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Section 12 1. Kores ( India) Limited v.

Khoday Eshwara (1984)

Kores applied for a trade mark consisting of device of a typist girl at the typewriter. Khoday filed a notice of Opposition to the registration of the trade mark. The grounds of Opposition, inter alia, were that the respondents are the Proprietors of a trade mark consisting of the device of a lady in typing position on a typewriter and the word "KHODAY" and claimed that the proposed mark of the petitioners is identical and was deceptively similar in respect of the same goods or of the same description and is bound to put the public into great inconvenience, uncertainty and confusion leading also to deception. The petitioners filed a counter statement claiming that the petitioners have used the trade mark extensively since the year 1959 and the mark has secured goodwill by reason of long, continuous and extensive user. The petitioners also claimed that the use of the mark is original, artistic and honest and, therefore, the petitioners are entitled to claim registration under sub-section (3) of section 12 of the Act. The court while allowing registration under sec.12 laid down the following tests for determining the honest concurrent user:(1) The honesty of the concurrent use, (2) The quantum of concurrent use shown by the petitioners having regard to the duration, area and volume and trade and to goods concerned, (3) the degree of confusion likely to follow from the resemblance of the applicants' mark and the opponents' marks. (4) Whether any instance of confusion have in fact been proved, and (5) the relative inconvenience which would be caused to the parties and the amount of inconvenience which would result to the public if the applicants' mark is registered.

2. Vrajlal Manilal & Co. vs M/S Bansal Tobacco Co. 2001 The plaintiff company is engaged in well-established and well-known business of manufacturing and marketing of "Bidis", smoking tobacco for the last 62 years using the trade mark/label consisting of numerals "22". It has also started manufacturing and marketing of its products of safety matches from 1983 under its well-known and well-reputed trade mark/label, i.e., "22" and obtained its registration under the provisions of the Trade & Merchandise Act, 1958. These goods, i.e. BIDIS and SAFETY MATCHES are associated goods and are of the same nature, description as also of the same classification. Defendant is the proprietor of trade mark BANSAL KHAINI TOBACCO No.22 Label in relation to chewing tobacco on account of its prior honest

adoption in the year 1974. Court allowed concurrent and honest use however the defendant's user would be restricted to the States of Uttar Pradesh, West Bengal & Bihar.

Sec. 11(1) 1.Sunil Gupta Trading As Jai Durga ... vs The Assistant Registrar Of Trade ... on 9 March, 2005

The appellant applied for registration of their trade mark word 'VENUS' and monogram in respect of chokes for fluorescent tubes, patties and starters included in class 9. Objection was filed by the Respondent who is the registered proprietor of the trade mark 'VENUS' in respect of water heaters, oven, immersion heaters and water coolers included in class 11 and claimed that they are using the same since 1961. He contended that impugned mark being the same, the registration would offend section 11(a) of the Act in view of the mark having become a well known mark. The court observed that there is no doubt that the appellant has adopted the word 'VENUS' knowing fully about the reputation attained by the second respondent in respect of their goods. It was held that even if the goods are totally different, without having any trade connection, but still if the impugned mark is identical and similar to that of the well known or reputed mark of the opponent, then the impugned mark cannot be registered. In the absence of any explanation by the appellant to adopt the impugned name, the court held that the adoption is not a bonafide one. Well- Known mark 1. Daimler Benz Aktiegesellschaft v. Hybo HindustanThe plaintiff is the registered trade mark holder of the mark and word "Benz" and "Three Pointed Human Being in a Ring". The issues before the single judge bench was whether the defendant could use the mark BENZ on underwear. The High Court of Delhi held that the trade mark 'BENZ' was extensively used with respect to automobiles and it is a well-known mark. The use of an identical mark 'Benz' with respect to undergarments will lead to confusion in the market.

