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Civil Remedies in Trademark

Submitted to:
Ms. Kuhu Tiwari
Faculty, Intellectual Property Rights

Submitted by:
RAJAT AGRAWAL
Roll No 106
Semester VII, B. A., LL. B (Hons.)

Submitted on:
10
th
October, 2014


Hidayatullah National Law University Raipur, Chhattisgarh
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TABLE OF CONTENTS
Table of Contents
Acknowledgements ............................................................................................................... 3
research methodology: .......................................................................................................... 4
INTRODUCTION ..................................................................................................................... 5
CHAPTER-1 ............................................................................................................................ 7
Enforcement of trademark rights ........................................................................................... 7
CHAPTER-2 .......................................................................................................................... 12
PASSING OFF: ...................................................................................................................... 12
CHAPTER-3 .......................................................................................................................... 22
INFRINGMENT OF TRADEMARK ........................................................................................... 22
CHAPTER-4 .......................................................................................................................... 26
PASSING OFF AND INFRINGEMENT ...................................................................................... 26
Conclusion:- ........................................................................................................................ 35
Bibliography ........................................................................................................................ 36




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ACKNOWLEDGEMENTS

I feel highly elated to work on the topic.
The practical realization of this project has obligated the assistance of many persons. I express
my deepest regard and gratitude for our Faculty of Intellectual Property Law. Their consistent
supervision, constant inspiration and invaluable guidance have been of immense help in
understanding and carrying out the nuances of the project report. I take this opportunity to also
thank the University for providing extensive database resources in the Library and through
Internet.

-Rajat Agrawal
Semester-VII












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RESEARCH METHODOLOGY:

Secondary data has been used. The study is descriptive and analytical in nature.

Books and other reference as guided by Faculty of Intellectual Property Law have been primarily
helpful in giving this project a firm structure. Websites, dictionaries and articles have also been
referred.













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INTRODUCTION
A Mark` may consist of a word or invented word, signature, device, letter, numeral, brand,
heading, label, name written in a particular style, the shape of goods other than those for which a
mark is proposed to be used, or any combination thereof or a combination of colors and so forth.
Subject to certain conditions, a trademark may also be symbolized by the name of a person,
living or dead.
For the purpose of registration, a mark chosen should be capable of distinguishing goods or
services of one person from those of the others. Further it should not be deceptively similar to an
existing mark of another person and not the one expressly prohibited under the Act.
The marks devoid of any distinctive character, or which are only indicative of the kind, quality,
quantity, purpose, value or geographical origin of the goods, or which are marks already in
vogue in the trade due to their customary use may not be registered. But these disqualifications
do not apply to marks, which have already acquired distinction due to their popularity and
consistent use. Internationally acclaimed brand names are freely available for use in India.
The Indian law of trademarks is enshrined the new Trade Marks Act, 1999 came into force with
effect from September 15, 2003. The old Trade and Merchandise Marks Act, 1958 was repealed
at the same time. The new Trademarks Act of 1999 is in line with the WTO recommendations
and is in conformity with the TRIPS Agreement to which India is a signatory.
MAIN FEATURES OF NEW LEGISLATION IN INDIA
Under the new Trademarks Act of 1999:
Registration of Service Marks allowed in addition to Trademarks for goods.
No separate application necessary for each category/class of goods or services; a single
application would do, however filing fee will be charged separately for each class of
goods/services.
The term of registration of trademark is ten years, subject to renewal thereafter.
The system of maintaining registration of trademark in Part A and Part B with different
legal rights, dispensed away.
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Registration of trademarks which are imitations of well known trademarks not permitted.
Registration of Collective Marks owned by associations allowed.
Offences relating to trademark made cognizable.
Filing Fees enhanced by more than 8 times.
Extension of application of convention countries.

The Trade Marks Act provides, inter alia, for registration of service marks, filing of multiclass
applications, increasing the term of registration of a trademark to ten years as well as recognition
of the concept of well-known marks, etc. The Indian judiciary has been proactive in the
protection of trademarks, and it has extended the protection under the trademarks law to Domain
Names as demonstrated in landmark cases of Tata Sons Ltd. v. Manu Kosuri & Ors
1
, and Yahoo
Inc. v. Akash Arora
2
.
In addition to trademarks, the following categories of marks can also be registered under the TM
Act:
Certification marks are given for compliance with defined standards, but are not
confined to any membership. Such marks are granted to anyone who can certify that the
products involved meet certain established standards. The internationally accepted ISO
9000 quality standard is an example of a widely recognized certification mark.
Collective marks can be owned by any association. The members of such associations
will be allowed to use the collective mark to identify themselves with a level of quality
and other requirements and standards set by the association. Examples of such
associations would be those representing accountants, engineers or architects.




1
90 (2001) DLT 659]
2
[1999 PTC 201].
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CHAPTER-1
ENFORCEMENT OF TRADEMARK RIGHTS
The Trademarks Act 1999 provides rights holders with both civil and criminal remedies against
infringement or unauthorized use of a mark. Other remedies are available to rights holders under
the Customs Act 1962, which deals with import/export of goods and confiscation of infringing
materials by the relevant authorities.
Civil remedies:-
Depending upon whether a trademark is registered, pending registration or unregistered, civil
proceedings can be initiated either under the tort of passing off or for statutory infringement
under the Trademarks Act.
Civil proceedings in India are governed by the Code of Civil Procedure 1908. The general rule is
that a suit can be filed in a court:
where either the defendant or one of the defendants resides or carries on business or
personally works for gain; or
where the cause of action arises, wholly or in part.
Under the old Trademarks & Merchandise Marks Act 1958, the appropriate court for a suit was
determined by the location of the defendant. However, Section 134(2) of the 1999 act allows a
rights holder to file a suit for trademark infringement in the court where the registered proprietor
resides or carries on business or personally works for gain.
A court can grant the following relief under a civil suit:
Injunctions;
damages or accounts for profits; and
delivery up of the infringing labels and marks.
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Indian courts regularly grant Anton Piller, John Doe and, occasionally, Mareva injunctions, and
may appoint court commissioners to inspect a defendants premises, as well as seize and seal
infringing goods.
When considering applications for ex parte, interim orders, Indian courts are guided by: the
balance of convenience;
whether the plaintiff will suffer irreparable harm should the order not be issued; and
whether there exists a prima facie case.
In Wander Ltd v Antox India P Ltd
3
, the Supreme Court observed that: The object is to protect
the plaintiff against injury by violation of his rights for which it could not adequately be
compensated in damages recoverable in the action if the uncertainty were resolved in its favour
at the trial. In the same case the court further observed that: The need for such protection must
be weighed against the corresponding need for the defendant to be protected against injury
resulting from its having been prevented from exercising its own legal rights for which it could
not be adequately compensated. The court must weigh one need against another and determine
where the balance of convenience lies.
In Patel v Shah
4
the Supreme Court made the following observations with regard to actions for
passing off:
it is usual, rather than essential, to seek a temporary injunction;
proof of actual damage is not essential, likelihood of damage is sufficient; and
an absolute injunction can be issued restraining the defendant from using or carrying on
business under the plaintiffs distinctive trademark.
Limitation/delay
Since passing off or trademark infringement usually involves a series of acts, each infringing act
provides a fresh cause of action. Thus, the general rule of limitation, which provides that a
complaint must be filed within three years of the date upon which the cause of action first arose,

