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T R A D E M A R K S

I. INTRODUCTION:
1. The concept of trade marks can be traced back to ancient times (Harappan Civilisation) and the development
of a law regulating trade marks can be traced to the onset of the industrial revolution that enabled large scale
production and distribution of goods.
2. The emergence of a competitive market economy led manufacturers to identify their products with certain
symbols, marks or devices so as to distinguish their goods from similar goods of others.
3. The manufacturers also began advertising their goods by using these very marks.
4. Therefore, the trade marks acquired goodwill and reputation among consumers of goods.
5. This also led to temptation among other competitors that began to copy these marks and adopt deceptively
similar trade marks to reap profits by trading on the reputation of another mark.
6. This led to the development of Trademark Law around the globe.
7. Even today the grant of a TM is an indicator of exclusivity in trade under that mark and this right can not be
transferred.
8. The first enactment in respect of Trade Mark was Indian Merchandise Marks Act, 1889. whereby
registration and protection of trade marks were done was the Trade Marks Act, 1940, in India. Before this the
law prevalent was based on Common Law that was the same as the law applied in England till the passage of
their legislation dealing with TradeMarks.
9. Initially the law was only against False Trade Mark which evolved into Deceptive Trade Mark that evolved
?
into the present scenario that even if the goods are not registered for the class, they’ll get protection. ( )
10. The main functions of a Trade Mark are:
1. Identification (Of the goods of one trader and distinguish them from goods sold by others.)
2. Source (All goods bearing a particular mark come from one single source.)
3. Quality (All goods bearing a particular trade mark are of an equal level of quality.)
4. Advertising (Acts as a prime instrument for advertising and selling goods.)
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II. OBJECTIVES OF TRADE MARK LAW:

1. It serves two purposes:

1. Protects the public from confusion and deception by identifying the source or origin of the products. (To
the Public at large)
2. Protects the Trade Mark owners trade and business and goodwill. (To the business men.)


2. In Cadbury India Limited and Others v. Neeraj Food Products; 


It was observed that: 

“The object and spirit of the law of Trade Mark is to protect the trader and the consumer against dishonest
adoption of one’s trade mark by another with the intention of capitalising on their reputation and goodwill.”

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III. DEFINITIONS:
1. SECTION 2 (ZB) - “TRADE MARK”
1. Means a mark capable of being represented graphically
and which is capable of distinguishing the goods or services
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 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
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of the identity of that person, and includes a certification trade mark or collective mark.


2. A Trade Mark therefore may include any word, name, symbol, configuration, device, shape of goods,
packaging, combination of colours, etc. that one uses to identify goods and distinguish good from others.
3. Under the Act only a TM can be registered i.e. the subject matter of registration must be a TM as defined in
the Act. But the Act does not permit every mark to be registered. 


4. Therefore there are three essentials of a Trade Mark:

1. It should be a mark.
2. It should be capable of being represented graphically.
3. It should be capable of distinguishing the goods and services of one from another.
5. There are two aspects attached to the definition:
1. Graphical Representation.
2. Capable of ‘distinguishing’ goods and services. 


6. GRAPHICAL REPRESENTATION:
1. This means that the trade mark for goods or services should be capable of representation in paper form.
2. Under TRIPS, visual representation for TM i.e.e smell marks or other non-conventional marks are not
included.
3. But under Section 2(zb) it is. Therefore, it includes smell marks, sounds, pictures, three dimensional
marks, position marks, hologram marks, etc.
4. Therefore it includes both conventional and non-conventional marks. 


7.CAPABLE OF DISTINGUISHING GOODS AND SERIVCES: (DISTINCTIVENESS)

1. This gives rise to the ‘Distinctiveness’ Test.
2. That means that each mark has to be distinctive in itself to be TM Protectable.
3. Therefore there may be some inherent qualities or distinguishing characteristics in the mark itself that
makes it so distinctive or capable of distinguishing the goods.
4. This is of two types:
1. INHERENT DISTINCTIVENESS (Eg: Apple)
2. ACQUIRED DISTINCTIVENESS - Not initially distinctive but due to continuous usage, the people
have associated and recognised such marks with the entity. (Eg: Nilgiris (Company))
8. “Certification Trade Mark” = A mark capable of distinguishing the goods or services certified by the proprietor
regarding mode of manufacture of goods, 

for purpose of services, quality or accuracy or other characteristics of goods.
9. “Collective Mark” is a Trade Mark” that distinguishes the goods or services or members of association, 

which is the proprietor of the mark from those of others.
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2. SECTION 2 (M) - MARKS:
1. Includes a 1. device, 2. brand, 3. heading, 4. label, 5. ticket, 6. name, 7. signature, 8. word, 9. letter, 10.
numeral, 11. shape of goods, 12. packaging or 13. combination of colours or 14. any combination thereof.


2. This definition is an inclusive definition and may include other things which fall within the general and plain
meaning of the definition:
1. Device = A pictorial representation. (Windows - 4 windows logo.)
2. Brand = Those symbols that are branded on goods. (TATA(Salt,Automobiles), Wipro)
3. Heading = Dictionary meaning of it includes an inscription. But the meaning of the word in reference to
TM is not very clear. But it can be understood as the tagline for a TM. (Wipro = Applied Thought, Nike =
Just do it.)
4. Label = A composite mark containing various features including devices and words usually printed on
paper that can be attached to the goods themselves. (Chivas Regal - Scotch Whiskey)
5. Ticket = Something stitched or tagged to the goods and includes an abbreviation of a name.
6. Name = Name of individual, firm or company. (Birla, Tata, Godrej.)
7. Signature = Signature of an individual (Marilyn Monroe, Sachin Tendulkar)
8. Word = Includes, word, letter and numeral and given their plain meaning. (LG, L&T, 555)
9. Shape of Goods = Not a mark in the 1958 Act but 1999 recognised it. (Toblerone)
10. Packaging = Case, Box, Container, Covering, Folder, etc under Section 2(q). (Mango Bite, Calcium
Sandoz)
11. Combination of Colours = Inserted by 1999 Act, Unilateral Colours are not allowed. (Single Colours)
(Castrol, Pepsi, BMW)
12. Any combination of different marks = Any combination of two or more marks is also a mark. 

