Trademark

Trademark Law in India

 

The law of trademark occupies a pivotal role in the area of intellectual property laws. From time immemorial trademark disputes have arisen and will continue to arise in future. Trademark law in India is codified in the trademarks act, 1999. It replaces the earlier trademark Act of 1958. Trademark law in India consists of rich catena of cases decided by the courts. The Trademark Act of 1999 has added many vital changes in the trademark law. The  new law makes it TRIPS compliant and brings it in line with international practices like the concept of ‘well known trademarks’. The new Act now provides stronger protection to trademarks. This new Act broadened the definition of trademark b y including shape of goods and combination of colours. It also provides for registration of trademark law for services and also registration of collective marks owned by associations. It has also enlarged the grounds for refusal of registration and increased the period of registration. The trademark of 1999 has introduced distinct categories of trademarks i.e. i) trademark and ii) well known trademark. They have different rights before the registrar  in registration and opposition proceedings. Service marks have also been introduced in the new Act. Section 2(3) of the Act states that goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business and so with the description of goods and description of services. The effect of this new provision is that a trademark may be used for goods as well as for services.

What is a trademark?

Trade mark  means a mark[1] capable of being represented graphically and which is capable of distinguishing the goods[2] or services[3] of one person from those of others and may include shape of goods, their packaging and combination of colours; and

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

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

The Trade Marks Act, 1999 also defines what is known as “well-known trade mark”. It provides that “well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.[4]

The difference between a Trade Mark and a Property Mark has been elaborated by the Supreme Court in the following judgment.

Sumat Prasad Jain Vs. Sheojanam Prasad (Dead) & Ors[5]

Respondent evolved a formula of manufacturing a scent ‘Basant Bahar’, which became very popular. He applied for registration of the Trade Mark, but the application was not granted due to certain technical defects. The appellant had also put up for sale a scent prepared by him and sold it as ‘Pushp Raj’ Scent. This scent did not become popular and so he started putting up his said scent under the name of Basant Bahar in receptacles, similar to those of the Respondent, except the name of the manufacturer.

The Trial Court convicted the Appellant under s. 482[6] and s. 486[7] I.P.C. On appeal, the Addl. Session Judge set aside the said order of conviction and sentence. The complainant filed an appeal in the High Court. Pending the appeal, the complainant died. The High Court however, allowed the appeal on the ground that though in the complaint, the Complainant has used expressions, such as, Trade Mark, counterfeiting his Trade Mark etc, in substance the complainant averred counterfeiting of “property mark” and accordingly set aside the order of acquittal.

 The Supreme Court held that the concept of Trade Mark is distinct from that of a property mark. A Trade Mark means a mark used in relation to goods for the purpose of indicating a connection in the course of trade between the goods and some person having the right as proprietor to use that mark. The function of a Trade Mark is to give an indication to the purchaser as to the manufacture or quality of the goods, to give an indication to his eye of the trade source from which the goods come or the trade hands through which they passed on their way to the market[8]. On the other hand, a property mark, defined by S.479[9] of the Penal Code, means a mark used for denoting that a moveable property belong to a particular person. 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 owner- ship 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 Supreme Court held that to succeed on the charge under s. 482 and s. 486 the complainant had to establish that the appellant marked the scent manufactured and sold by him or the packets and receptacles containing such scent or us do packets or receptacles bearing that mark and that he did so in a manner calculated to cause it to be believed that the goods so marketed or scent contained in the, packets so marked belonged to the complainant. For the purpose of s.486, he had further to establish that the appellant had sold or exposed for sale or had in his possession for sale, goods having a mark calculated to cause it to be believed that the scent, was the scent manufactured by and belonging to the complainant. Coming to the facts of the case, it held that the name ‘Basant Bahar’ with the same picture, the same inscriptions, and the same receptacles, was the ‘property mark denoting that the scent in question was the one manufactured and belonging to the complainant. From the finding arrived at by the Trial Court, it must follow that the appellant marked his scent aid the packets in which it was packed with the same name, the same picture and the same inscriptions with the intention of causing it to be believed that the scent so marked, or the scent contained in the said packets, was the one manufactured by and sold in the market by the complainant. The appellant thus committed the offence of both using a false property mark and of selling goods marked with a counterfeit property mark. The High Court was right in setting aside the order of acquittal passed by the Additional Sessions Judge and in restoring the order of conviction and sentence passed by the Trail Court.