2. Om Textile Factory vs Pepsico Inc on 11 July, 2005 The applicant sought for registration word PEPSI for the goods "hosiery and readymade garments". The opponents are in an established international business and dealing, manufacturing and merchandising of soft drinks, beverages, concentrates, syrups and food

products as well as clothing accessories and are using a world famous trade mark 'PEPSI' which enjoys an international reputation and goodwill including India and that they are the registered proprietors. The court keeping in view the use and reputation of the Opponents' registered trade mark, the use of the impugned mark undoubtedly is likely to cause confusion and deception during the course of trade.

3. N.R. Dongre And Ors. vs Whirlpool Corpn. And Anr. on 30 August, 1996 The plaintiff is the licensed user of the trade mark and trade name 'WHIRLPOOL'. registered in India for certain goods including washing machines. In 1977 the registration lapsed due to non-renewal. The defendants filed an application on 1986 with the Registrar for registration of the trade mark 'WHIRLPOOL . The suit is a passing off action brought by the plaintiffrespondents 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 question before the court was when there is no actual use can there be an passing off action or well-known trade mark?? The court held that there is Passing off on unfair trade competition as it Unfairly seeking to get the goodwill. Court laid down following principles of well-knowness: For identifying well-know actual usual is not relevant, only recognition and only among relevant section of public. When have cross border use., their well-known can cross boundaries. There can be passing of action against registered proprietor Duration and extent and geographical area must be considered. They have been using in so many countries( though not India) . advertisement , trade expressions Registration is not mandatory , but it adds but well-known due to promotion by

4. Milmet Oftho Industries & Ors vs Allergan Inc on 7 May, 2004

In this case the Supreme Court of India, relying on the doctrine of trans-border reputation, protected a mark that was adopted and used in the international market prior to the adoption and use of an identical mark in India, even though the foreign mark was never used in India. The Appellant is a manufacturing company in India and were selling "OCUFLOX" on a medicinal preparation containing CIPROFLOXACIN HCL to be used for the treatment of eye and ear. And Respondents are Pharmaceutical companies which manufacture pharmaceutical products in several countries. The Respondents filed a Suit for an injunction based on an action for passing off in respect of mark "OCUFLOX" used on a medicinal preparation manufactured and marketed by the Respondents. The Respondents claimed that they were the prior users of the mark OCUFLOX in respect of an eye care product containing Ofloxacin and other compounds. The Supreme Court of India held that while considering the possibility of a likelihood of deception or confusion, particularly in the field of medicines, it should be kept in mind that this field is international in character. Due to the advertisements of goods through the print and other media, many products may gain a worldwide reputation. For these reasons, the Court held that if a mark in respect of a drug is associated with a company worldwide, it should be protected against an identical mark in respect of a similar drug sold by another company in India.

Passing Off 1.Kaviraj Pandit Durga Dutt Sharma vs Navaratna Pharmaceutical ... on 20 October, 1964 Facts The respondent, a firm manufacturing medicinal products, was the proprietor of two registered trade marks "Navaratna" and "Navaratna pharmaceutical Laboratories " from 1937. When the appellant, who was also a manufacturer of medicinal preparations, sought the registration of the words "Navaratna Pharmacy" as his trade mark and the respondent objected successfully. The appellant then moved the Registrar of Trade Marks for removing from the register, the trade mark "Navaratna" and for deleting the word "Navaratna" from the other trade mark of the respondent. Held Though the word Navaratna is a generic word, the mark of the respondent had become associated exclusively in the market with the pharmaceutical products and acquired distinctiveness. The mark of the appellant was a colourable imitation of that mark is 'Navaratna Pharmacy. Difference in factors of infringement of trademarks and action for passing off of goods were considered:

While an action for passing off is a Common Law remedy being in substance an action for deceit. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. the evidence in respect of passing off consists merely of the colourable use of a registered. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get- up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.

When once the use by the defendant of the mark which is claimed to infringe the plaintiffs mark is shown to be "in the course of trade, the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the, plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered.

