similar trade mark even in respect of dissimilar goods or services by virtue of Section 11(2) in case of well-known trademarks. (vii) Registered trade mark shall not be used by anyone else in business papers and in advertising. Use in comparative advertising should not take undue advantage of the trade mark. Such advertising should not be contrary to honest practices in industrial or commercial

40 41 42

Section 17 - effect of registration of parts of a mark www.icsi.com

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matters. The advertising should not be detrimental to the distinctive character or reputation of the trade mark. (viii) There is a right to restrict the import of goods or services marked with a trade mark similar to one’s trade mark. (ix) There is a right to restrain use of the trade mark as trade name or part of trade name or name of business concern dealing in the same goods or services. The registered trade mark continues to enjoy all the rights which vest in an unregistered trade mark. By registration the proprietor of an unregistered trade mark is converted into proprietor of the registered trade mark43. An application for registration may be based on a trade mark in use prior to such application and such a trade mark is already vested with rights at Common law from the time the use of the mark was commenced44.

43 44

Section 17 of the said Act www.icsi.com

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CONCLUSION The proprietor of a registered trade mark has to take some safeguards to protect his rights. He should use and renew the trade mark regularly and in time. If the trade mark is misused by others he should file a suit for infringement and passing off and also take criminal action. However, trade mark registration under the Act only has effect in India. To obtain trade mark rights and protection in other countries it is necessary to use and/or register the trade mark in those countries. Trade mark protection is territorial in nature. A separate registration will have to be made in each of the countries where protection is desired. To obtain protection outside India, it is necessary to file applications in the concerned countries individually. In addition you should be careful to apply for registration in a country before you commence use of your trade mark in that country. In some countries such as Continental Europe, China, Japan and Indonesia, the first person to apply for registration will be given the rights to a trade mark, rather than the person who first uses the trade mark. Therefore, another party could legitimately "steal" your trade mark by applying for registration even if you were the first person to use the trade mark.

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PROBLEM NO. 15

Ami Cutler, a brokerage company in India applies and registers a domain name "avryami.com" and posts all information relating to its marketing style and strategies the products that it markets as well as the services that it provides. Anyone can place order for the commodities on line, Ami cutler also offers to transfer some of the domain names that are registered in their name for a premium. Ami Cutler also provides information relating to the products manufactured by other companies including the information of Avery Company. Avery company, a leading multinational company was offered the domain name by Ami Cutler for Rs. 10,00,000/-. Avery Company registers another domain name "averymi.com" and posts information about its company products and services. The term "Avery" was registered as trademark much before Ami Cutler registered its domain name and Avery had earned international reputation. Ami Cutler sues Avery Company for passing off/Infringement. Avery sets up the counterclaim that the domain name of ami cutler is not valid and was registered in bad faith. Decide. Solution:Facts of the case are: 

Ami Cutler, a brokerage company applies and registers a domain name

"avryami.com" and posts all information relating to its marketing style and strategies the products that it markets as well as the services that it provides in India. 

Anyone can place order for the commodities online, Ami cutler also offers to transfer

some of the domain names that are registered in their name for a premium. Ami Cutler also provides information relating to the products manufactured by other companies including the information of Avery Company. 

Avery company, a leading multinational company was offered the domain name by

Ami Cutler for Rs. 10,00,000/-. Avery Company registers another domain name "averymi.com" and posts information about its company products and services. 

The term "Avery" was registered as trademark much before Ami Cutler registered its

domain name and Avery had earned international reputation.