Laxmikant V Patel vs. Chetanbhai Shah[10]

The plaintiff started the business of colour lab and studio in the year 1982 in Ahmedabad, in the name and style of Muktajivan Colour Lab and Studio. The high quality of services rendered by the plaintiff to his customers earned a reputation and developed a goodwill associated with the trade name Muktajivan Colour Lab. The plaintiff had expanded his business by incurring substantial expenditure on advertisement and by incorporating the word Muktajivan in all stationery materials, letter-heads, invoices, albums, hoardings, sign-boards etc. The defendant no.1 who was carrying on his similar business in the name and style of Gokul Studio intending to commence business through his wife, the defendant no.2 by adopting the name and style of Muktajivan Colour Lab and Studio.

The  passing off action was initiated by the plaintiff. The Supreme Court observed that the definition of trade marks under the Trade Marks act, 1999 was very wide and meant a mark capable of being represented graphically and which was capable of distinguishing the goods or services of one person from those of others. Mark include amongst other things name or word also. Name  include any abbreviation of a name. The Supreme Court observed that in an action for passing off it was usual, rather essential, to seek an injunction temporary or ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly, passing off cases are often cases of deliberate and intentional misrepresentation, but it is well-settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant had imitated or adopted the plaintiffs distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name.

On the issue that the business name sometimes adopted by the plaintiff used QSS as prefixed to Muktajivan Colour Lab or as part of the full name and that made the difference, the Court agreed with the plaintiff that QSS was an abbreviation, the elongated or full form whereof was Quick Service Station and that was merely an adjective prefixed to the name. It was the word Muktajivan the employment of which makes distinctive the business name of the plaintiff and it was the continued use of Muktajivan in the business name of the plaintiff which had created a property therein linked with the plaintiff. The Court thus held that a clear case for the grant of ad interim injunction prayed for by the plaintiff.

Position of Domain Names

Satyam Infoway Ltd. vs Sifynet Solutions Pvt. Ltd.[11]

The principal question raised in the case was whether internet domain names were subject to the legal norms applicable to other intellectual properties such as trade marks? The appellant which was incorporated in 1995 registered several domain names like www.sifynet, www.sifymall.com, www.sifyrealestate.com etc. in June 1999 with the internationally recognised Registrars, viz the Internet Corporation for Assigned Names and Numbers (ICANN) and the World Intellectual Property Organisation (WIPO). The word ‘Sify was a coined word which the appellant claimed to have invented by using elements of its corporate name, Satyam Infoway. The appellant claimed a wide reputation and goodwill in the name ‘Sify”. The respondent started carrying on business of internet marketing under the domain names, www.siffynet.net and www.siffynet.com. Coming to know of the use of the word ‘Siffy’ as part of the respondent’s corporate and domain name, the appellant served notice on the respondent to cease and desist from either carrying on business in the name of Siffynet Solutions (P) Ltd. or Siffynet Corporation and to transfer the domain names to the appellant. The respondent refused.

The Supreme Court observed that the original role of a domain name was no doubt to provide an address for computers on the internet . But the internet had developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each domain name owner provide information/services which are associated with such domain name. Thus a domain name may pertain to provision of services within the meaning of Section 2(z). A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical. “As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high. Whereas a large number of trademarks containing the same name can comfortably co-exist because they are associated with different products, belong to business in different jurisdictions etc, the distinctive nature of the domain name providing global exclusivity is much sought after. The fact that many consumers searching for a particular site are likely, in the first place, to try and guess its domain name has further enhanced this value”.

After discussing the law in great detail, the Court concluded that the doubtful explanation given by the respondent for the choice of the word “Siffy” coupled with the reputation of the appellant can rationally lead to the conclusion that the respondent was seeking to cash in on the appellant’s reputation as a provider of service on the internet. Prima facie the dishonest adoption of the appellant’s tradename by the respondent, the investments made by the appellant in connection with the trade name, and the public association of the tradename Sify with the appellant, the appellant was held entitled to the relief.