2. Laxmikant V.Patel vs Chetanbhat Shah & Anr on 4 December, 2001 Facts The plaintiff expanded the business of colour lab and studio in Ahmedabad, in the name and style of Muktajivan Colour Lab and Studio and is using the name since 1982. The high quality of services rendered by the plaintiff to his customers has earned a reputation and developed a goodwill associated with the trade name Muktajivan Colour Lab. The defendant who was carrying on his similar business in the name and style of Gokul Studio is intending to commence

business through by adopting the name and style of Muktajivan Colour Lab and Studio. The passing off action was initiated by the plaintiff by filing permanent preventive injunction against the defendants restraining them from passing off their business, services and goods as of and for the business, services and goods of the plaintiff. The court held the three elements of passing off action are the reputation of goods, possibility of deception and likelihood and damages . The court held that the same principle, which applies to trade mark, is applicable to trade name. The intention of the defendant to make use of business name of the plaintiff so as to divert his business or customers to himself is apparent. The plaintiff having acquired a goodwill as to the quality of services being rendered by him.

Trade Dress 1.Colgate Palmolive Company vs Anchor Health And Beauty Care Pvt. ( 108 (2003) DLT 51) Plaintiff No. 1 is proprietor of the trademark "Colgate". and has been manufacturing and marketing dental products in India under the trademark "Colgate. The defendant- Anchor Health,a company incorporated under the Indian companies Act, 1956 and carries on the business as manufacturers and marketers of dental products under the trademark "Anchor. The product which is subject matter of the instant proceedings is a "Tooth Powder" under the trademark "Colgate" which is sold in Cans bearing the distinctive get up and colour scheme or combination of colour comprising of red and white background. The plaintiff claims that the defendant by adopting the similar trade-dress particularly the colour combination of "red and white" has committed offence of "passing off" goods of plaintiff as its own. There is no dispute as to the trade names as these are distinct and have no kind of similarity. Decision Trade dress is the soul for identification of the goods as to its source and origin and as such is liable to cause confusion in the minds of unwary customers particularly those if a product having distinctive colour combination, style, shape and texture has been in the market for decades. In first glance of the article without going into the minute details of the colour combination, getup or lay out appearing on the container and packaging gives the impression as to deceptive or near similarities then it is a case of confusion and amounts to passing off one's own goods as those of the other with a view to encash upon the goodwill and reputation of the latter. Such an action on the part of infringing party also has an element of unfair competition.

Ambuish Marketing 1. NHL v. Pepsi Cola The only case to directly address the contours of ambush marketing is NHL v. Pepsi-Cola Canada Ltd. This case arose out of a Pepsi advertising campaign called the "Diet Pepsi $4,000,000 Pro Hockey Playoff Pool." This campaign was centered around the National Hockey League (NHL) play off games and the Stanley Cup, but Pepsi was neither an NHL sponsor, nor did it use any NHL official logos. National Hockey League Services (NHLS), the licensing arm of the NHL, entered into an agreement with Coca-Cola Ltd. (Coke) as an official sponsor of the NHL for approximately $2.6 million. Coke obtained the rights to use NHL symbols for its promotional programs in Canada and the United States. Through this agreement Coke did not obtain "any right to advertise during the broadcast in Canada of any televised NHL games." The NHL controlled such television rights and it sold them to Molson Breweries of Canada Ltd. (Molson) in 1988 for a five-year period. By contract with Molson, the Canadian Broadcasting Corporation (CBC) televises what is called Hockey Night in Canada (HNIC), which includes at least one NHL game every Saturday night during the regular season. Molson sold Pepsi the "right to be the exclusive advertiser of soft drinks during the broadcast of all 'Hockey Night in Canada' games. In bringing its cause of action, the NHL argued that the Pepsi contest, particularly the television commercials, conveyed a false impression to the public that the NHL, in some form, approved or was associated with the contest. Because there was no breach of the agreement between the NHL and Coke, the NHL sought to establish that Pepsi had interfered with that business relationship. Conversely, Pepsi argued that the contest was "an aggressive but legitimate marketing campaign." Decision In deciding the issue, the court first described the tort of passing-off the court concluded that there is "nothing that would constitute direct interference by the defendant with the due performance of the NHLS's contractual relationship with Coke." The court stated that although the NHLS-Coke agreement obligates NHLS to protect the rights of Coke from Parasitic marketing, such an obligation cannot impose a duty upon a third party to refrain from advertising . Thus, the court found that Pepsi was not in violation of Coke's contract nor did its aggressive advertising campaign amount to the tort of passing-off.