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3. INHERENT DISTINCTIVENESS = Goes by a spectrum,

1. WHAT ARE THESE LEVELS?

1. For the TOP Level - TM which are fanciful without any dictionary meaning. (Here distinctiveness is
PRESUMED.)
2. For the Second Level - Suggestive marks are for identifying the object they are associated with. (Eg.:
Tally)
3. For the Third Level - Clear Description (Eg.: Kellogg's, Holiday Inn.)
4. For the Fourth Level - Unpredictable as they denote a class of goods.
2. PROTECTION FOR EACH LEVEL:
1. FIRST Level = Automatic Protection - Presumed Distinctiveness.
2. SECOND Level = Generally given protection.
3. THIRD Level = Not given until it satisfied the acquired distinctiveness.
4. FOURTH Level = Not Protectable. (Statutory Recognition)


4. INFRINGMENT OF MARKS:
1. Registered TM = Infringement Action lies.
2. Unregistered TM = Passing Off Action lies.
3. Registration itself does not create a trade mark.
4. A trade mark exists independently of the registration.
5. Registration does not confer any new right or any greater right than what has already exited in the
common law and at equity without registration.
6. Registration merely affords further protection under the Act and common law rights are left wholly
unaffected. 


5.WELL KNOWN TM:

1. Within the TM regime such distinctiveness has been acquired by a TM that is well known in the relevant
market.
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3. SECTION 2(ZG) - “WELL KNOWN TRADE MARK”:
1. In relation to any goods or service,
means a mark which has becomes 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.


2. In India = Well Known = Famous TM.

3. In USA = Well Known = Different from Famous TM, it is the TM that has transcended all transnational
boundaries to become famous.
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4. It has been incorporated in the 1999 Act for the propose of protecting not only a trade mark which has become
identified with a particular type of goods and serves but for the protection of the same mark from being used n
relation to other goods and services. 

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4. SECTION 2(E) - “CERTIFICATION TRADE MARK”:
1. Means a mark capable of distinguishing the goods or service
in connection with which it is used
in the course of trade 

which are certified by the proprietor of the mark
in respect of origin, material, mode of manufacture of goods or performance of services, quality accuracy or
other characteristics from goods
not so certified and registrable as such under Chapter IX
in respect of those goods or service in the name,
as proprietor of the certification trade mark , of that person.


This means that the TM is not used by a proprietor in course of business but by registered users form the
2.
proprietor.
3. In respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or
other characteristics.
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5. SECTION 2(G) - “COLLECTIVE TRADE MARK”:
1. Means a trade mark distinguishing the goods or services
of members of an association of persons (not being a partnership within the meaning of the Indian Partnership
Act, 1932 (9 of 1932)
which is the proprietor of the mark from those of others.


2. Eg: AMUL.
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IV. N O N - C O N V E N T I O N A L T R A D E M A R K S : 


1. They are also called Non - Traditional or Modern Marks.

2. They are protectable in few countries, and India is a part of it.
3. These marks includes three dimensional marks, like the shape of goods, packaging, colour, per se, sound marks,
motion marks, and taste marks.
4. Graphically representation of some of the modern marks is a serious problem.

1. SMELL MARKS:
1. These are also called Olfactory Marks.
2. Smell is said to be one of the most potent types of human memory.
3. The manufacturers add pleasant scent to their products in these types of marks.
4. The representation of such a mark is difficult.
5. To register such a mark the representation much be PRECISE.
6. The smell sought to be registered should be distinctively represented and should not be one that
emanates from the product. (Eg: Application by Chanel to register its No.5 Fragrance in U.K. was
unsuccessful because the perfume was the very essence of the product.)
7. Further, to obtain registration the applicants must be able to visually represent the product’s scent and
must show it is distinctive from the product itself.
8. Writing down the chemical formula to get registration for a smell can be difficult as it is deemed to
represent the substance and not the smell of that substance.
9. Therefore the WRITTEN DESCRIPTION must be so precise that the particular smell would not be
confused with any other.
10. The test followed internationally is the SEICKMANN TEST laid down in, by the European Court of
Justice.


1. RALF SIECKMANN v. DEUTSCHES PATENT UND MARKENAMT (2002)

1. FACTS:
1. Here the TM was sought for protection of the olfactory mark deposited with the Office, for
the pure chemical substance of Methyl Cinnamate whose structural formula was also given.
2. An odour sample was also submitted.
3. The scent of was also given and the description stated that the scent was, 

“Balsamically fruity with a slight hint of cinnamon.”
4. This application was rejected.
5. On appeal, the ECOJ, framed the following question, that, “Whether a graphical
representation requirement was satisfied with the chemical formula, by description (would
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be published), means of deposit, or combination of the others?”


2. HELD:
1. The court disregarded the chemical formula as an adequate representation as few people
would recognise the smell in such a formula.
2. Therefore, such a formula is not sufficiently intelligible. 

A chemical formula doers not represent there odour of the substance, but represents the
substance itself therefore it is not clear nor is it specific. 

Therefore it can not be counted as a representation.
3. The deposit of the odour sample too, did not constitute a graphical representation and

an odour sample is not stable or durable.
4. Therefore the court finally held that for an Olfactory Mark the requirements of graphical
representation would not be satisfied by the chemical formula, by a description of written
words or deposit of an odour sample or combination of elements.
5. Therefore for an Olfactory Mark, the mark needs too be clear, precise, self contained, easily
accessible, intelligible, durable and objective.
6. Therefore the ECOJ rejected the application. 