Registration of trademarks

Absolute refusal

Absolute grounds for refusal of registration of trademark are provided in Section 9 of the Trademark Act, 1999. The section provides that those trade marks which are devoid of any distinctive character, i.e., not capable of distinguishing the goods or services of one person from those of another person; or  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 service; or which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade will be refused registration. But if a trademark has acquired a distinctive character as a result of the use made of it or is a well-known trades mark shall not be refused registration.

Moreover if a  mark  is of such a nature so as to deceive the public or cause confusion; or  contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or comprises or contains scandalous or obscene matter; or if its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

shall not be registered as a trade mark. A mark shall not be registered as a trade mark if it consists exclusively of  the shape of goods which results from the nature of the goods themselves; or the shape of goods which is necessary to obtain a technical result; or  the shape which gives substantial value to the goods.

Imperial Tobacco Co. Of India Ltd. vs Registrar Of Trade Marks And Anr[12]

The Appellant made its first application for registration of a trade mark before the Registrar applying for registration as a trade mark of a label bearing the device of snow-clad hills in outline and the word “Simla” written prominently in various panels of the label. The specification of the goods in the application read as “Manufactured tobacco”. This application was for registration of the trade mark in Part A of the Register in Clause 34. The application stated: “The said trade mark is proposed to be used “The point was that on 29-2-60 there was no use of the said trade mark and it was only proposed to be used at that point of time. By a letter dated 9-12-60 the Registrar of Trade Marks informed the Appellant as follows:

“Word Simla’ which forms the essential and distinguishing feature of the mark is a famous geographical name and is not registrable except on very strong evidence of distinctiveness. No such evidence is possible as the mark is proposed to be used. You should therefore show cause why the application should not be refused “.

The Supreme Court held that the trade mark “Simla” with the label was composite in character. Its essential feature was the word Simla. ”Simla” was neither an invented word nor was it a word having a dictionary meaning. It is a well known hill-station of India. Its geographical signification is, therefore, plain and unequivocal. The snow-clad hills in outline on the label makes the geographical significance inescapable. The appellant’s whole case rested on 3 years prior use of this trade mark before the date of the application for registration with the assertion that the geographical name has acquired distinctiveness and so qualified for registration.

After discussing the English in detail and the provisions of the 1958 Act, the Court concluded that ‘Simla’ was not an invented word and also had no reference to character or place of origin of the goods, it was not inherently distinctive or adopted to distinguish. Thus it was held not registrable.

Relative grounds for refusal

Section 11 of the Trademark Act, 1999 provides for relative grounds for refusal of registration of trademark provides that a  trade mark shall not be registered if, because of  its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the  likelihood of association with the earlier trade mark.[13]

A trade mark which is identical with or similar to an earlier trade mark; and  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, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due course would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.[14]

Section 11(3) states that a trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented –

• by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or
• by virtue of law of copyright.

On the question of  whether a trade mark is a well-known trade mark, the Registrar is mandated to take into account any fact which he consider relevant for determining a trade mark as a well-known trade mark including –

• the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
• the duration, extent and geographical area of any use of that trade mark;
• the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
• the duration and geographical area of any registration of or any publication for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
• the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.[15]

The Registrar is further mandated, while determining as to whether a trade mark is known or recognised in a relevant section of the public, to take into account –

(i) the number of actual or potential consumers of the goods or services;

(ii) the number of persons involved in the channels of distribution of the goods or services;

(iii) the business circles dealing with the goods or services, to which that trade mark applies.[16]

Subsection 8 provides that where a trade mark had been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.

The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely: –

(i) that the trade mark has been used in India;

(ii) that the trade mark has been registered;

(iii) that the application for registration of the trade mark has been filed in India;

(iv) that the trade mark –

(a) is well known in; or

(b) has been registered in; or

(c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or

(v) that the trade mark is well-known to the public at large in India.[17]

 

But the registrar may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose, in the case of honest concurrent use or of other special circumstances which in the opinion of the  Registrar, make it proper so to do[18].