Deceptive similarity 1. Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited on 26 March, 2001

Appellant and respondent are pharmaceutical companies manufacturing various pharmaceutical products. The suit related to a medicine being sold under the brand name Falcitab by the respondent which, according to the appellant, was a brand name similar to the drug being sold by it under its brand name Falcigo. The respondent company stated in the defence that the word Falci, which is the prefix of the mark, is taken from the name of the disease Falcipharum Malaria and it is a common practice in pharmaceutical trade to use part of the word of the disease as a trade mark to indicate to the doctors and chemists that a particular product/drug is meant for a particular disease. Trial Court & HC decided against appellant. On appeal the court held that since it is both for malaria it is deceptive. Since it is a medicine product , extra care should be taken so as to the confusion and deception caused to public. For deciding the question of deceptive similarity the following factors to be considered: 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. b) The degree of resembleness between the marks, phonetically similar and hence similar in idea. c) The nature of the goods in respect of which they are used as trade marks. d) The similarity in the nature, character and performance of the goods of the rival traders. 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. f) The mode of purchasing the goods or placing orders for the goods and g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks

Delay and laches 1. Hindustan Pencils (P) Ltd. vs India Stationery Products Co. And ... on 23 January, 1989 Plaintiffs are the proprietors of the following two registered trade marks : Nataraj and a device of Nataraj. The plaintiffs marks were adopted by them in the year 1961. The defendants got this copyright in respect of pins under the name of Nataraj and have also used the device of the dancing Nataraj which is identical to the dancing figure which has been registered by the plaintiffs . A suit was filed by the plaintiff to restrain the defendants by an interim injunction from using the offending mark 'NATARAJ' and the device of Nataraj or any similar mark or device which is an infringement on the plaintiff's registered trademark. The defendant countered on delay and acquisence. Court held that the plaintiffs are not guilty of inordinate delay or acquiescence and are entitled to the interim relief of an injunction. The court stated that - Mere silence is not acquisence , there must be some encouragement by its side.

2.Midas Hygiene Industries P. Ltd. ... vs Sudhir Bhatia And Ors. on 22 January, 2004

The plaintiffs was a prior and prominent user of the phrase Laxman Rekha for insecticides, pesticides as well as insect repellent under the name LAXMAN REKHA . The defendant adopted 'Magic Laxman Rekha' for the same. The plaintiffs filed a suit for passing off and for infringement of Copyright. The high court granted injunction against plaintiff on the ground that Respondents used to work with the Appellants and injunction merely on the ground that there was delay and latches in filing the suit. On appeal, the court held that there was dishonest intention to pass off his goods as those of the Appellants. The court held that the Division Bench was entirely wrong in vacating that injunction merely on the ground of delay and laches.

Parallel Importing 1.Samsung Electronics Company Ltd. ... vs Mr. G. Choudhary And Anr. on 6 September, 2006 The Plaintiff prays for an interlocutory injunction which seeks to combat and eradicate parallel importation by third parties into India of products manufactured by the Plaintiff itself, but in China. The case set up is that although the products are genuine, they are not meant for Indian

markets, inter alia because their sale does not strictly conform to Indian laws and regulations( not accompanied with literature in English or the Vernaculars ,nor with a label indicating the maximum retail price or they are not covered with a warranty ). The court considering the balance of convenience in favor of the Plaintiff ,who is likely to suffer irreparable loss and injury, granted interim injunction. 2. M/S General Electric Company vs Mr. Altamas Khan And Others on 18 December, 2008 The plaintiff instituted the present suit to restrain the defendants from misrepresenting