3
(1990 Supp (1) SCC 727)
4
((2002) 3 SCC 65)
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does not apply in such cases. However, prompt action by rights holders will help to establish the
seriousness of a claim in the eyes of the court.
In Midas Hygiene Industries P Ltd v Bhatia
5
, the Supreme Court held that: ...in cases of
infringement either of trademark or of copyright normally an injunction must follow. Mere delay
in bringing the action is not sufficient to defeat grant of injunction in such cases... The grant of
injunction also becomes necessary if it prima facie appears that the adoption of the mark itself
was dishonest.
Criminal remedies:-
The Trademarks Act provides for criminal remedies against the falsification or false application
of a trademark and the use of false trade descriptions. Criminal sanctions include imprisonment
for a term ranging between six months and three years, and/or fines of between Rs50,000 and
Rs200,000.
Any police officer above the rank of deputy superintendent, if he or she is satisfied that a
trademark offence has been, is being, or is likely to be, committed, has the power to search and
seize infringing articles without warrant. Such an officer is empowered to seize not only the
offending goods, but also dies, blocks, machines, plates and other instruments or equipment
involved in committing the offence. However, before making the search and seizure, the officer
is required to obtain the opinion of the registrar of trademarks on the facts involved in the
offence. Such requirement has been criticized for causing unwarranted delays and can be
bypassed by filing a complaint with the magistrate to obtain directions to investigate and conduct
search and seizure operations against the infringer(s) (whether known or unknown).
Order control measures
Rights owners can now record their registered trademarks with the customs authorities under the
Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 notified under the
Customs Act 1962. These guidelines authorize customs officials to seize infringing goods at the
border without the need for a court order. Under these rules, the rights holder may give notice in

5
((2004) 3 SCC 90)
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writing of suspected infringing goods to the commissioner of customs or any other customs
officer authorized by the commissioner at the port of import requesting the suspension of
clearance of the goods.
Provided the registration remains valid, the customs authorities will prevent the importation of
goods infringing that mark. Customs authorities have the power to suspend the clearance of
prohibited goods either on information received by the rights holder or on their own initiative,
provided they have prima facie evidence or reasonable grounds to believe that the imported
goods infringe the recorded mark.
These rules also allow for destruction of goods or disposal outside the normal channels of
commerce after a determination that the goods infringe the recorded trademark and when no
legal proceeding is pending in relation to such determination. They also prohibit the re-
exportation of the infringing goods in an unaltered state.
Choosing the correct enforcement strategy
Enforcement measures should be based on the results of an efficient investigation, as this is
critical to ascertain the existence of a prima facie case, likely defences and important details such
as:
the extent of the infringers right to the use of a potentially infringing trademark and
whether such use is in good faith;
the extent and duration of the infringing activity;
the position of the suspected infringer within the distribution network (ie, manufacturer,
packer, wholesaler, importer or retailer);
the identity of any connected parties; and the financial standing and assets of the
infringer.
The choice of civil and/or criminal remedies also depends upon the location and nature of the
infringing activities. If, for instance, piracy is found to be institutionalized in a market
complex, civil proceedings may be ineffective in terms of cost as well as results, given the
organized nature of the infringers.
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It is worth noting that not all courts in India may be inclined to grant ex parte injunction or
seizure orders. Thus, careful selection of venue and the nature of the action, including
considerations as to the rights holders ability to control or exit the litigation, will play an
important role in determining the success of a campaign.


















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CHAPTER-2
PASSING OFF:
Passing off action is based on common law principle. The damages claimed for in an action for
passing off is un-liquidated damages. The action against passing off is based on the principle
that a man may not sell his own goods under the pretence that they are the goods of another
man
6
. Similar view has been held in ICC Development (International) Ltd. vs. Arvee
Enterprises
7
that the passing off action depends upon the simple principle that nobody has any
right to represent his goods as the goods of somebody else. In a passing off action, the priority
in adoption and use of trade mark is superior. Passing off is not defined in the Trademark Act,
1999. It is referred to in Section 27 (2), 134 (1)(c) and 135 of the Act.
Section 27 (2) states that the rights of action against any person for passing off as the goods of
another person or the remedies in respect thereof are unaffected by the provision of the Act.
Section 134 (1) (c) refers to jurisdiction of courts to try suits for passing off arising out of the use
of any trademark. Section one 135 specifies the remedies available in respect of passing off
arising from the use of a trademark.
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 the
intention to deceive is not a defence in an action for passing off though proof of fraudulent
intention may materially assist a plaintiff in establishing probability of deception
8
.
The concept of passing off which is a form of tort has undergone changes in the course of time.
At first it was restricted to the representation of ones goods as those of another. Later, it was
extended to business and services. Subsequently, it was further extended to professions and non-
trading activities. Now a days, it is applied to many forms of unfair trading and unfair
competition where the activities of one person cause damage or injury to the goodwill associated
with the activities of another person or group of persons.