2. IN RE CELIA CLARKE (1990) (UNITED STATES SUPREME COURT)

1. FACTS:
1. The application wad for a high impact, fresh, floral fragrance, reminiscent of PLUMERIA
BLOSSOMS for sewing thread and embroidery yarn.
2. The Appellate Board found that the applicant had demonstrated that the scented fragrance
does function as a TM for there thread and yarn and that the applicant was the only person
selling threads with a fragrance.
3. The court found reason in the fact that the fragrance was not an inherent attribute or natural
characteristic of the goods but was a feature supplied by the applicant and the consumers
had recognised the goods with the smell.
4. Therefore the court upheld the registration of the Olfactory Mark.

3.BISENSOR TEST - DR. RICHARD AXEL (Nobel Laureate -2004)

1. Presently, an Odour Receptor Test (Called Biosensor Test) has been developing based on the
patterns of the receptors activated in the brain when the person smells something.
2. This odour pattern and receptor test would be an alternate to the graphical representation which
is not …
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2. SOUND MARKS:
1. It is a non-conventional mark.
2. It can be registered as a TM provided it is capable of being represented graphically and is capable of
distinguishing.
3. Here, alternative methods have emerged for their visual representation: depictions by oscillogram,
spectrum, spectrogram, sonogram, etc.
4. The first Sound Mark ever registered was the Roar of the Lion of MGM.
5. In India the first sound mark was registered in 2009 by Yahoo! Inc. for its 4 note Yahoo! Yodel.
6. In, SHEILD MARK BV v. JOOST KIST h.o.d.n MEMEX,
1. The court found that the requirement of graphical representation is not satisfied in the case of a sound
sign 

when it is represented by means of a description in written language 

such as indication that the sign consists of notes going to make up a 

musical work or the indication that it is the cry of an animal, or by means of musical notes, without
more.
2. The court held that a sign cannot be registered as a sound mark if the applicant has 

failed to state in the application that the sign in question must be understood as a sound sign.
3. Further the ECOJ held that the Sound Mark can be easily represented graphically.
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3. COLOUR MARKS:
1. The Indian Registry clearly follows the test called the ‘COLOUR DEPLETION TEST’.
2. The Colour Depletion Theory says that there are limited number of colours and a monopoly over one
colour would soon deplete all the colours currently available in stock and would thus become anti-
competitive.
3. This although - applies only to the 7 Primary Colours. (VIBGYOR)
4. Therefore, Combination of colours are included within the definition of TM in the TM act of India.
5. Colour or Combination of Colours which are distinctive is capable of being registered as a TM. (Section
2(zb))
6. The colour should be distinctive and capable of distinguishing goods as the badge of origin.
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7. A sign consisting of a colour as such may have an acquired distinctive character but to qualify for
registration it must be clear, precise, self - contained, easily accessible, intelligible, durable and
objective.
8. In, SOCIETE DES PRODUITS NESTLE SA v. CADBURY UK LTD.
1. Here, the application for registration was a rectangle which is a purple block which when reproduced
in colour applied to the whole surface as the predominant colour of the packaging of the goods.
2. The application was not for the colour purple per se. but the application contained the colour swatch
as a sample, the Pantone shade and the verbal description.
3. Nestle claimed that the colour purple did not constitute a sign and was not capable of graphical
representation and therefore not registrable.
4. The Court of Appeal held that the description does not constitute a sign that is graphically represented
and the court struck down the TM for the time being, but the dispute has not been resolved as yet.

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4. MOTION MARKS:
1. Multimedia production has opened the way for even more non traditional marks. Holograms, gestures,
and motion, moving marks.
2. They are basically a moving image.
3. They are different from Holograms.
4. Holograms are one standard things with different views from different angles.
5. They are allowed registration provided they are distinct and non-functional and capable of identifying
a source.
6. Further, their registration generally requires the use of a sequence of pictures or drawings to depict how
the TM functions.
7. Motion Marks are the most common of the Multimedia Marks.
8. Article 15(1) of TRIPS mentions both Holograms and Motion Marks as registrable.
9. In EU = If a hologram shows more than one image from different angles it would create consumer
confusion.
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5. TOUCH MARKS:
1. On October 17th, 2006 in the U.S., American Wholesale Wine & Spirits, Inc. successfully obtained a
TM for “a sensory, touch mark” alone and used with its Khvanchkara wine. The registration’s
description of the mark is that of “a velvet textured covering on the surface of a bottle of wine.”
2. The Touch Mark is also qualified by functionality approach. That the mark should not be functional.
1. This means that the mark should not be a function of the product.
2. Eg.: The Philips 3 Headed Razor was not granted a TM as the shape of the razor was to serve the
function of the razor of smooth shaving.
3. The touch mark nonetheless to get registered must get/fulfil the following conditions:
1. Distinctiveness.
2. Non - Functionality.
3. Source of Identification to the consumers.

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V. C O N D I T I O N S F O R R E G I S T R A T I O N O F T R A D E M A R K S : 


1. The Act lays down absolute grounds and relative grounds for the refusal of registration of TM under the Act. These
are given in Section 9 and Section 11 of the Act.
2. Barring few exceptions the absolute grounds for refusal of registration refuse the registration absolutely.
3. Whereas relative grounds for refusal are applicable only when there already exists a trade mark, in comparison to
which the new trade mark is not registered.
4. SECTION 9 provides ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION

1. Section 9 aims to stop registration of any TM which does not perform its essential function as a TM which is
to distinguish the goods or services of one undertaking, without any possibility of confusion from those of
someone else.

2. It provides:
1. (1) The trade marks -
(a) Which are devoid of any distinctive character, that is to say, not capable of distinguishing the good
or services of one person from those of another person.

(b) Which consist exclusively of marks or indications which may serve in trade to designate the kind,
quality, quantity, intended purpose, values, geographical origin or the time of production of the goods
or rendering of the service or other characteristics of the goods or service.
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(c) 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.




