By, Ms Vintee Mishra Brain League IP Services
Copyright Brain League IP Services Pvt. Ltd. 2009
RISKS INFRINGEMENT PASSING OFF SUIT FOR THREAT OF LEGAL PROCEEDINGS
AND TRADE LIBEL
WHAT CONSTITUTES INFRINGEMENT IDENTICAL OR DECEPTIVELY SIMILAR
MARKS COVERED GOODS AND SERVICES USE OF MARK IN COURSE OF TRADE USE OF MARK IN MANNER OF TRADEMARK PERMITTED USER MAGIC V MAGIX FOR FANS
INFRINGEMENT CONTI… IDENTICAL MARK - SIMILAR GOODS AND SERVICES MATRIX V MATRIX FOR MOUSE AND KEYBOARD SIMILAR MARK – IDENTICAL OR SIMILAR GOODS AND SERVICES MAGIC V MAZIX FOR FANS IDENTICAL MARK – IDENTICAL GOODS AND SERVICES MATRIX V MATRIX FOR COMPUTERS LIKELIHOOD OF CONFUSION/ASSOCIATION WITH TRADEMARK
NEW HOPE FOOD INDUSTRIES V. PIONEER BAKERIES NEW HOPE - CONFECTIONARY ITEMS AND BAKERY PRODUCTS TRADE NAMES AND MARKS “MILKA” AND “MILKA WONDER CAKE” PIONEER-SAME BUSINESS TRADEMARK “MILKA” INFRINGEMENT? YES
TEST OF INFRINGEMENT DECEPTIVE SIMILARITY 2 IDENTICAL TRADEMARKS –INFRINGEMENT NOT IDENTICAL – RESEMBLE-CAUSE CONFUSION ONUS – PLAINTIFF PURCHASERS LIKELY TO DECEIVE COMPARE ESSENTIAL FEATURES MARK AS A WHOLE RESEMBLACE – PHONETIC OR VISUAL XEROX V ZERRROGZZ
MEDILINE HEALTH CARE PVT. LTD. V. SHRI PAWAN KUMAR VARSHNEY, TRADING AS SALAKA PHARMA CARE PVT. LTD APPLICANT’S TRADEMARK ‘ANTIFLAM’ RESPONDENT TRADEMARK ‘NT FLEM’ PHARMA PRODUCTS INFRINGEMENT? YES THE COURT HELD SINCE THE GOODS ARE SAME, RIVAL MARKS PHONETICALLY SIMILAR AND RESPONDENT SUBSEQUENT USER, THEREFORE HELD INFRINGEMENT
INFRINGEMENT CONTI… DILUTION
MARK IDENTICAL OR SIMILAR –TRADEMARK ® GOODS AND SERVICES NOT SIMILAR TRADEMARK ® - REPUTATION IN INDIA USE WITHOUT DUE CAUSE USE- UNFAIR ADVANTAGE, DETRIMENTAL TO DISTINCTIVE CHARACTER AND REPUTE – TRADEMARK ® BARVEE FOR DOLLS – EARLIER MARK V BARWE FOR BAR AND RESTAURANTS
MEANING OF REPUTATION SUFFICIENT KNOWLEDGE OF EARLIER MARK EXIST TO
MAKE ASSOCIATION KNOWN TO SIGNIFICANT PART OF PUBLIC SUFFICIENT TO BE KNOWN IN ONE AREA CONSIDER MARKET SHARE, GEOGRAPHICAL EXTENT, DURATION OF USE AND SIZE OF INVESTMENT
ROLEX SA V. ALEX JEWELLERY “ROLEX” REGISTERED FOR WATCHES IN AROUND THE WORLD INCLUDING INDIA. DEFENDANT ALSO STARTS SELLING JEWELLERY UNDER THE NAME OF “ROLEX” IN INDIA. DILUTION? YES HELD USE WITHOUT DUE CAUSE AND DEFENDANT TAKING UNFAIR ADVANTAGE OF PLAINTIFF’S BUSINESS WHICH WAS DETRIMENTAL TO ITS DISTINCTIVE CHARACTER AND REPUTE
INFRINGEMENT CONTI… USE TRADEMARK ® AS-
TRADE NAME OR PART OF IT NAME OF BUSINESS OR PART OF IT SAME CLASS OF GOODS AND SERVICES AFFIX TO GOODS OR PACKAGE EX-IM GOODS UNDER THE MARK BUSINESS PAPER OR ADVERTISING OFFER FOR SALE OR ACTUAL SALE, MARKETS, STOCKS GOODS
AND SERVICES APPLIED TO MATERIAL FOR PACKAGING OR LABELLING COMPARATIVE ADVERTISEMENT - DISPARAGEMENT
INFRINGEMENT BY ADVERTISING COMPARATIVE ADVERTISING
DECLARE OWN GOODS AS BEST DECLARE OWN GOODS BETTER THAN OTHERS, EVEN IF UNTRUE COMPARE ADVANTAGES OF OWN GOODS WITH OTHERS NOT SLANDER OR DEFAME DISPARAGEMENT
FALSE OR MISLEADING STATEMENT STATEMENT CAPABLE OF DECEPTION DECEPTION INFLUENCE PURCHASING DECISION
LOCALITY OF INFRINGEMENT TERRITORIAL RIGHT TRADE MAY NOT OVERLAP USE OF OFFENDING MARK - MUST IN INDIA IMPORT FOR RE-EXPORT SUFFICIENT USE USE OF OFFENDING MARK – IN COURSE OF
TRADE
ACTS NOT CONSTITUTING INFRINGEMENT HONEST PRACTICES EG – LIVTEC V LIVDEE NO UNFAIR ADVANTAGE DETRIMENTAL TO
DISTINCTIVE CHARACTER OR REPUTE. EG – COMPARATIVE ADVERTISEMENT DESCRIPTIVENESS. EG – COOLAIR FOR AIR
CONDITIONERS
ACTS NOT CONSTITUTING INFRINGEMENT USAGE SUBJECT TO CONDITIONS AND
LIMITATIONS RESALE OF GOODS OR SUPPLY OF SERVICES
ON WHICH MARK APPLIED AND NOT REMOVED EG – PARALLEL IMPORTATION
ACTS NOT CONSTITUTING INFRINGEMENT
USE ON PARTS OR ACCESSORIES EG – CAR AND
CAR ACCESSORIES
LAWFUL ACQUISITION OF GOODS WITH
TRADEMARK
MCDONALDS V MCCURRY MCDONALDS -RIGHT CLAIMED OVER THE WORD “MC” SIMILAR SERVICES- BOTH IN RESTAURANT BUSINESS MCCURRY - “MC” / “MAC” IS A COMMON NAME OF A PERSON, USED COMMONLY IN BUSINESS ACROSS VARIOUS DOMAINS INFRINGEMENT? NO COURT HELD HONEST PRACTICE. NOT TAKING UNFAIR ADVANTAGE.