6
N. R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714
7
2003 (26) PTC 245 (Del.)
8
Laxmikant Patel vs. Chetanbhai Shah, 2002 (24) PTC 1 (S.C)
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The law of passing off applies whenever there is the prospect of confusion between marks and
getup or where there is the prospect of confusion of identity through the unauthorised use of
similar marks or get-up. It is because the main consideration of passing off is whether deception
or confusion is likely to arise, passing off can be used to protect any kind of distinctive name,
mark, logo or get-up used to identify a company or business as well as products or services.
Elements to be proved for passing off action:
In Reckitt & Colman vs. Borden
9
, their Lordships used the term classical trinity, for goodwill,
misrepresentation and damage, which are the three elements of the tort of passing off.
1. Goodwill:- the Plaintiff has to establish a goodwill or reputation attached to the goods
and services which he supplies, in the mind of the purchasing public by association with
the identifying get-up under which his particular goods and services are offered to the
public as distinctive specifically of his goods or services.
As Lord Macnaghten has stated: Goodwill is the benefit and advantage of a good name,
reputation, and connection of a business. It is the attractive force which brings in custom. It is the
one thing which distinguishes an old established business from the new established business at
its first start. The goodwill of a business must emanate from a particular center or source.
However, widely extended or diffused its influence may be, goodwill is nothing unless it has
power of attraction sufficient to bring customers home to the source from which it emanates
10
.
Goodwill is thus the benefit and advantage of a name and get-up, and it is the attractive force
which brings in business. A passing off action is a remedy for the invasion of a right of property
in the business or goodwill likely to be injured by any actionable misrepresentation, not in the
name or get-up itself. Goodwill need not be established in the mind of every member of the
relevant public, but in a significant section of it
11
. A reputation generated among a very few
people will not do. There must be a substantial number of potential customers although not
necessarily a majority.

9
(1990) RPC 341 (HL)
10
Commissioners of Inland Revenue vs. Muller & Co.s Margarine Ltd. (1901) A.C. 217
11
Chocosuisse Union des Fabricants Suisses de Chocolat vs. Cadbury Ltd., (1999) RPC 826
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The action of passing off lies where there is a real possibility of damage of goodwill to some
business or trading activity. Therefore, the plaintiff has to establish a goodwill in his business or
his goods or services with which the trade or public will be led to associate the defendants
activities.
In Deepam Silk International vs. Deepam Silks
12
, while granting an order of injunction
restraining the defendant from using the plaintiffs trademark, the Karnataka High Court
observed that once the plaintiff has shown that he has been doing business for more than a
decade with the trade name and that he has not only applied for registration of a trademark nearly
a decade back, but also has spent lakhs of rupees on gaining the reputation by spending towards
advertisements in almost all medias available, the loss that would be caused to the plaintiff, if
another person like the defendant makes use of the same trade name and sells the same goods,
cannot be ascertained in terms of money. It is the reputation of the plaintiffs trade name that will
be in jeopardy. If the defendant is to sell inferior goods, it will definitely affect the business of
the plaintiff and will give an impression to the buyers of the goods from the defendant that the
goods sold by the trade name are not maintaining their quality. Therefore, there is every
likelihood of the plaintiff losing its customers and getting its trade name defamed.
Passing-off by the defendant of his goods as the goods of the plaintiff injures the right of
property in the plaintiff, that right of property being his right to the goodwill of the business. The
law assumes or presumes that if the goodwill of a mans business has been interfered with by the
passing off of goods, damage results therefrom. The plaintiff need not wait to show that damage
has resulted, he can bring his action as soon as he can prove the passing off; because it is one of
the class of cases in which the law presumes that the plaintiff has suffered damage.
2. Misrepresentation: the Plaintiff must demonstrate a misrepresentation by the defendant
to the public leading or likely to lead the public to believe that the goods or services
offered by him are the goods and services of him.

12
1998 (18) PTC 18 Kar
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In its classic form the misrepresentation which gives rise to an action of passing off is an implied
representation by the defendant that his goods are the goods of the plaintiff. As Lord Dipluck
explained in Advocaat case
13
that:
Where the plaintiff and defendant were not competing traders in the line of business, a false
suggestion by the defendant that their business were connected with each other would damage
the reputation and thus the goodwill of plaintiffs business.
The basis of passing off action being a false representation by the defendant, it must be proved in
each case as a fact that the misrepresentation was made. The use by the defendant in connection
of the goods, of the mark, name, or get-up in question must represent such goods to be the goods
of the plaintiff, or the goods of the plaintiff of a particular class or quality; and the defendants
use of such mark, name or get-up is calculated to deceive
14
.
3. Damage: the plaintiff must demonstrate that he suffered or in a quia timet action, that he
is likely to suffer damage by reason of the erroneous belief endangered by the
defendants misrepresentation that the source of the defendants goods or service is the
same as the source of those offered by the plaintiff
15
.In a passing off action, damage is
presumed even if there is likelihood of deception.
In ICC Development (International) Ltd. vs. Arvee Enterprises
16
and in Sakalain Meghajee vs.
BM House (India) Ltd.
17
, the Delhi High Court cited the case of Erven Warnik Besloten
Vennootschap & Anr. Vs. Townend & Sons (Hull) Ltd. & Anr.
18
, wherein the House of Lords
identified five characteristics which must be present in order to create a valid cause of action for
passing-off. The House of Lords held that passing-off is:
1) A misrepresentation;
2) Made by a trader in course of business;

13
1979) AC 731, p. 741-742
14
Spalding vs. Gamage (1915) 32 RPC 273
15
Law of Trademarks and Geographical Indications, KC Kailasam, Publication: Wadhwa Nagpur; 2nd Edition, 2005,
pg. 343
16
2003 (26) PTC 245 (Del.)
17
2002 (24)PTC 207 (Del.)
18
1979AC 731
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3) To prospective customers of his or ultimate consumers of goods or services supplied by
him;
4) Which is calculated to injure the business or goodwill of another trader which can
reasonably be foreseeable; and
5) Which causes actual damage to a business or goodwill of the trader by whom the action is
brought or in a quia time (because he fears or apprehends) action will probably do so.
In Laxmikant V. Patel vs. Chetanbhai Shah
19
,the Honble Supreme Court held the three elements
of passing-off action are:-
a) Reputation of the goods;
b) Possibility of deception; and
c) Likelihood of damages to the Plaintiff.
Characteristics of Passing off Action
Following characteristics can be attributed to passing off action:-
A. Proof of fraudulent intent not necessary: it is not essential that the plaintiff must establish
fraud on the part of the defendant in a passing off action. While granting injunction
against the defendants using the trademark Horlioks, the Delhi High Court held that
the use of the offending mark by the defendants to imitate the plaintiffs
trademark appears to be flagrant and blatant attempt on the part of the defendants to imitate the
plaintiffs trademark with a view to deceive the unwary purchasers and exploit and encash on
their goodwill in order to pass off their goods as that of the plaintiffs. the law does not permit
anyone to carry on his business in such a way as would persuade the customers in believing that
the goods belonging to someone else are his or are associated therewith. Where there is
possibility of confusion in business, an injunction would be granted even though the defendant
adopted the name innocently
20
.