Shall not be registered :

However a trade mark shall not be refused registration if before the date of application for registration it has
acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

(2) A mark shall not be registered as a trade mark if-




(a) it is of such nature as to deceive the public or cause confusion.

(b) It contains or comprises of any matter likely to hurt the religious susceptibilities of any class of section of the
citizens of India.

(c) It comprises or contains scandalous or obscene matter,

(d) Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

(3) A mark shall not be registered as a trade mark if it consists exclusively of-
(a) the shape of goods which results from the nature of the goods themselves. Or
(b) the shape of good which is necessary to obtain a technical result, or
(c) the shape which gives substantial value of the goods.


Explanation.- For the purposes of this section, the nature of goods or services in relation to which the trade mark is
used to proposed to be used shall not be a ground for refusal of registration.


3. DISTINCTIVENESS - Section 9(1)(a)

1. A TM devoid of any distinctive character is not entitled for registration therefore not registrable in Part A
of the register.
2. Such TM are not capable of distinguishing the goods or services of one person from those of another
person.
3. Distinctive means, “Adapted to distinguish goods with which the proprietor of the TM is or may be
connected with in the course of trade from goods in the case of which no connection subsists either
gradually or where the TM is proposed to be registered subject to limitations in relation to use within the
extent of the registration.
4. In, IMPERIAL TOBACCO CO. OF INDIA v. THE REGISTRAR OF TRADE MARKS
1. The Cal.HC stated that distinctiveness means, ‘Some quality in the TM that earmarks the goods so
marked as distinct from those of the other producers of such goods.’

4. DESCRIPTIVE WORDS -
1. In relation to Section 9(1)(b) the Mark can not be exclusively of marks or indications. Eg.: Kind = large,
Quality = Best itself, superior itself, Quality = 6/10, Value = Money’s Worth, Geographical Origin =
Nagpur, Delhi (Unless it has acquired Distinctiveness) or Time of Production = 2 Minutes Noodle, can not
be a TM.
2. But Godrej No.1 can be a TM.
3. A TM is descriptive if it imparts information directly.
4. A descriptive word is different from a suggestive word. A TM is descriptive if it impacts information
DIRECTLY. But if it stands for some idea, that requires imagination to connect it with the good then it is
suggestive.
5. Therefore, Descriptive Words can not be TM’d but Suggestive Words can.
6. In LE BLUME IMPORT CO. v. COTY
1. The court held that, a test of descriptiveness is whether the word conveys the characteristic, functions,
qualities or ingredients of a product to one who has never seen it or does not know what it is.

7. In PREMIER LUGGAGE AND BAGS v. PREMIER CO. (UK) Ltd. & ANR.
1. The held that the word ‘Premier’ was hit by Section 9(1)(b).

8. In W.N. SHARPE LD. v. SOLOMON BROS. LTD.

1. It was held that words like, “Superfine”, “Best”, “Good”, etc. were not capable of registration.

5. CUSTOMARY AND COMMON WORDS:

1. To monopolise the use of words imposes a serious burden.
2. Therefore, limits have been placed on the right to complain of the use of words.
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3.The vocabulary of language is common property and belongs to all and therefore no one from the
community can be prevented rom using for purposes of description a word which has a reference to
the quality of goods.
4. Therefore, if a mark is a generic term it can not be monopoly property of anyone else.
5. Use of a generic word or words that have become publici juris for a purpose different from the
meaning of the word was found by the court as not a generic word.
6. DIFFERENCE BETWEEN “TO DECIEVE” AND “TO CAUSE CONFUSION”
1. According to Section (2) (a), a mark is not to be registered as a TM if it is of such nature as to deceive the
public or cause confusion.
2. To ‘Deceive’ means deceiving a person by telling hum a lie or making a false representation and making
him to believe a particular thing is true when in reality the same is false.
3. To ‘Cause Confusion’ is to cause confusion without telling a person a lie or making a false representation
to him.
7. BLASPHEMOUS OR OBSCENE WORDS, WORDS LIKELTY TO HURT RELIGIOUS
SENTIMENTS:
1. If a TM consists of matter that is Blasphemous or Obscene, Indecent or Seditious, then it would not be
protected by a court of justice.
2. Registering a sacred word, or text hurts the religious feelings and can be considered as offensive.
3. The Indian TM Law does not have an express prohibition against registration of a mark that has a
connection with persons or beliefs.
4. The Act excludes registration of marks that are LIKELY to hurt the religious susceptibilities of any class
or section of the citizens of India.


5. In, KAMDHENU ISPAT LTD. v. KAMDHENU PICKLES AND SPICES INDIA (P) LTD.
1. The Del.HC refused to grant injunction against the use of the word Kamdhenu stating that the use of
the word in Hindu Mythology refers to the sacred cow that grand all wishes and desires. 


8. CLAUSE (2) AND (3) ARE NO EXCEPTION CLASSES AND NO EXCEPTIONS CAN BE MADE
THERE.

5. SECTION 11 provides for the RELATIVE GROUNDS FOR REFUSAL OF REGISTRATION

1. It provides :
1. (1) Save as provided in Section 12, trade mark shall not be registered if, because of-


(a) its identity with an earlier trade mark and similarly of goods or services covered by the trade
mark, or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods of 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.

(2) A trade mark which –

(a) is identical with or similar to an earlier trade mark, and
(b) is to be registered for goods or services which are not similar to those
for which the earlier trade mark is registered in the name of a different
proprietor.

Shall not be registered if or to the extent the earlier trade mark is a well
known trade mark in India and use of the later mark without due cause
would take unfair advantage of or be detrimental to the distinctive character
or repute of the earlier trade mark.

(3) A trade mark shall not be registered if, or to the extent that, its use in
India is liable to be prevented –
(a) by virtue of any law in particular the law of passing off protecting an
unregistered trade mark used in the course of trade, or
(b) by virtue of law of copyright.

