BUSINESS LAW

PROJECT
FY BMS B

THE TRADEMARKS
ACT, 1999
AYUSHI KARANDE(104)
GOPESH RAHEJA(123)
YASH TIWARI(141)
INDEX
 ABSTRACT

The Trade Marks Act, 1999 has been formulated to act as a powerful
tool in the hands of trade mark owners and users and to protect their
interests and the interests of the general public against the detrimental
use of their trademarks.

A trademark, which has been defined in Section 2 (1) (zb) of the 1999
Act has been described as a symbol, a sign or any other mark which can
distinguish goods or services of one person from that of the other. In this
modern of competitive advertising, trademarks have assumed immense
visual significance and are an important part of branding and marketing.
Simply said, a trademark identifies the origin of a product or service and
lends authenticity to it. Thus, it becomes imperative to protect such a
symbol or logo being used as a trademark so that the goodwill of a
product or service is protected.
 INTRODUCTION

Imagine you are a budding entrepreneur thriving to start your own

business of say for example, garments. You spend many days thinking
of a unique and catchy name for your business. You ask for a suggestion
from your friend and finally decide on a quirky and catchy name. After a
few days of you starting your business you come to know that your
friend has started a similar business with a similar name. this is only an
imagination, however this has been a problem in the market due to
which many companies have been unable to create a distinct identity of
themselves. This problem demanded a legal solution through which
companies could protect their identities. Thus, the trademarks act was
introduced.
The need for a law exclusively addressing trademark practice and
procedure in India was sought for in the 19th century which eventually
materialized into the Trademark Act, 1940. The Trademark Act, 1940
predominantly reflected the provisions incorporated in the UK
Trademark Act, 1938. Subsequently, in the wake of ensuing trade and
commerce development, the Trademark Act, 1958 was passed to address
the lacunae being witnessed in the Trademark Act, 1940. The Trademark
Act, 1958 also consolidated the provisions associated with trademarks in
the Indian Penal Code, Criminal Procedure Code and Sea Customs.
The Trademark Act, 1958 was thereafter repealed by the Trademark Act,
1999 which at present governs trademark law and practice in India. The
Trademark Act, 1999 was enacted with the intent to revise the Act in
congruity with latest developments witnessed in trading and commercial
practices, rapid globalization and for harmonization with International
trade laws.
 What is a Trademark?
A trademark is one of the elements of Intellectual Property Right (IPR) and is
represented by the symbol ™ or ®. It is a distinctive sign, symbol or indicator
which is used by an individual, business organization or other legal entity to
identify uniquely the source of its products or services to consumers, and to
distinguish its products or services from those of other entities. It could typically
be a name, word, phrase, logo, symbol, design, image, or a combination of these
elements. Trademarks are used to facilitate and enhance the marketing of a
commodity and is a sign that indicates to consumers the source and reputation of
the affixer of the mark and provides an important advertising and sales tool.

The Indian law of trademarks is enshrined in the Trade Marks Act, 1999 (47 of
1999) which came into force with effect from September 15, 2003. The old Trade
and Merchandise Marks Act, 1958 was repealed at the same time. The 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.

Section 2 (1) (m) of the Act defines ‘mark’ as including a device, brand, heading,
label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or
combination of colors or any combination thereof.

Section 2 (1) (zb) of the Act defines a ‘trade mark’ as 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 colors.

NEED FOR REGISTRATION

Trademark registration is one of the strongest ways to protect one’s trademark.

Registration makes it a lot easier to protect the trademark against would-be
infringers and could end up saving a lot of time and money, in proving that, one
is the legitimate owner of the trademark. Registering and maintaining
registration of the trade marks grants many advantages like protection against
infringement of trademark, exclusive use of the mark, license or sell and the
right to prevent others from using, applying the said trade mark without proper
authority.
 THE BIRTH OF TRADEMARKS ACT IN INDIA