1. R. Chinna Krishna Chettiar Vs. Sri Ambal & Co., Madras & Anr.[19]

The appellant was the sole proprietor of a concern known as Radha & Co. The respondents Ambal & Co. were a partnership concern. The respondents as also the appellant were manufacturers and dealers in snuff, carrying on business at Madras and having business activities inside and outside the State of Madras. In 1958 the appellant sought registration of a trade mark consisting of a label with a picture of the goddess Sri Andal and the legand ‘Sri Andal’ in the central panel, and the words ‘Sri Andal Madras Snuff’ in various languages in the upper and lower panels. The appellant’s application was objected to by the respondents on the ground that it was deceptively similar to their registered trademarks. One of these consisted of a label containing a device of goddess Sri Ambal in the centre with the legand ‘Sri Ambal parimala snuff’ at the top of the label and the name ‘Sri Ambal & Co. Madras’ at the bottom. The other trade mark consisted of the expression ‘Sri Ambal’. The Registrar of Trade Marks held that the sound of ‘Ambal’ did not so nearly resemble the sound of ‘Andal’ in spite of certain letters being common to both the marks as to be likely to cause confusion or deception among a substantial number of persons. High Court took the opposite view.

The Supreme Court observed that the question in issue was whether if the appellant’s mark was used in a normal and fair manner in connection with the snuff and if similarly fair and normal user was assumed of the existing registered marks, will there be such a likelihood of deception that the mark ought not to be allowed to be registered ? The court had to decide the question on a comparison of the competing marks as a whole and their distinctive and essential features. So considered there could be no doubt that the word ‘Ambal’ was the distinguishing feature of the trade mark of the respondent and the word ‘Andal’ was the distinguishing feature of the appellant’s trade mark. There is a striking similarity and affinity of sound between the words ‘Andal’ and ‘Ambal’. The Court observed that it must be held that there was real danger of confusion between the two marks. There was no visual resemblance between the two marks but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. The argument that on account of the different ideas ‘conveyed by the words ‘Ambal’ and ‘Andal’ the accidental phonetic resemblance’ could not lead to confusion was not acceptable because it lost sight of the realities of the case. The Hindus in the South of India may be well aware that the words Ambal and Andal represent the names of two distinct goddesses. But the respondent’s customers were not confined to the Hindus of the South of India alone and they were not likely to remember the fine distinctions between a Vaishnavite goddess and a Shivaite deity. The Supreme Court thus affirmed the judgment of the Supreme Court.

Mahendra & Mahendra Paper Mills Ltd. vs Mahindra & Mahindra Ltd.[20]

Mahindra & Mahindra Ltd., the respondent, instituted a Suit No. 4007 of 1998 in the Bombay High Court seeking a decree of permanent injunction against Mahendra & Mahendra Paper Mills Ltd., the appellant, restraining it from using in any manner as a part of its corporate name or trading style the words “Mahendra & Mahendra” or any word which is deceptively similar to “Mahindra” and/or “Mahindra & Mahindra”. In the said suit the plaintiff filed an application seeking an interim order of injunction against the defendant on similar terms.

The case of the plaintiff is that in or about August, 1996, it came across a prospectus of the defendant in respect of its public issue and for the first time the plaintiff then came to know about the existence of the defendant and its corporate name. The name of the defendant is almost the same as that of the plaintiff with the only difference in spelling by substituting ‘e’ for (sic) ‘Mahindra’. It is the contention of the plaintiff that the words are phonetically, visually and structurally almost identical and in any event deceptively similar. In the prospectus of the defendant the words “Mahendra and Mahendra” are more prominently written than the rest of the names. According to the plaintiff the defendant wish and intend to fraudulently and wrongfully deceive members of the public into believing that the defendant is the associate of the plaintiff or in some way connected with the plaintiff and to trade on the reputation of the plaintiff