(4) Nothing in this section shall prevent the registration of a trade mark
where the proprietor of the earlier trade mark or other earlier right consents
to the registration, and in such case the Registrar may register the mark
under special circumstances under section 12.
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Explanation.- For the purposes of this section, earlier trade mark means-
(a) a registered trade mark or convention application referred to in section
154 which has a date of application earlier than that of the trade mark in
question, taking account, where appropriate, of the priorities claimed in
respect of the trade marks.

(b) a trade mark which, on the date of the application for registration of the
trade mark in question, or where appropriate, of the priority claimed in
respect of the application, was entitled to protection as a well-known trade
mark.

(5) A trade mark shall not be refused registration on the grounds specified
in sub-section (2) and (3), unless objection on any one or more of those
grounds is raised in opposition proceedings by the proprietor of the earlier
trade mark.

(6) The Registrar shall, while determining whether a trade mark is a WELL-
KNOWN TRADE MARK, take into account any fact which he considers relevant
for determining a trade mark as a well-known trade mark including –

(i) 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.
(ii) the duration, extent and geographical area of any use of that trade
mark.
(iii) 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 gods or services to which the trade mark applies.
(iv) 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.
(v) 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 on Registrar under that record.

(7) The Registrar shall, while determining as to whether a trade mark is

known or recognised in a relevant section of the public for the purposes of
sub-section (6), 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.

(8) Where a trade mark has 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.

(9) The Registrar shall not require as a condition, for determining whether a
trade mark is a well-known trade mark, the 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.
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(10) While considering an application for registration of a trade mark and

opposition filed in respect thereof, the Registrar shall—

(i) protect a well known trade mark against the identical or similar trade
marks ;
(ii) take into consideration the bad faith involved either of the applicant or
the opponent affecting the right relating to the trade mark.

(11) Where a trade mark has been registered in good faith disclosing the
material information’s to the Registrar of where right to a trade mark has
been acquired through use in good faith before the commencement of this
Act, then, nothing in this Act shall prejudice the validity of the registration of
the trade mark or right to use that trade mark on the ground that such trade
mark is identical with or similar to a well known trade mark.

2. The Relative grounds for refusal of TM are applicable only when there already exists a TM, in comparison to
which the new TM is not registrable.


3. IDENTITY WITH EARLIER TM AND SIMILARITY OF GOODS OR VICE VERSA:

1. A TM is not registered because of: (I) Its identity with an earlier TM and similarity of goods and services
covered by the TM. or (II) Its similarity to an earlier TM and the identity of the goods or services, there
exists a likelihood of confusion on the part of the public that includes the likelihood of association with
the earlier TM.
2. The distinction between identity and similarity is that Identity = Sameness of essential character while
Similarity = Resemblance.
3. The onus is on the applicant to satisfy the Registrar that the TM applied for is not likely to device or cause
confusion. In considering the matter all the circumstances of the case must be considered.
4. In a question regarding Well Known Trade Mark, mention - Section 2(zg), Section 11(6) to (11). 


5. In, DAIMLER BENZ AKTIEGESELLSCHAFT v. HYBO HINDUSTAN

1. Here, a restraint order was issued in respect of the mark Benz against a company in India engaged in the
sale of undergarments under the TM VIP-Benz in combination with a three pointed human figure in a ring
- characteristic of the three pointed start device of Daimler Benz AG - with the legend, “Germans would
be proud of it.”
2. Benz filed a suit under Section 11(2).
3. The court upheld Benz’s claim for interim injunction .
4. Two grounds were laid down:
1. Unfair Trading.
2. Diminution of Brand Value. 


6. ON LIKELIHOOD OF CONFUSION AND DECEPTION IN MIND OF PEOPLE:

1. Test of Deception and confusion was laid down in:
2. In, AMRITDHARA PHARMACY v. SATYA DEO GUPTA
1. S.D. Gupta made an application for the registration of the TM of a biochemical medicinal preparation
called, “Lakshmandhara” and mentioned that the same was in use since 1923 and sold throughout
India and also in some foreign markets.
2. Notice of the application was given by the Registrar of TM, Bombay and the Amritdhara Pharmacy,
an LLP and appellant filed an application in opposition.
3. They stated that the word Amritdhara was already registered as a Trade Name for the medicinal
preparation and that was introduced in the market back in 1901 and on account of the popularity
many people advertised similar medicines with slight variation of name to pass off their goods.
4. The appellant contended that the similarities were likely to deceive the public and therefore the
registration should be refused.
5. On behalf of the respondents a counter-affidavit was made in which it was stated that the two were
distinctly different named and no one could pass off one for the other. Further, since 1923 no
objection was ever raised from 1923 therefore there could be no action taken against the respondents.
6. Further the respondents claimed that, Amritdhara is a generic mark and doesn't have protection,
therefore there could not be any infringement.
7. The Court rejected these arguments and propounded a two way test:
1. The court held that for deceptive resemblance two important questions are:
1. Who are the person whom the resemblance must be likely to deceive or confuse?
2. What rules of comparison are to be adopted judging whether such resemblance exists? 


2. Applying these questions that frame the test to the facts of the case the court held that, 

In the first question, the person whom the resemblance must likely to deceive or confuse are both
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villagers and townsfolk and literate and illiterate. 


Therefore the point has to be approached from the view of a man of average intelligence and
imperfect recollection and to such a man the phonetic and visual similarity is likely to cause
deception. 

Therefore an unwary purchaser of average intelligence and imperfect recollection would not split
the name into its component parts and consider the etymological meaning. 