19
2002(24) PTC 1 (sc)
20
Horlicks Ltd. Vs. Bimal Khamrai, (2003) 26 PTC 241 (Del.)
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B. Passing off not limited to goods: Passing off properly so called is not confined to the case
of sale of goods. Passing off also restrains a defendant from trading under a particular
name though the defendant trader is not selling the goods
21
. Thus, when a name has
become identified, by adoption and user with a particular trade or manufacture or
business, the person who so used or adopted it can obtain the aid of the Court to restrain
the use of it by others in such a way as to lead customers or the public to think that the
trade r business of the person sousing is his trade or business.
C. Evidence of false representation, but not deception necessary: false representation made
by the defendant, whether expressly or otherwise, must be proved as a matter of fact in
each case. Absence of actual deception is not determinative. The ultimate question of
whether the deception is likely to cause confusion remains a question of fact for the
courts to decide in the light of available evidence.
D. Plaintiff and defendant need not be in the same field: in passing off action, it is
immaterial whether the plaintiff and the defendant trade in the same field or trade in
different products. Remedies in the form injunction was granted in favour of the plaintiff
on the basis of an action of passing off even though the plaintiff and defendant were
trading in altogether different products
22
.
E. Prior user to be established: for inherently distinctive marks, ownership is governed by
the priority of use of such marks. The first user in the sale of goods is owner and senior
user. In order to succeed, the plaintiff have to establish user of the mark prior in time than
the impugned user by the respondents.
Issue in a Passing off Action
The issue in a passing off action may be stated as follows:
would the users of the defendants, either the actual user or the proposed user conceded for the
purposes of the action, be likely to lead persons, either members of trade or of the public, to
suppose that the defendants goods so sold were the product of the plaintiffs, or that the

21
Sales Affilates lts. Vs. Le Jean Ltd., (1947) 64 RPC 10
22
Honda Motors Co. Ltd. Vs. Charanjit Singh, 2003 (26) PTC 1
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business concerned in its production was the plaintiffs or was associated with the plaintiffs
business
23
.
Factors to be considered in case of an action for passing off:-
The Honble Supreme Court in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd
24
, held
that the following factors to be considered in case of an action for passing off action of an
unregistered trademark for deciding the question of deceptive similarity:-
I. The nature of the marks, i.e, whether the marks are word marks or label marks or
composite marks, i.e, both words or label works.
II. The degree of resemblance between the marks, phonetically similar and hence similar in
idea.
III. The nature of goods in respect of which they are used as trademarks.
IV. The similarity in nature, character and performance of goods of the rival traders.
V. The class of purchasers who are likely to buy the goods bearing the marks they are likely
to exercise in purchasing and/or using the goods.
VI. The mode of purchasing the goods or placing orders for the goods.
VII. Any other surrounding circumstances which may be relevant in the extent of dissimilarity
between the competing marks. Defences to a passing off action:-
In a suit for passing off, apart from denying the plaintiffs allegations generally, the defendant
may be able to plead the following in defence in his case:-
The defendant may prove that the plaintiffs business is either fraudulent or forbidden by law. If
any particular business could be shown to be a fraudulent business or one forbidden by law or
one which the public policy of law was to prevent, then in those cases the proprietor cannot
claim protection of the court
25
. For example, if a trader who sells through street markets
counterfeit versions of sound recordings and DVDs bearing a famous trademark might not be

23
Showerings vs. Bulmer, (1965) RPC 307
24
AIR 2001 SC 1952
25
Newman vs. Pinto, (1887) 4 RPC 508, p.519
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allowed to rely on his sales to maintain a passing off action against another counterfeiter who has
come into the market after him
26
.
A false representation contained in the mark itself did furnish a defence at law and at equity.
Where a trademark is used exclusively in connection with a trade which was itself fraudulent, the
fraud in the trade which was itself carried on by the trademark is a defence
27
.
The mark complained of is not distinctive of the plaintiffs business and there is no likelihood of
passing off by reason of defendants use of the mark.
The plaintiff is guilty of acquiescence, latches, etc. or the defendant has prior used the mark.
The defendants mark represent his own name which he has the right to use. A man is entitled to
carry on his business in his own name so long as he does not do anything more than that to cause
confusion with the business of another, and so long he does it honestly
28
.
The field of activities of the parties are completely different
29
.
The defendant claims right of concurrent use of his mark of his mark. Honest and concurrent
user of a trademark when established will constitute a defence
30
.
The defendants use of the mark is the bona fide description of the character or quality of goods
or services. However, the defence of the name being surname or personal name, though
available to individuals, is not applicable to a corporate body
31
.
Innocent misrepresentation by the defendant also constitutes a valid defence against passing off
action. Under Section 135 (3)27, where the defendant satisfies the court that he was unaware of
the existence and nature of plaintiffs trademark, and that when he became aware he ceased to
use the trademark complained of, the Court shall not grant relief by way of damages or an
accounts of profit.

26
Leather cloth Co. Ltd. Vs. American Leather Cloth Co. Ltd., (1865) 11 ER 1435 (HL)
27
Newton Chambers & Co. ltd. Vs. Neptune Waterproof Paper Co. Ltd, (1935) 52 RPC 399; p.406
28
Rodgers vs. Rodgers, (1924) 41 RPC 277 Dunlop vs. Dunlop, (1889) 16 RPC 12
29
Manoj Plastics vs. Bhola Plastic, (1983) PTC 368
30
Kirloskar Diseal Recon Ltd. Vs. Kirloskar Proprietors Ltd, AIR 1996 Bom. 149
31
Trademarks Act, 1999
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The defendant is using the Plaintiffs mark by way of a license. Under Section 12 an honest
concurrent user would be protected. Under Section 30 (2)(c)(i), a defence is always open that the
proprietor of a registered trademark has expressly or impliedly consented to the use of the said
trademark by the defendant. This defence, if laid, would need a trial
32
.
The defendant may successfully plead and establish that the alleged misrepresentation was made
by his employee outside the scope of his authority and contrary to express instructions
33
.
Lastly, the defendant may plead that the plaintiff has abandoned his mark and that the defendant
has either already moved for rectification of register for removal of mark or proposed to do so.
Where a mark is abandoned, it may become common to trade
34
. When abandoned, the mark may
be appropriated by another person. The onus is on the defendant to prove abandonment
35
.
New Facet of Passing-Off Action:-
The present Trademarks Act, 1999 which provides protection of trademark in its diverse forms,
cases of trade dress does not strictly fall within the statutory definition of trademark under
Section 2 (1)(zb), because the business or product that enjoys goodwill independent of the brand
value enjoyed by the trademark cannot always be included within the protective sweep of the
Trademarks Act. This is because of two reasons, firstly, trade dress law is less explicitly set forth
in statute law in India. Secondly, the trade dress protection is broader than trademark protection.
One of them being that the breadth of trade dress protection is generally perceived to be broader
than the conventional protection afforded to trademarks and business name. The reason for this is
that packaging and product design cannot be registered for trademark protection, and also the
trade dress infringement claim requires the Court to focus on the plaintiffs entire selling image,
rather than the narrower single facet of trademark alone. However, in Colgate Palmolive & Co.
vs. Anchor Health and Beauty Care Pvt. Ltd.
36
, the Delhi High Court raised the bar of trademark
protection available to trade dress of goods and held that similarity of trade dress was an attribute
of passing off, and was actionable per se.