The Supreme Court concluded that the plaintiff had been using the word “Mahindra” and “Mahindra & Mahindra” in its companies/business concerns for a long span of time extending over five decades. The name had acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name ‘Mahindra’ with a certain standard 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 effect the plaintiff prejudicially in its business and trading activities. Undoubtedly, the question whether the plaintiffs’ claim of ‘passing-off action’ against the defendant will be accepted or not has to be decided by the Court after evidence is led in the suit. Even so far the limited purpose of considering the prayer for interlocutory injunction which is intended for maintenance of status quo, the trial Court and the High Court rightly held that the plaintiff had established a prima facie case and irreparable prejudice in its favor which calls for passing an order of interim injunction restraining the defendant-company which is yet to commence its business from utilising the name of ‘Mahendra’ or ‘Mahendra & Mahendra’ for the purpose of its trade and business.

Infringement and passing off

 

If the trademark is not registered, no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of the trade mark[21]. But the rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof shall not be affected.

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

On the infringement of registered trade marks, the Act provides 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[22] ; or a mark which because of  its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or  its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or  its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.  The court shall presume that it is likely to cause confusion on the part of the public. 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 similar to the registered trade mark; and is used in relation to goods or services which are not similar to those for which the trade mark is registered; and the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered[23]. A  person is considered using a registered mark, if, in particu1ar, he- (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under. the registered trade mark, or offers or supplies services under the registered trade mark; (c) imports or exports goods under the mark; or (d) uses the registered trade mark on business papers or in advertising.[24]

A registered trade mark is held infringed by a person when he applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.[25]

Banga Watch Company vs N.V. Philliphs, Eindhoven, Holland And Anr.[26]

This case was an action for passing off instituted by the respondents against the appellants to restrain them from using the name of Philips or any similar mark on watches, clocks and the like so as to pass off their goods as those of the plaintiffs. The defendants, a partnership firm were carrying, on business in the sale of watches, clocks, time-pieces and accessories thereof under the trade mark “Philips” since 1954. They were also doing business under the name and style of Musical Trading Company.  The case set up by the plaintiffs was that they have built up a vast amount of goodwill by the sale and advertisement of their goods in India.

The plaintiff asserted that trade mark ‘Philips’ had become a household word and had acquired an enviable reputation in Indian and throughout the world and was associated by the public and traders with the goods of the plaintiffs. The defendants being aware of the reputation and goodwill attached to the Trade Mark ‘Philips’ in order to trade upon their reputation dishonestly adopted the said trade mark for their watches and clocks. It was further asserted that the defendants who were selling watches and clocks under the trademark ‘Philips’ were also selling radios, gramophone records side by side and that they could not have any other purpose in adopting the trade mark ‘Philips’ but to pass off their goods as those of the plaintiffs.

The defendants controverted the claim and pleaded that they have been using the trade mark ‘Philips’ for watches, clocks, time-pieces and accessories thereof bona fide for several years since the year 1954 whereas the plaintiffs had never marketed any Philips watches in India. They, therefore, claimed that they have built up a considerable goodwill in the trade mark of Philips for their watches and clocks and the plaintiffs had no right to the exclusive use of the said trade mark or to restrain them from using it for their watches and clocks.

The only point which was seriously pressed into service was that the acquisition of an exclusive right to trade mark in connection with a particular type of article of commerce could not entitle the owner of that right to prohibit the use by others of such mark or name in connection with goods of a totally different character, because on action for passing off is a common law remedy for passing off is a common law remedy for passing off by a person of his own goods as those of another and unless it was established by the plaintiffs that his goods and the goods sold by the defendant are of alike or similar nature, it could not be said that the use of the trade mark in dispute was likely to lead to any confusion. As the respondents were neither manufacturing nor marketing clocks and watches in India, and there was no trade link between the goods of the plaintiff and the defendants, it was argued, there was no likelihood of any deception being practised on a customer of average intelligence so as to create belief in his mind that the good sold by the defendants are the production of the plaintiffs.

The court held that in the present case, the respondent-company though was not manufacturing watches and clocks, but they were manufacturing and marketing clock fitted radios and transistors. It had also come in evidence that the principal company-respondent No. 1 was manufacturing and marketing clocks and watches in Holland. The trial Court also rightly accepted the contention of the respondent that watches and clocks are sold by the dealers on the same premises, and even the appellants are doing so. Further there is absolutely no explanation on the record as to why the defendants chose the trade mark “Philips” for marketing the watches and clocks. The defendants were thus restrained from using the trade mark.