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

Ami Cutler sues Avery Company for passing off/Infringement. Avery sets up the

counter-claim that the domain name of Ami cutler is not valid and was registered in bad faith. Moot point: Did “Avery” company infringe the domain name of Ami Cutler, a brokerage company. Analysis: Infringement of registered Trade mark: section 2945 of the said Act, dealt with the infringement of the registered Trade mark. According to section 29 of Trade Marks Act, 1999, the following circumstances in which person deemed to infringe a registered trade mark:

A person is deemed to infringed a registered trade mark if not being a “registered proprietor” or “ permitted user” of registered trade mark uses a trade mark: i) Which is identical or similar to the registered trade mark used in the course of trade mark used in the course of trade for the similar goods or services, and ii) Thereby causes confusion on the part of the public 

A person is deemed to infringe a registered trade mark if not being a “registered proprietor” or “permitted user” of registered trade mark uses a trade mark: 1) Which is identical or similar to the registered trade mark used in the course of trade for the goods or services which are not similar; 2) The registered trade mark has reputation in India; and 3) The use of the mark by the person without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

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

A registered trade is infringed by a person who being not duly authorised by the registered proprietor of the registered trade mark uses the registered trade mark to a material intended to be used; i. For labelling or packaging the goods; or ii. For a business paper; or iii. For advertising goods or services: Provided such person when he applied the mark knew or had reason to believe that the application of that mark was not duly authorised by the proprietor or a licensee.



A registered trade mark is infringed by a person if he uses such registered Trade mark: i. As his trade mark or part of his trade name; or ii. As name of his business concern or part of the name, of his business concern dealing or part of the name, of his business concern dealing in goods or services in respect of which trade mark is registered.

Secion 29- infringement of registered trade mark

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

A registered trade mark is infringed by any advertising of that trade mark if such advertising :i.Takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or ii.Is detrimental to distinctive character; or iii.Is against the reputation of the trade mark.  Where the distinctive elements of a registered trade mark consists of or includes words, the trade mark may be infringed, a) The spoken use of those words, as well as b) The visual representation of those words. “Deceptively similar” trademarks – section 2746 of Trade Marks Act, 1999 provides that a person shall be entitled to initiate proceeding to prevent or recover damages for, the infringement of registered Trade Mark. Section 2(1(d))47 of Trade Marks Act, 1999 provides that a person shall be entitled to initiate proceedings to prevent or recover damages for, the infringement of registered trade mark. In Horlicks limited & Ors v. Kartick Sadhukan48, the plaintiff i.e the Horlicks Ltd, is the proprietor of the trade mark ‘HORLICKS’ which was registered in India for the products like energy boosting food products, including foods for infants, malted milk, biscuits, toffees, etc. The defendant trading as Kartick Confectionery, started manufacturing toffees under the trade mark “HORLICKS” as being deceptively similar to the registered trade mark “HORLICKS” of the plaintiff, it infringed the trade mark “HORLICKS” of the plaintiff. In Indechemie Health Specialities Pvt. Ltd. v. Naxpar Labs. Pvt. ltd. ors49., the respondent’s trade mark “cherish” was deceptively similar to the appellant’s registered trade mark “cheri”. The Bombay High Court in this case, granted injunction in favour of appellants and respondents were restrained from the use of the deceptively similar trade mark “cheri”. As the use of a trade mark which is deceptively similar to registered trade mark is an infringement of registered trade mark under section 29 of TMM Act, 1958. Burden of proof: Dealing with the question of burden of proof in an action for infringement of the trade mark, in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in goods in respect of which his – “In an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, identical or is deceptively similar.” In the above case, the Ami cutler a brokerage company registered Domain name "avryami.com" was deceptively similar to the domain name registered by the Avery Company i.e "averymi.com" as deceptively similarity includes ‘phonetic’ and ‘visual’ 46

Section 27 – Infringement of registered trade mark Section 2(1(d)) – Deceptively similar 48 2002 (25) PTC 126 (Del.) 49 2002 (25) PTC 341 47

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similarity which both are fulfilled. Moreover, A registered trade mark is infringed by a person if he uses such registered Trade mark: As his trade mark or part of his trade name; or As name of his business concern or part of the name, of his business concern dealing or part of the name, of his business concern dealing in goods or services in respect of which trade mark is registered. Therefore, the Avery Company is not liable for any counter claim but has infringed the registered Trade Mark.

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