32
QRG Enterprises vs. Surendra Electricals, 2005 (30) PTC 471 (Del.)
33
Boston Marine Patents Company Ltd. Vs. Wheeler & Thomson, (1954) 71 RPC 432
34
National Starch Manufacturing Co. vs, Munns Patent Maizena and Starch Co. (1894)
35
Noor Illahi Maqbul Illahi vs. R.J Wood & Co., (1928) Lah. 487; AIR 1928 Lah. 924
36
2003 (27) PTC 478 (Del.)
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A Case Analysis on Passing-Off
Colgate Palmolive & Co. vs. Anchor Health and Beauty Care Pvt. Ltd
37
.
Facts of the case:- the Plaintiffs were selling tooth powder under the Trademark Colgate in
cans bearing distinctive get-up and colour scheme. The colour combination was purportedly
applied by the defendants on their cans for a similar range of products. Colgate alleged that
Anchor had adopted similar trade dress in terms of layout, get-up and colour combination with
the obvious intention to encash upon the plaintiffs goodwill and reputation. The Plaintiffs
averment was that the red and white trade dress had acquired the meaning as a trademark and
they claimed to earn exclusive ownership over the same.
Anchor argued that the essential feature of the label mark was the word mark and not the colour
combination or the overall get-up and since the two trademarks in question; viz., Colgate and
Anchor were entirely different, Colgate could not seek protection under the grab of colour
combination of the label. Taking the cognizance of the rival containers, the Court ruled it to be
an instance of passing-off based on the overall similarity of trade dress of the two products.
Decision:- As the Court found similarity of look and appearance of the defendants trade dress
was that with the plaintiffs trademark, the Plaintiff succeeded. The Honble High Court held that
trade dress protection is also available under the Trademark Law and that wide protection
against imitation or deceptive similarities of trade dress as like trademark is the soul for
identification of the goods as to its source or design; and as such is liable to cause confusion in
the minds of unwary customers, particularly, those who have been using the product fo a period.
The Court while granting an injunction in favour of Colgate expressed that the test in such cases
was whether there is likelihood of confusion or deception in the minds of unwary customers,
irrespective of dissimilarities in the trade name
38
.



37
Ibid
38
Ibid 500 (Para 59)
22 | P a g e


CHAPTER-3
INFRINGMENT OF TRADEMARK
Section 27(1) of the Trademarks Act, 1999 provides that a person shall be entitled to initiate
legal proceeding to prevent or recover damages for the infringement of a registered trademark.
Infringement occurs when someone else uses a trademark that is same as or deceptively similar
to registered trademark for the identical or similar goods or services as to cause confusion in the
mind of the public. This right of bringing an infringement action against the defendant has been
conferred by Section 28 of the Trademarks Act, 1999. Section 28 of the Act provides that the
registration of a trademark gives to the proprietor of a registered trademark an exclusive right to
use the trademark in relation to the goods and services in respect of which the trademark is
registered and to obtain relief in respect of infringement of the trademark.
Trademark infringement claims generally involve the issues of likelihood of confusion, deceptive
marks, identical marks and dilution of marks. Likelihood of confusion occurs in situations where
consumers are likely to be confused or mislead about marks being used by two parties. The
plaintiff must show that because of the similar marks, many consumers are likely to be confused
or mislead about the source of the products that bear these marks. Dilution is a trade mark law
concept forbidding the use of a famous trade mark in a way that would lessen its uniqueness. In
most cases, trade mark dilution involves an unauthorized use of another's trade mark on products
that do not compete with, and have little connection with, those of the trade mark owner. For
example, a famous trade mark used by one company to refer to hair care products, might be
diluted if another company began using a similar mark to refer to breakfast cereals or spark
plugs.
Law constitutes Infringement
Section 29 of the Trademarks Act, 1999 deals with infringement. In this context, the ingredients
of Section 29 (1) are as follows:-
i. The plaintiffs mark is registered.
23 | P a g e


ii. The defendants mark is identical with, or deceptively similar to plaintiffs registered
mark;
iii. The defendant has taken any essential feature of the mark or has taken the whole of the
mark and then made a few additions and alterations.
iv. The defendants use of the mark is in course of the trade in respect of goods/services
covered by the registered trademark.
v. The use of the infringing mark must be printed or usual representation of the marking
advertisements, invoices or bills. Any oral use of the trademark is not infringement.
vi. The use by the defendant is in such manner as to render the use of the mark likely to be
taken as being used as a trademark.
vii. The defendants use of the mark is not by way of permitted user and accordingly
unauthorised infringing use.
While the above is the general proposition of law as per Section 29 (1), the various
circumstances in which the trademark is infringed are enumerated in sub-sections 29(2) to (9) of
Section 29.
Infringement- various factors:-
In Wockhardt Ltd. Vs. Aristo Pharmaceuticals Ltd.35, Madras High Court, after holding the
defendants mark SPASMO-FLEXON deceptively and phonetically similar to SPASMO-
PROXYVON, summarised the law as follows:
i. The registered proprietor of a trademark has exclusive right to the use of the trademark in
relation to the goods and services in respect of which the trademark is registered and to
obtain relief in respect of infringement of the trademark in manner provided by the Act.
ii. Whether it is deceptively or has become publici juris is a question of fact to be
established.
iii. When a number of marks, all have a common element, may it be prefix, suffix or root,
i.e. essential part or the core of the mark, they come to be associated in the public mind as
an indication of the same source, which misleads or causes deception or confusion.
24 | P a g e