N.R. Dongre And Ors. vs Whirlpool Corpn. And Anr[27]

This was an appeal by way of special leave by the defendants against whom a temporary injunction was granted by the Delhi High Court. The suit was a passing off action brought by the plaintiff-respondents to restrain the defendant appellants from manufacturing selling, advertising or in any way using the trade mark ‘WHIRLPOOL’ in any other trade mark deceptively or confusingly similar to the trade mark of ‘WHIRLPOOL’ in respect of their goods. The subject matter of the appeal was the manufacture, sale and advertisement of washing machines by the defendants-appellants using the mark ‘WHIRLPOOL’ as a part of the name by which they had recently commenced marketing the washing machines manufactured by them. In short, the claim of the plaintiff-respondents was based on prior user of the mark ‘WHIRLPOOL’ and a trans-border reputation indicating that any goods marketed with the use of the mark ‘WHIRLPOOL’ give the impression of it being a goods marketed by the plaintiffs; and the washing machines manufactured, sold and advertised by the defendants give that impression resulting in confusing the intending buyers with the impression. The plaintiffs sought a temporary injunction which was granted by the learned Single Judge and affirmed by the Division Bench of the High Court.

The Whirlpool Corporation, plaintiff was a multi-national incorporated in U.S.A. TVS Whirlpool Ltd. The defendants Nos. 1 and 2 were the trustees of Chinar Trust. According to the plaintiffs, they had an established business in the manufacture, sale, distribution and servicing of washing machines of all kinds and the plaintiff was the successor of a trade mark ‘WHIRLPOOL’ since 1937. By 1957 ‘WHIRLPOOL’ was a leading trade mark and name in the United States and Canada in relation to washing machines. By 1986 the ‘WHIRLPOOL’ was registered in relation to washing machines and dryers in class 7 as well as for appliances in classes 9 and 11 in more than 65 jurisdictions around the world including most of the commonwealth countries. In 1956-57, the plaintiff obtained registration for the trade mark ‘WHIRLPOOL’ in India in respect of clothes dryers, washers, dish washers and some other electrical appliances. These registrations were renewed periodically. However, in 1977, the registrations in India lapsed on account of failure to apply for renewal. In 1988 applications were moved by the plaintiffs with the Registrar of Trade Marks for registration of the trade mark ‘WHIRLPOOL’ for certain goods including washing machines. The washing machines were being marketed by plaintiff in India under the TVS brand using the phrase ‘in collaboration with Whirlpool Corporation’. Prior user of the mark ‘WHIRLPOOL’ for such goods was claimed by the plaintiffs. The plaintiff alleged that in July, 1994 they came across an advertisement of defendants soliciting dealers for ‘WHIRLPOOL’ washing machines. In short, this was the basis on which the plaintiffs claim to restrain the defendants from using the mark ‘WHIRLPOOL’ for the goods manufactured by the defendants.

On the other hand, the defendants filed an application on 6.8.1986 with the Registrar for registration of the trade mark ‘WHIRLPOOL’. Plaintiff filed a notice of opposition. The Registrar passed an order dismissing the opposition and allowing the defendants’ application for registration on the ground of proposed user only.