Therefore he would go for the overall similarity and phonetic similarity and in these
circumstances if there can be any similarity then there shall be an infringement.
3. Therefore the SC set aside the HC Judgement and rejected the application.
7. TEST FOR ACQUIRED DISTINCTIVENESS:
1. The test was laid down in the case:
2. In, DURGA DUTT SHARMA V. NAVRATANA PHARMACEUTICAL LABORATORIES
1. Here, the Respondents who carry out their business from Erunakulam, Kerala, used their TM,
‘Navratna Pharmaceutical Laboratories’ on its medicinal preparations. The firm was established in
1926 as “Navratna Pharmacy” but from January 1945 it changed to the present mark. From the very
beginning the proprietors used the trade mark, “Navratna” on their products.
2. Durga Dutt Sharma, the appellant has for some part years had been carrying on business in the
preparation of Ayurvedic Pharmaceutical Products under the name of “Navratna Kalpa Pharmacy”,
and had been vending medicines under the same name. In October, 1946 he applied for a TM and in
1950 this was advertised and therefore the respondents objected to the TM as the word, “Navratna”
was deceptive and and had no distinctiveness and therefore could not be registered.
3. This objection prevailed and therefore the application was rejected.
4. Therefore, the appeal came to the SC.
5. The appellants contended that the word, “Navratna” is a generic term and therefore gets covered
under Section 9, therefore can not be a valid TM.
6. Further the respondents claimed that Section 9 does not apply as they have acquired distinctiveness.
7. The SC applied the test that, Original meaning test and acquired by use meaning has come into
existence.
8. Therefore the court favoured the Defendants held that the Defendants had acquired distinctiveness.
————————————————————————————————————————

VI. P R O C E D U R E F O R R E G I S T R A T I O N

1. SECTION 18 provides the 


APPLICATION FOR REGISTRATION:
1. It provides:
1. (1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is
desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the
registration of his trade mark.

(2) A single application may be made for registration of a trade mark for different classes of gods and services
and fee payable therefor shall be in respect of each such class of goods or services.

(3) Every application under sub-section (1) shall be filed in the office of the Trade Mark Registry within
whose territorial limits the principal place of business in India of the applicant or in the case of joint
applicants the principal place of business in India of the applicant whose name is first mentioned in the
application as having a place of business in India, is situate:

(4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely
or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.
(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the
grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.


2. SECTION 19 provides for the 


WITHDRAWAL OF ACCEPTANCE:
1. Where, after the acceptance of an application for registration of a trade mark but before its registration, the
Registrar is satisfied.-
(a) that the application has been accepted in error; or
(b) that in the circumstances of the case of the trade mark should not be registered or should be registered
subject to conditions or limitations or to conditions additional to or different from the conditions or
limitations subject to which the application has been accepted.


3. SECTION 20 provides for the 


ADVERTISEMENT OF APPLICATION:
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1. (1) When an application for registration of a trade mark has been accepted whether absolutely or subject to
conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as
accepted together with the conditions or limitations, if any, subject to which it has been accepted, ton be
advertised in the prescribed manner:

Provided that the Registrar may cause the application to be advertised before acceptance if it relates to a trade
mark to which sub-section (1) of section 9 and sub-section (1) and (2) of section 11 apply, or in any other case
where it appears to him that it is expedient by reason of any exceptional circumstances so to do.

(2) Where –
(a) an application has been advertised before acceptance under sub-section (1);
(b) after advertisement of an application,-

(i) an error in the application has been advertised before acceptance under sub-section (1); or

(ii) the application has been permitted to be amended under section 22, the Registrar may in his
discretion cause the application to be advertised again or in any case failing under clause (b)
may, instead of causing the application to be advertised again, notify in the prescribed manner
the correction or amendment made in the application.


4. SECTION 21 provides for the 


OPPOSITION TO REGISTRATION:
1. (1) Any person may, within three months from the date of the advertisement or re-advertisement of an
application for registration or within such further period, not exceeding one month in the aggregate, as the
Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows,
give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.

(2) The Registration shall serve a copy of the notice on the applicant for registration and, within two months
from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the
Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application,
and if he does not do so he shall be deemed to have abandoned his application.

(3) If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the person giving
notice of opposition.

(4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed
manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to
be heard, if they do desire.

(5) The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether
and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into
account a ground of objection whether relied upon by the opponent or not.

(6) Where a person giving notice of opposition or an applicant sending a counter statement after receipt of a
copy of such notice neither resides nor carries on business in India, the Registrar may require him to give
security for the costs of proceedings before him, and in default of such security being duly given, may treat
the opposition or application, as the case may be, as abandoned.

(7) The Registrar may, on request, permit correction of any error in, or any amendment of, a notice of
opposition or a counter-statement or such terms as he thinks just.

5. SECTION 22 provides for 


CORRECTION AND AMENDMENT:
1. The Registrar may, on such terms as he thinks just, at any time, whether before or after acceptance of an
application for registration under Section 18, permit the correction of any error in or in connection with the
application or permit an amendment of the application.

Provided that if an amendment – The Registrar may, on such terms as he thinks just, at any time, whether
before acceptance if it relates to a trade mark to which sub-section (1) of section 9 and sub-section (1) and (2)
of Section 11 apply, or in any other case where it appears to him that it is expedient by reason of any
exceptional circumstance so to do.

6. SECTION 23 provides for 


REGISTRATION:
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1. (1) Subject to the provisions of section 19, when an application for registration of a trade mark has been
accepted and either-

(a) the application has not been opposed and the time for notice of opposition has expired, or
(b) the application has been opposed and the opposition has been decided in favour of the applicant.

The registrar shall, unless the Central Government otherwise directs, register the said trade mark and the trade
mark when registered shall be registered as of the date of the making of the said application and that date
shall, subject to the provisions of section 154, be deemed to be the date of registration.

(2) On the registration of a trade mark, the Registration shall issue to the applicant a certificate in the
prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry.

(3) Where registration of a trade mark, is not completed within twelve months from the date of application by
reason of default on the part of the applicant, the Registrar may, after notice to the applicant in the prescribed
manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the
notice.

(4) The Registrar may amend the register a certificate of registration for the purpose of correcting a clerical
error or an obvious mistake.