iv. It is the common element that has to be identified in an impugned mark and the registered
trademark and if such common element is highly distinctive and is not just a description
or a commonly used word, the likelihood of deception or confusion would be very much
there, despite the fact that it might differ in similarity in certain letters.
v. The nature of the commodity, the class of purchasers, the mode of purchase and other
surrounding circumstances must also be taken into consideration.
vi. Marks must be looked at from the first impression of a person of average intelligence and
imperfect recollection.
vii. Marks must be compared as a whole, microscopic examination being impermissible.
viii. The broad and salient feature must be considered, for which the marks must not be placed
side by side to find out the differences in design.
ix. Overall similarity is the touchstone.
x. It is not the colour of the container or the difference of the product, but it is the statutory
right to the word that has to weigh.
xi. The plaintiff need not in general show prima facie case that is required to be shown must
be something more than a case that will avoid the action being struck out as frivolous or
vexatious and even if the chance of success at the trial are only twenty percent, the
statutory protection is absolutely necessary by way of an injunction in order to prevent
confusion or deception arising from similarity of marks.
Following are the instances where the acts constituted infringement of trademark:-
a. Taking substantial feature of the mark:- a mark is infringed by another trader, if, even
using the whole of it upon or in connection with his goods, he uses one or more of the
essential features.
b. Additions:- addition of extraneous matter, inconspicuous additions is infringement. If a
person incorporates whole or part of a registered Trademark of another, the addition of
other or matter would not save him from the charge of infringement.
c. When a mark is copied:- if the defendant absolutely copied the mark and made a
facsimile representation of it, no further evidence is required. When the similarities are so
close as to make it impossible to suppose that such marks were devised independently of
25 | P a g e


each other, in absence of evidence of common origin, the conclusion that one party
copied the mark of another.
d. Marks likely to cause confusion: Likelihood of confusion occurs in situations where
consumers are likely to be confused or mislead about marks being used by two parties.
The plaintiff must show that because of the similar marks, many consumers are likely to
be confused or mislead about the source of the products that bear these marks. Where the
visual, aural and conceptual similarities is caused by the defendants trademark
e. Which causes confusion in the minds of the public as to its origin, then the mark is held
to be an infringing mark. Furthermore, if the association between the marks causes the
public to wrongly believe that the respective goods comes from the same or economically
linked undertakings, there is a likelihood of confusion
39
.Use of reconditioned or second
articles:- the use of plaintiffs mark on reconditioned goods may constitute infringement
even if it is clarified that goods are not original but reconditioned
40
.
f. Printing of labels:- unauthorised printing of labels of the plaintiff will constitute
infringement. Moreover, if a copyright subsists in labels, it will constitute infringement of
copyright as well.
g. Goods manufactured by third party would constitute infringement:- when the owner
of a mark gets the goods manufactured by a third party under a contract, solely for the
mark, sale of the goods bearing the mark by such a manufacturer to other person would
constitute infringement.
h. Marks used along with others mark:- use of the plaintiffs mark along with the
defendants name even if prominently displayed constitutes infringement
41
.
i. Similar marks in medicinal products: when the goods or products involved are medicinal
products, confusion of sources or drugs or medicinal preparation caused by similar marks
of the defendant would constitute infringement, although similarity in the marks would
have been very less.



39
Compass Publishing BV vs. Compass Logistics Ltd., (2004) RPC 41
40
Rolls-Royce vs. Dodd, 1981 FSR 517
41
Levi vs. Shah (1985) RPC 371
26 | P a g e


CHAPTER-4
PASSING OFF AND INFRINGEMENT
The plaintiff in an infringement suit may be either: The proprietor of the registered
trademark or his legal successor.
A registered user of a trademark subject to a prior notice to the registered proprietor and
consequent failure of the registered proprietor to take any action against the infringer.
An applicant for registration of a trademark. He can file an infringement suit to protect
his right to continue with the suit which will sustain only if his trademark is registered
before hearing the suit.
Legal heirs of the deceased proprietor of a trademark.
Any one of the joint proprietors of a trademark.
A foreign proprietor of a trademark registered in India when Infringement occurs in
India.
Person who can be sued.
a) The infringer who directly by his action causes infringement or who uses or contemplates
or threatens to use a trademark infringing plaintiffs right.
b) The master responsible for his servants act of infringement. For example, a worker who
is engaged in the business of making false labels is a servant of the master who orders the
making of such labels. It is the master in such a case who is to be sued.
c) The agents of an infringer.
d) Directors and promoters of a limited company cannot be joined as co-defendants unless
they have personally committed or directed infringing acts. Jurisdiction:
Suit for infringement or for passing off is to be filed in the court not inferior to a District Court
having jurisdiction to try the suit
42
.District Court having jurisdiction includes a District Court
within the local limits of whose jurisdiction, at the time of the institution of the suit or other

42
Section 134 of the Trademarks Act, 1999
27 | P a g e


proceedings, the person instituting the suit or other proceedings, or where there are more than
one person, any of them who:-
a. Actually and voluntarily resides; or
b. Carries on business; or
c. works for gain;
can bring in an action against the defendant. Period of Limitation:
Under the Limitation Act, 1963, the period of limitation for filing a suit for infringement of a
trademark is three years from the date of infringement. Where the infringement is a continuing
one, a new course of action arises every time an infringement occurs. For example, a continued
sale of infringing article would give rise to a fresh cause of action.
Issues in Infringement suits:
The issues that arise in an infringement action are the following:-
A. Whether the plaintiff is entitled to file a suit; i.e. whether he is proprietor of a registered
trademark or a registered.
B. Whether the use or proposed use of the mark by the defendant is an infringement of the
registered trademark.
C. Whether the defendant has succeeded in establishing one or more of the defences set up
by him.
D. If the plaintiffs succeeds in the suit, what reliefs he is entitled to
E. Whether the plaintiff is entitled to any interlocutory relief
F. Whether there has been actual instances of deception and confusion amongst the public.
Evidence in Infringement Actions:
The fact of registration of the plaintiffs mark is to be proved by production of a copy of the
entry on the register certified by Registrar and sealed with the Trademark Registry
43
. The
certified copy will contain all the entries in the register relating to the mark including the