Single Judge granted a temporary injunction in favour of the plaintiffs whereby the defendants, their partners, trustees, agents, representatives and assignees were restrained from manufacturing, selling, advertising or in any way using the trade mark ‘WHIRLPOOL’ or any other trade mark deceptively or confusingly similar to the trade mark Whirlpool in respect of their goods. The Supreme Court observed that injunction was a relief in equity and was based on equitable principles. It had also to be borne in mind that a mark in the form of a word which was not a derivative of the product, point to the source of the product. The mark/name ‘WHIRLPOOL’ was associated for long, much prior to the defendants’ application in 1986 with the Whirlpool Corporation. In view of the prior user of the mark by plaintiff and its trans-border reputation extending to India, the trade mark ‘WHIRLPOOL’ gave an indication of the origin of the goods as emanating from or relating to the Whirlpool Corporation. The High Court had rightly recorded its satisfaction that use of the ‘WHIRLPOOL’ mark by the defendants indicated prima facie an intention to pass-off defendants’ washing machines as those of plaintiffs’ or at least the likelihood of the buyers being confused or misled into that belief. In addition, it had been rightly held that the grant of interlocutory injunction would cause no significant injury to the defendants who can sell their washing machines merely by removing the small metallic strip bearing the offensive trade mark/name which include ‘WHIRLPOOL’. On the other hand, refusal of the interlocutory injunction would cause irreparable injury to the plaintiffs’ reputation and goodwill since the trade mark/name ‘WHIRLPOOL’ was associated for long because of prior user and even otherwise with the plaintiff – Whirlpool Corporation. These factors which had been relied on for grant of the interlocutory injunction by the trial court indicated that the exercise of discretion was in accordance with the settled principles of law relating to the grant of interlocutory injunctions in a passing-off action.

In Cadila Healthcare Limited Vs. Cadila Pharmaceuticals Limited[28] the Supreme Court of India concluded that in a action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity, the following factors are to be considered:

1. a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
2. b) The degree of resemble ness between the marks, phonetically similar and hence similar in idea.
3. c) The nature of the goods in respect of which they are used as trade marks.
4. d) The similarity in the nature, character and performance of the goods of the rival traders.
5. e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
6. f) The mode of purchasing the goods or placing orders for the goods and
7. g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

Weightage had to be given to each of the aforesaid factors depending upon facts of each case and the same weightage could not be given to each factor in every case.

A trademark serves a number of purposes, primarily among them being identification of the origin of goods and guarantee of the consistency, quality and characteristics of the goods. Trademark law may be said to be centered around protection of ‘distinctive character’. A trademark to be distinctive must, like a woman’s hat be exclusive. Even well known trademarks are protected under the Act. The holder of trademark has the ‘exclusive right’ to use it in relation to the goods or services in respect of which it has been registered. If the mark is infringed, no action for the infringement of the trademark is available if the trademark is unregistered.

[1] “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof

[2] “goods” means anything which is the subject of trade or manufacture;

[3] “service” means service of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as  banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising;

[4] Section 2(zg) of Trade Marks Act, 1999

[5] AIR1972 SC2488, Supreme Court of India

[6] Whoever uses  any false property mark shall, unless he proves that he acted without intent to defraud, be punished with imprisonment of either description for a term which may extend to one year, or with fine, or with both.

[7] 486. Selling goods marked with a counterfeit property mark.

Whoever sells, or exposes, or has in possession for sale, any goods or things with a counterfeit property mark affixed to or impressed upon the same to or upon any case, package or other receptacle in which such goods are contained, shall, unless he proves-

(a) That, having taken all reasonable precautions against committing an offence against this section, he had at the time of the commission of the alleged offence no reason to suspect the genuineness of the mark, and

(b) That, on demand made by or on behalf of the prosecutor, he gave all the information in his power with respect to the persons from whom he obtained such goods or things, or

(c) That otherwise he had acted innocently be punished with imprisonment of either description for a term which may extend to one year, or with fine, or with both.

[8] In re Powell’s Trade Mark (1893) 10 R.P.C. 200

[9] A mark used for denoting that moveable property belongs to a particular person is called a property mark

[10] AIR2002SC275, Supreme Court of India

[11]  (2004)6SCC 145, Supreme Court of India

[12] AIR 1977 Cal413, Calcutta High Court

[13] Section 11(1)

[14] Section 11(2)

[15] Section 29(6)

[16] Section 29(7)

[17] Section 29(9)

[18] Section 12

[19] AIR1970SC146, Supreme Court of India

[20] AIR2002SC117, Supreme Court of India

[21] Section 27

[22] Section 29(1)

[23] Section 29(5)

[24] Section 29(6)

[25] Section 29(7)

[26] AIR1983P&H418, Punjab and Haryana High Court

[27] (1996)5SCC714, Supreme Court of India

[28] (2001)5SCC73, Supreme Court of India