7. SECTION 24 provides for 


JOINTLY OWNED TRADEMARKS:
1. (1) Save as provided in sub-section (2), nothing in this Act shall authorise the registration of two or more
persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.

(2) Where the relations between two or more persons interested in a trade mark are such that no one of them is
entitled as between himself and the other or others of them to use it except-


(a) on behalf of both or all of them, or

(b) in relation to an article or service with which both or all of them are connected in the course of trade.

Those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in
relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested in a
single person.

8. SECTION 25 provides for 


DURATION, RENWAL, REMOVAL AND RESTORATION AND REGISTRATION:
1. (1) The registration of trade mark, after the commencement of this Act, shall be for a period of ten
years, but may be renewed from time to time in accordance with the provisions of this section.

(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed
manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration
of the trade mark for a period of ten years from the date of expiration of the original registration or of the last
renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last
registration).

(3) At the prescribed time before the explanation of the last registration of a trade mark the Registrar shall
send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as
to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the
expiration of the time prescribed in that behalf those conditions have not been dully complied with the
Registrar may remove the trade mark from the register.

Provided that the Registrar shall not remove the trade mark from the register if an application is made in the
prescribed form and the prescribed fee and surcharge is paid within six months from the expiration f the last
registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under
sub-section (2).

(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the
Registrar shall, after six months and within one year from the expiration of the last registration of the trade
mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, it satisfied that
it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either
generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from
the expiration of the last registration.
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9. SECTION 26 provides for 


EFFECT OF REMOVAL FROM REGISTER FOR FAILURE TO PAY FEE FOR REMOVAL:
1. Where a trade mark has been removed has been removed from the register the register for failure to pay the fee
for renewal, it shall nevertheless, for the purpose of any application for the registration of another trade mark
during one year, next after the date of the removal, be deemed to be a trade mark already on the register, unless
the tribunal is satisfied either-

(a) that there has been no bona fide trade use of the trade mark which has been removed during the two years
immediately preceding its removal, or
(b) that no deception or confusion would be likely to arise from the use of the trade mark which is the subject
of the application for registration by reason of any pervious use of the trade mark.




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VII. L I C E N S I N G A N D A S S I G N M E N T
1. Licensing is the giving of certain interest away to another party. While Assignment is the giving up of ownership
and rights over the Trade Mark to another party.
2. Trade Mark law doesn't necessarily require registration, so if there is an unregistered Trade Mark the question
arises if it can be Licensed and if the law would recognise the rights of an unregistered Trade Mark holder?
3. Section 37 of the Act recognises the right of registered proprietor to assign the TM for any consideration and to
give receipt. 


4. LICENSING:
1. Licensing can happen of both registered and unregistered Trade Marks.
2. SECTION 2(R) provides for the 

PERMITTED USE IN RELATION TO TRADE MARK: 


(i) by a registered user of the trade mark in relation to goods or service-

(a) with which he is connected in the course of trade, and
(b) in respect of which the trade mark remains registered for the time being, and,
(c) for which he is registered as registered user, and
(d) which complies with any conditions or limitations to which the registration of registered user is
subject, or


(ii) by a person other than the registered proprietor and registered user in relation to goods or services-
(a) with which he is connected in the course of trade, and
(b) in respect of which the trade mark remains registered for the time being, and
(c) by consent of such registered proprietor in a written agreement, and
(d) which complies with any conditions or limitations to which such user is subject and to which the
registration of the trade mark is subject.


3. SECTION 48 provides for 


REGISTERED USES:
1. (1) Subject to the provisions of section 49, a person other than the registered proprietor of a trade
mark may be registered as a registered user thereof in respect of any or all of the goods or services in
respect of which the trade mark is registered.

(2) The permitted use of trade mark shall be deemed to be used by the proprietor thereof, and shall
be deemed not to be used by a person other than the proprietor, for the purpose of section 47 or for
any other purpose for which such use in material under this Act or any other law.

2. If A is a registered TM and sues X for infringement, he can claim permitted use, but the same can not
be claimed if it is an unregistered Trade Mark. 




4. SINGLE SOURCE PRINCIPLE:

1. It means that licensing can not be done because the consumers trust the Trade Mark to he originating
from a single original source.
2. This evolved to a ‘symbol’ i.e. a check on quality control for granting license and is mentioned in
terms of contract or practically exerted.
3. Any license without quality check i.e. a Bare License would not be recognised by law. 


2. ASSIGNMENT: 


1. Assignment in Trade Mark can be:

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1. With Good Will - That is the assignment of the Mark and the Goodwill.
2. Without Good Will - That is the assignment of only the Mark and no Goodwill. The assignee….
3. With Goodwill will be done for similar/identical goods.
4. Without Goodwill will be done for dissimilar goods.
5. Assignment can be for both Registered and Unregistered TM’s but the assignment must be registered. 


2. SECTION 38 provides for 


ASSIGNABILITY AND TRANSMISSIBILITY OF REGISTERED TRADE MARKS:
1. Notwithstanding anything in any other law to the contrary, a registered trade mark shall, subject to the
provisions of this Chapter, be assignable and transmissible, whether with or without the goodwill of
the business concerned and in respect either of all the goods or services in respect of which the trade
mark is registered or of some only of those goods of services.


3. SECTION 39 provides for 


ASSIGNABILITY AND TRANSMISSIBILITY OF UNREGISTERED TRADE MARKS:
1. An unregistered trade mark may be assigned or transmitted with or without the goodwill of the
business concerned.