43
Section 137 of the Trademarks Act, 1999
28 | P a g e


conditions, if any, subject to which a mark is registered. In all legal proceedings relating to a
registered trademark, the original registration of a trademark and all subsequent assignments and
transmissions will be prima facie evidence of the validity. The plaintiff must establish that the
use of the mark complained of comes within the scope of definition of infringement. Where the
defendant has absolutely copied the mark and made a facsimile representation of it, no further
evidence is required. Where the mark used by the defendant is not identical with the registered
trademark, the court has to determine the two marks are deceptively similar. Opinion evidence is
not admissible, but statement of witnesses to the effect that they themselves would be deceived
are admissible. Evidence as what constitutes the essential feature of the mark is admissible
44
.
Acts Not Constituting Infringement (Section 30):-
Following acts do not constitute infringement of the right to the use of a registered trademark:
I. Where the plaintiff has no title to sue;
II. Where the registration of the trademark is not valid and liable to be expunged;
III. When the use of the mark by the defendant is not an infringement under Section 29;
IV. When a person uses a trademark in accordance with honest practices in industrial and
commercial matters that do not take unfair advantage.
V. When a person uses a trade mark in relation to goods or services indicating character,
quality or geographical origin
VI. When a person uses a trade mark in relation to services to which the proprietor has
already applied the mark or registered user the object of the use is to indicate that the
proprietor or the registered user has performed the services.
VII. When a person uses a trademark, which is subject to any conditions or limitations,
beyond the scope of such conditions or limitations will not constitute infringement.
VIII. When a person uses a mark in relation to goods to which the mark has been lawfully
applied, or where the registered proprietor has consented to the use of the mark. This
applies to cases where goods are purchased in bulk and sold in retail applying the mark.

44
Prem Nath vs. Registrar, AIR 1972 Cal 261
29 | P a g e


IX. When a person uses a mark in relation to parts of a product or accessories to the goods in
respect of which the mark is registered if the use is reasonably necessary to indicate that
the goods so adapted.
X. When a person uses a mark or a similar mark in the exercise of a right conferred by
independent registration.
XI. When a person assigns a trademark to another, this will not affect the right of that person
to sell or deal in the goods bearing that mark
Case Analysis on Infringement:
1) Castrol Limited Vs P.K. Sharma
45

Facts of the case: Plaintiff is the registered owner of the trade marks Castrol, Castrol Gtx And
Castrol Gtx 2 in respect of oils for heating, lighting and lubricating. During the month of
December 1994, plaintiffs came to know that the defendant was carrying on business of selling
multigrade engine oil and lubricants under the trade mark 'Castrol Gtx & Castrol Crb' IN
IDENTICAL containers as used by the plaintiffs. Plaintiff filed a suit for perpetual injunction.
Held: Honble Delhi High Court while passing an ex parte decree held that the user of the said
trade marks by the defendants, who have no right whatsoever to use the same is clearly dishonest
and is an attempt of infringement. The prayer of the plaintiff is accepted and they
2) Ranbaxy Laboratories Ltd. Vs. Dua Pharmaceuticals Ltd
46
.
Facts of the Case:-the plaintiff company manufactured drugs under the trade name "Calmpose".
The defendant company subsequently floated its similar product under the trademark
"Calmprose".
Held: The Honble Delhi High Court held that the two trademarks having appeared phonetically
and visually similar and the dimension of the two strips being practically the same including the
type of packing, the colour scheme and manner of writing, it is a clear case of infringement of
trade mark and the ad interim injunction granted in favour of the plaintiff.

45
2000 (56) DRJ 704
46
AIR 1989 Delhi 44
30 | P a g e


What the Plaint should contain?
There is no special form of pleading prescribed for an action for infringement. The pleadings
must contain a clear and conscience statement of all material facts relied upon by the plaintiff,
but not evidence. It should specifically allege what the defendant has infringed or threatened are
restrained by a decree of injunction from selling, advertising directly or indirectly in multigrade
engine oil with the aforesaid trade marks in containers which are similar to the containers being
used by the plaintiffs to infringe in case of registered mark. In case of passing-off, the plaintiff
must specifically allege the wrong that has been done to his goodwill or business and also the act
of misrepresentation committed by the defendant. Particulars of the acts committed by the
defendant which form the basis of allegation must be given. Where the fraud is desired to be
raised, it must be clearly pleaded, and particulars of fraud must be stated. Where both the
infringement and passing off are combined in the suit, the plaintiff should state that by virtue of
such user the mark has become distinctive of his goods.
Reliefs in suit for Passing-Off and Infringement:
Under Section 135 of the Trademarks Act. 1999, the reliefs which a Court may grant for passing
off and for infringement includes the following:-
Accounts of Profit: Account of profits are the actual profits which the defendant has made by
infringing the legal rights of the plaintiff. Sub-section (1) of Section 135 provides for grant of
relief which includes, at the option of the plaintiff, either damages or an account of profit. In
taking account of profits, the damage the plaintiff have suffered is totally immaterial. The object
of account of profit is to give to the plaintiff the actual profits the defendant has made and of
which it is established that the profits were improperly made.45 Section 135 (3) expressly enacts
that where the court is satisfied that it is a case of innocent infringement, it shall grant only
nominal damages. Further, in such situation, the Court shall not grant an account of profits.
Damages: Damages are the compensation awarded to the Plaintiff by the defendant for
the legal injury caused by him to the plaintiff. Damages are the notional compensation
paid to the plaintiff irrespective of the actual amount of loss suffered by the plaintiff.
31 | P a g e


Following are the matters which are generally taken into account in awarding damages include
the following:
Any loss of trade actually suffered by the plaintiff directly from the acts complained of,
or properly attributable to injury to the plaintiffs reputation, business, goodwill and trade
and business connection caused by the acts complained of.
Damages may be awarded even though there is no deception.
Where the defendants goods are similar in quality to the plaintiffs goods, the
defendants wrongful act may cause injury to the plaintiffs business reputation.
In Yahoo Inc. vs. Sanjay V. Shah
47
, the Delhi High Court held that he defendants passed off their
goods as if the goods were manufactured by the plaintiff using the deceptively similar Yahoo.
The Honble High Court not only granted permanent injunction restraining the defendants from
the use of the trademark Yahoo, but also decreed for damages amounting Rs. 5,05,000/- in
favour of the plaintiff.
Injunction: Injunction is one of the reliefs which an aggrieved person may obtain in any
suit for infringement of a registered trademark or for passing off of the registered
trademark or unregistered trademark. The remedy of injunction is an effective remedy in
preventing the infringement of registered trademark or unregistered trademark. Section
135 of the Trademarks Act, 1999 grants the relief of injunction. While granting an
injunction, the Court should always rely on the fact that whether the balance of
convenience lies with the plaintiff and whether an irreparable damage or injury would
occur to the plaintiff if injunction is not provided for against the defendant.
Section 135 (2) further provides for ex parte injunction or any interlocutory order for any of the
following matters, namely:-
For discovery of documents;
Preserving of infringing goods, documents or other evidence which are related to the
subject-matter of the suit;