themselves as authorized distributors of the plaintiff and from trading as GE Dehumidifie or in any other deceptively similar trading style and also from importing, exporting, distributing, selling or dealing in Dehumidifiers or any other product of the plaintiff under the trademark GE or GENERAL ELECTRIC . The plaintiff claims that by adopting tm GE the defendant are passing themselves off as the authorized distributor or affiliate or having association with the plaintiff. The suit of the plaintiff was decreed against the defendants for the relief of permanent injunction restraining the defendants and their agents from misrepresenting themselves as authorized distributors of the plaintiff and from trading as GE Dehumidifiers or in any other name deceptively similar thereto and from importing, exporting, distributing, selling, advertising or dealing in Dehumidifiers or any other products as of the plaintiff, under the trademark GE or GENERAL ELECTRIC or GE monogram or marks deceptively similar . 3. Samsung Electronics Company ... vs Kapil Wadhwa & Ors on 17 February, 2012 The first plaintiff, Samsung Electronics Company Ltd. (P1) was a company incorporated in Korea. The second plaintiff, Samsung India Electronics Pvt. Ltd. (P2) was a company in the same group (subsidiary), incorporated in India. P1 had licensed the use of the SAMSUNG trademark in India to P2. The grievance of the plaintiffs is that the defendants are purchasing, from the foreign market, printers manufactured and sold by plaintiff No.1 under the Trade Mark SAMSUNG/Samsung and after importing the same into India are selling the product in the Indian market under the Trade Mark SAMSUNG/Samsung and are thereby infringing the registered Trade Mark of the plaintiffs in India. They further alleged that defendants were guilty of passing off the imported products.

ISSUE: Whether the provisions of the Trade Marks Act 1999 (India) provided for the import of goods as an infringement and, if so, whether it included genuine products emanating from the proprietor on the international market without the proprietors consent. The court held that by virtue of s.29(1) and (6) Ds importation of the products was prima facie an infringing act. D had been unable to establish any plausible defence to such an infringement. The plaintiffs were able to establish a prima facie case of infringement of their registered trademarks and the balance of convenience also was in their favour. Hence, the injunction was allowed.

Comparative Advertising 1.Reckitt & Colman Of India Ltd vs M.P.Ramchandran & Anr on 22 June, 2010 The Indian courts, in 1999 had laid down the broad guidelines of comparative advertising. The plaintiff filed a complaint against the defendant that in advertising their product, a whitener under the name of Ujala, implied that the whitener of the plaintiff's, Robin Blue, was a more expensive way to whiten clothes, because of its inferior quality (using the tagline, 'what is more, you have to use lots of blue per wash'). The court, while holding in favour of the plaintiff, laid down the following principles of law regarding comparative advertising: 1. A tradesperson is entitled to declare their goods to be the best in the world, even though the declaration is untrue. 2. A tradesperson can also say that their goods are better than their competitor's goods, even though such statement is untrue. 3. For the purpose of saying that a tradesperson's goods are the best in the world or that their goods are better than their competitor's goods, a tradesperson can even compare the advantages of their goods over the goods of others. 4. A tradesperson cannot, however, while saying that their goods are better than their competitor's goods, say that their competitor's goods are bad. If a tradesperson says so, they really slander the goods of their competitors. In other words a tradesperson defames their competitors and their goods, which is not permissible. 5. If there is no defamation to the goods or to the manufacturer of such goods no action lies, but if there is such defamation, an action lies and if an action lies for recovery of damages for defamation, then the court is also competent to grant an order of injunction restraining repetition of such defamation. In Reckitt, the product of the plaintiff was not identified in the print advertisement by its name, Robin Blue, but simply by a blue whitener sold at the selling price of Robin Blue. Thus establishing that it is not necessary to disparage the rival product by its name to be liable for disparagement.