DEFENCES NO TITLE TO SUE INVALID REGISTRATION OF TRADEMARK ACT DOES NOT CONSTITUTE
INFRINGEMENT CONCURRENT REGISTRATION PRIOR USER INNOCENT INFRINGEMENT LONG DELAY, LACHES AND ACQUIESCENCE
PASSING OFF GENERAL PRINCIPLES MISREPRESENTATION COURSE OF TRADE PROSPECTIVE AND ULTIMATE CONSUMERS INJURIOUS TO BUSINESS OR GOODWILL ACTUAL DAMAGE TO BUSINESS OR
GOODWILL
ELEMENTS OF PASSING OFF GOODWILL OR REPUTATION DEPENDS ON NATURE OF GOODS, QUANTUM OF SALES, EXTENT OF ADVERTISEMENT, AREA OF USAGE DECEPTION
DEPENDS ON NATURE AND EXTENT OF REPUTATION, FIELDS OF ACTIVITY, SIMILARITY OF MARK, CONSUMERS LIKELY TO RECEIVE DAMAGE TO GOODWILL OR REPUTATION
ACTUAL OR PROBABLE DIVERSION OF SALES, INJURIOUS ASSOCIATION, MISAPPROPRIATION OF BUSINESS REPUTATION
HONDA MOTORS V. CHARANJIT SINGH PLAINTIFF - “HONDA” FOR MOTORS DEFENDANT – “HONDA” FOR PRESSURE COOKERS. PASSING OFF? YES COURT HELD SUCH USE OF TRADEMARK “HONDA” IS CREATING DECEPTION OR CONFUSION IN THE MINDS OF THE PUBLIC AT LARGE AND SUCH CONFUSION IS CAUSING DAMAGE OR INJURY TO THE BUSINESS, REPUTATION, GOODWILL AND FAIR NAME OF THE PLAINTIFF.
MEANS ADOPTED FOR PASSING OFF DIRECT FALSE REPRESENTATION ADOPTION OF OR COLORABLE IMITATION OF
SAME TRADEMARK ADOPTION OF COMPLETE OR ESSENTIAL PART OF RIVAL TRADER’S NAME – DUNKIN DONUT V DUNKEN TYRE
DEFENCES NON DISTINCTIVENESS DELAY, LACHES, ACQUIESCENCE,
MISREPRESENTATION OF FACTS OR FRAUDULENT TRADE GOODS AND BUSINESSES TOTALLY DIFFERENT BONAFIDE USE ISOLATED INSTANCE
THREAT OF LEGAL POCEEDINGS AND TRADE LIBEL THREAT LIBEL SUIT MAY BE FILED ONLY FOR THREAT FOR INFRINGEMENT OF REGISTERED MARK
REMEDIES CONTI… CIVIL – INJUNCTION, DAMAGE, PROFIT CRIMINAL – IMPRISONMENT,FINE, BOTH ADMINISTRATIVE – ANTON PILLAR ORDER,
MAREVA INJUNCTION
OFFENCES FALSIFYING TRADEMARK FALSELY APPLYING A TRADEMARK MAKING OR POSSESSING INSTRUMENTS FOR FALSIFYING TRADEMARK APPLYING FALSE TRADE DESCRIPTION APPLYING FALSE INDICATION OF COUNTRY OF ORIGIN TAMPERING WITH AN INDICATION OF ORIGIN CAUSING ANY OF ABOVE
OFFENCES CONTINUED SELLING GOODS OR POSSESSING OR EXPOSING
FOR SALE OF GOODS FALSELY MARKED REMOVING PIECEGOODS FALSELY REPRESENTING TRADEMARK AS REGISTERED IMPROPERLY DESCRIBING PLACE OF BUSINESS AS CONNECTED WITH TRADEMARK OFFICE FALSIFICATION OF ENTERIES IN REGISTER
THANK YOU
VINTEE MISHRA
Copyright Brain League IP Services Pvt. Ltd. 2009