47
46 2006 (32) PTC 157 (Del.)
32 | P a g e


Restraining the defendant of or dealing with his assets in a manner which may adversely
affect plaintiffs ability to recover damages, costs or other pecuniary remedies which may
be finally awarded to the plaintiff. In Prabhu Shankar Aggarwal vs. Anand Kumar
Deepak Kumar
48
, the Delhi High Court held as follows:- Whenever a court considers it
necessary in a particular case to pass an order of injunction without notice to the other
party, it must accord the reason for doing so, and also how the object of granting
injunction itself would be defeated if ex parte order is not passed, due to delay. An order
passed without such reasons is liable to be vacated.
Injunction may be of following types:-
Anton Piller Order: these are ex parte orders to inspect defendants premises. A Court
may grant such an order to the plaintiff where there is a possibility of the defendant
destroying or disposing of the incriminating material.
Mareva Injunction: in such an order, the Court has the power to freeze defendants assets
where there exists a probability of the assets being dissipated or cancelled so as to make
judgement against him worthless or un-enforceable.
Interlocutory Injunction: is the most commonly sought and most often granted form of
injunction. It serves to take action against the defendant on the basis of past infringement.
The interlocutory injunction is an order restraining the defendant from continuance of the
acts which amount to infringement. It serves the purpose of of preventing further
infringement.
Perpetual Injunction: it is an order restraining the defendant totally, for all times to come,
from doing any act which infringes the right of the proprietor of the trademark. Perpetual
injunction is generally granted when the suit is finally decided.
Difference between Passing-Off and Infringement
In the case Durga Dutt Sharma V. N.P. Laboratories
49
, Honble Supreme Court laid the
difference between the two infringement and passing off. It was held that "An action for
passing off is a Common law remedy, being in substance an action for deceit, that is, a passing

48
2002 (24) PTC 292 (Del.)
49
AIR 1965 SC 980
33 | P a g e


off by a person of his own goods as those of another. But that is not the gist of an action of
infringement. 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 use the trade
mark."
Conceptual Difference:-
Passing off action is based on common law principle that nobody has any right to represent
his goods as somebody else. Such action is recognised both in respect of unregistered as well
as registered trademark. An action for infringement on the other hand is based on the right
acquired by registration and is possible only in respect of registered trademarks.
An action for infringement is a statutory right. It is dependent upon the validity of the
registration and subject to other restriction laid down in the Act
50
. On the other hand, in a
passing off action registration of trademark is not relevant. It is based on property in goodwill
acquired by use of the mark.
The proprietor of an unregistered trademark whose mark is unauthorisedly used by another
cannot sue for infringement of a trademark. His only remedy lies in bringing a passing off
action.
In an infringement action, the plaintiff is not required to prove the reputation of his mark,
which is not the case in case of passing off. In passing off action, the plaintiff has to prove
that his mark has acquired reputation in relation to any goods delt with by him.
An infringement action can result in the restraining of defendant from using the registered
trademark whereas in a passing off action the defendant is restrained from selling the article
without clearly distinguishing from the goods of the plaintiff.
In an action for infringement, the use of trademark of the plaintiff, in relation to goods is a
sine qua non for the action. In contradiction, in a passing off action, it is deceit as practiced
on the public and not the use of the trademark that is to be shown.

50
Trademarks Act, 1999
34 | P a g e


Procedural Difference:-
a. In an infringement action, if there was colourable imitation, the fact that the get up
was different was not relevant in an infringement action though it might have had
relevance in a passing off action
51
.
b. In passing off action identity or similarity of marks is not sufficient, there must also
be likelihood of confusion. But in case of infringement if the marks are identical or
similar no further proof is required.
c. An infringement action is based on the violation of the proprietary right and
deception can be one of the ways whereas in a passing off action deception or
likelihood of deception is the only thing to be established.
d. An infringement action does not require the use of the mark. The proprietor could
have never used the mark in the course of the business and still bring an action for
infringement whereas in a passing off action the plaintiff must establish that the mark
by usage has become distinctive of his goods i.e. the goods are identified by the mark.
e. In an action for infringement, the plaintiff must make out that the use of 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 plaintiffs rights are violated. Whereas, in case of passing off the
defendant may escape liability if he can show that the added matter is sufficient to
distinguish his goods from the goods of the plaintiff.
f. In case of a passing off action, the defendant's goods need not be same as that of the
plaintiff, they may be allied or even different. In case of an action for infringement,
the defendant's use of the offending mark may be in respect of the goods for which
the mark is registered or similar goods.
Combined action for infringement and passing off;-Where a mark is registered, the plaintiff
may combine his action for infringement along with an action for passing off, where the plaintiff
has used his mark and can establish goodwill and reputation in connection with his business.
This provides for a better protection of trademark.

51
Saville Perfumery Ltd. Vs. Jump Perfect Ltd. (1941) 58 RPC 147 (161) upheld in M/S S.M. Dyechem Ltd vs. M/S
Cadbury (India) Ltd., AIR 2000 SC 2114
35 | P a g e







CONCLUSION:-
Thus, from the above discussion it can be said that protection of trademark is important not only
from the business point of view but also for the protection of consumer from fraud and
imposition. However, it is beneficial if combined action for infringement and passing off is
brought in one suit as incorporating a plea of infringement, if the mark gets registered can always
amend the plaint. But in an action for infringement alone the plaintiff may not be allowed to
include a fresh cause of passing off in order to save the action. Since the scope of passing off
action is wider than an infringement action, if an action fails, there is a chance of other
succeeding. As stated in the preamble of the Trademarks Act, 1999, the law provides for a better
protection of trademarks, the fact that the trademark law provides protection to trademarks has
come out to be a reality. The present Act expressly recognizes the common law remedy and thus
saves both the registered and unregistered trademarks from being misused.






36 | P a g e


BIBLIOGRAPHY

BOOK REFRENCE:
Kailasam and Vendaramans : the Law of Trademarks and Geographical Indications
P. Narayanan : Law of Trademarks and Passing off
D.P. Mittal : Trade Marks Passing off and Geographical Indications of Goods
Laws relating to Copyrights, Patents, Trade Marks and GATT
Dr. B.L.Wadehra : Law Relating to Intellectual Property
V K Ahuja : Law Relating to Intellectual Property Rights : Intellectual Property Rights in
India
Meena Paul : Intellectual Property Laws


WEBSITE REFRRED:

www.manupatra.com
www.indiankanoon.org
www.vakilno1.com
www.delhihighcourt.nic.in