4. SECTION 49 provides for 


REGISTRATION AS A REGISTERED USER:
1. (1) Where it is proposed that a person should be registered as a registered user of a trade mark, the
registered proprietor and the proposed registered user shall jointly apply in writing to the Registrar
in the prescribed manner, and every such application shall be accompanies by -
(a) the agreement in writing or a duly authenticated copy thereof, entered into between the registered
proprietor and the proposed registered user with respect to the permitted use of the trade mark,
and
(b) an affidavit made by the registered proprietor or by some person authorised to the satisfaction of
the Registrar to act on his behalf,-
(i) giving particulars of the relationship, existing or proposed, between the registered proprietor
and the proposed registered user, including particulars showing the degree of control by the
proprietor over the permitted use which their relationship will confer and whether it is a term
of their relationship that the proposed registered user shall be the sole registered that the
shall be any other restriction as to persons for whose registration as registered users
applications may be made.
(ii) stating the goods or services in respect of which registration is proposed.
(iii) stating the conditions or restrictions, if any, proposed with respect to the characteristics of
the goods or services, to the mode or place of permitted use, or to any other matter.
(iv) stating whether the permitted use is to be for a period or without limit of period, and, if for a
period, the duration thereof, and

(c) such further documents or other evidence as may be required by the Registrar or as may be
prescribed.

(2) When the requirements of sub-section (1) have been complied with, the Registrar shall register the
proposed registered user in respect of the goods or services as to which he is so satisfied.

(3) The Registrar shall issue notice in the prescribed manner of the registration of a person as a registered user,
to other registered users of the trade mark, if any.

(4) The Registrar shall, if so requested by the applicant, take steps for securing that information given for the
purpose of an application under this section (other than matters entered in the register) is not disclosed to
rivals in trade.


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VIII. I N F R I N G E M E N T :

1. A person may sell his goods or deliver services and with the lapse of time the business or services will acquire a
reputation or goodwill and this will become property that is sought to be protected by law.
2. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the
business who has property in that name. The law therefore does not permit anyone to carry o his business in such a
way as would persuade the customers or clients tho believe that the goods or services belong to someone else are
his or are associated therewith.
3. It does not matter if the latter person foes so fraudulently or otherwise.
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4. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered TM for the
vindication of the exclusive right to use the mark in relation to those goods.
5. When a person gets his TM registered he acquires valuable rights by reason of such registration.Registration of his
TM gives him the exclusive right to use of the TM in connection with the goods in respect of which it is registered
and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar
then then he can protect his TM by an action for infringement in which he can obtain an injunction.
6. A plaintiff can succeed in an action for infringement if he can prove that the essential particulars of his trade mark
has been copied. 


7. SECTION 27 provides 

NO ACTION FOR INFRINGEMENT OF UNREGISTERED TRADE MARK:
1. (1) No person shall be entitled to institute to institute any proceeding to prevent, or to recover damages for, the
infringement of an unregistered trade mark.

(2) Nothing in this Act shall be deemed to affect 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.


2. Infringement is:
1. Statutory Remedy.
2. For Registered Trade Marks.
3. Validates the rights of the right holder. 


3. Passing off is:

1. Common Law Remedy.
2. For Unregistered Trade Marks.
3. For Misappropriation and Deception.

4. SECTION 28 provides 

RIGHTS CONFERRED BY REGISTRATION: (Infringement of Registered Trade Mark)
1. (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the
registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the
goods or service in respect of which the trade mark is registered and to obtain relief in respect of
infringement of the trade mark in the manner provided by this Act.



(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any
conditions and limitations to which the registration is subject.



(3) Where two or more persons are registered proprietors of trade marks, which are identical with or
nearly resemble reach 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 have otherwise the same rights as against other
persons (not being registered proprietor.

5. SECTION 134 provides for 


SUIT FOR INFRINGEMENT ETC. TO BE INSTITUTED BEFORE DISTRICT COURT
1. (1) No suit –
(a) for the infringement of a registered trade mark, or
(b) relating to any right in a registered trade mark, or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with
or deceptively similar to the plaintiff’s trade mark, whether registered or unregistered.
Shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

(2) For the purpose of clauses (a) and (b) of sub-section (1), a "District Court having jurisdiction" shall,
notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the
time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the
institution of the suit or other proceeding, the person instituting the suit or proceeding, or where there are
more than one such person any of them, actually and voluntarily resides or carries on business or personally
works for gain.

Explanation.- For the purpose of sub-section (2), "person" includes the registered proprietor and the
registered user.
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6. SECTION 135 provides for 


RELIEF IN SUITS FOR INFRINGEMENT OR FOR PASSING OFF:
1. (1) The relief which a court may grant in any suit for infringement or for passing off referred on in section
134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the
plaintiff, either damages or an account of profits, together with or without any order of the plaintiff, either
damages or an account of profits, together with or without any order for the delivery-up the infringing
labels and marks for destruction or erasure.
(2) The order of injunction under sub-section (1) may include an ex parte injunction or any interlocutory order
for any off the following matters, namely :-
(a) for discovery of documents.
(b) preserving of infringing goods, documents or other evidence which are related to the subject-matter
of the suit.
(c) restraining the defendant from disposing of or dealing with his assets in a manner which may
adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may
be finally awarded to the plaintiff.

(3) Notwithstanding anything contained in sub-section (1), the court shall not grant relief by way of damages
(other than nominal damages) or on account of profits in any case -
(a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a
certification trade mark or collective mark, or
(b) where in a suit for infringement the defendant satisfies the court-
(i) that at the time he commenced to use the trade mark complained of in the suit, he was unaware
and had no reasonable ground for believing that the trade mark of the plaintiff was on the register
or that the plaintiff was a registered user using by way of permitted use, and
(ii) that when he becomes aware of the existence and nature of the plaintiff’s right in the trade mark,
he forthwith ceased to use the trade mark in relation to good or services in respect of which it
was registered, or

(c) where in suit for passing off, the defendant satisfies the court-
(i) that at the time he commenced to sue the trade mark complained of in the suit he was unaware
and had no reasonable ground for believing that the trade mark of the plaintiff was in use, and
(ii) that when he became aware of the existence and nature of the plaintiff’s right in the trade mark,
he forthwith ceased to use the trade mark complained of.