While some form of proprietary protection for marks in India dates back several
millennia, India’s statutory Trademarks Law dates back to 1860. The definition
of trademarks was provided in the Indian Penal Code and was later adopted in
Indian Merchandise Marks Act, 1889. Prior to 1940 there was no official
trademark Law in India. Numerous problems arouse on infringement, law of
passing off etc and these were solved by application of Section 54 of the Specific
Relief Act, 1877 and the registration was obviously adjudicated by obtaining a
declaration as to the ownership of a trademark under Indian Registration Act
1908.
The first trademark law in India was passed in the year 1940 and was known as
the Trade Marks Act, 1940 and this corresponded with English Trademarks Act.
This law was subsequently replaced by the Trade and Merchandise Act, 1958.
Thereafter the Government of India amended this Act in order to bring the Indian
trademark law in compliance with its TRIPS obligations. The new Act that was
passed was the Trade Marks Act, 1999. This Act came into force in the year
2003. The Trade Marks Act, 1999 and the Trade Marks Rules, 2002, presently
govern the trademark law in India. The object of the 1999 Act is to confer the
protection to the user of the trademark on his goods and prescribe conditions on
acquisition, and legal remedies for enforcement of trademark rights.
 Procedure for trademark registration in India
1. Trademark Search
Time to Complete: 1 day

Step 1: The first step is the selection of a trademark.

Step 2: It is advisable for the applicant to search the trademark records registry and
ensures that the intended trademark does not resemble or identical the registered
mark.

Step 3: The search can be done online or through the trademark office.

Step 4: It is advisable to consult an experienced lawyer as they are well-versed in

their profession and are be able to conduct an exhaustive search. Hire a lawyer if
you think you have right on a particular trademark but if it is already registered.

After thorough research, the application for registration in the trademark can be
made in the prescribed form.

2. Filling of Form TM-1

Time to Complete: 2 days

Cost: Rs. 4,000 (per application per class) + lawyer’s fees

Step 1: The application for the registration of the trademark should contain the
following particulars:

“Mark” chosen to be registered,

Trademark owner’s information,

List of goods or services for which the trademark will be used.

Choose the correct trademark class that describes your product or service.
Class 01 Product Chemicals

Class 02 Product Paints, Coatings, and Pigments

Class 03 Product Cleaning Products, Bleaching and Abrasives, Cosmetics

Class 04 Product Fuels, Industrial Oils and Greases, Illuminates

Class 05 Product Pharmaceutical, Veterinary Products, Dietetic

Class 06 Product Metals, Metal Castings, Locks, Safes, Hardware

Class 07 Product Machines and Machine Tools, Parts

Class 08 Product Hand Tools and Implements, Cutlery

Class 09 Product Computers, Software, Electronic Instruments, and Scientific Appliances

Class 10 Product Medical, Dental Instruments and Apparatus

Class 11 Product Appliances, Lighting, Heating, Sanitary Installations

Class 12 Product Vehicles

Class 13 Product Firearms, Explosives, and Projectiles

Class 14 Product Precious Metal Ware, Jewelry

Class 15 Product Musical Instruments and Supplies

Class 16 Product Paper, Items Made of Paper, Stationery items

Class 17 Product Rubber, Asbestos, Plastic Items

Class 18 Product Leather and Substitute Goods

Class 19 Product Construction Materials (Building, Nonmetallic)

Class 20 Product Furniture and Mirrors

Class 21 Product Crockery, Containers, Utensils, Brushes, Cleaning Implements

Class 22 Product Cordage, Ropes, Nets, Awnings, Sacks, Padding

Class 23 Product Yarns, Threads

Class 24 Product Fabrics, Blankets, Covers, Textile

Class 25 Product Clothing, Footwear, and Headgear

Class 26 Product Sewing Notions, Fancy Goods, Lace, and Embroidery

Class 27 Product Carpets, Linoleum, Wall and Floor Coverings (Non-Textile)

Class 28 Product Games, Toys, Sports Equipment

Class 29 Product Foods: Dairy, Meat, Fish, Processed and Preserved Foods

Class 30 Product Foods: Spices, Bakery Goods, Ice, Confectionery

Class 31 Product Fresh Fruits and Vegetables, Live Animals

Class 32 Product Beer, Ales, Soft Drinks, Carbonated Waters

Class 33 Product Wines, Spirits, Liqueurs

Class 34 Product Tobacco, Smokers Requisites, and Matches

Class 35 Service Advertising and Business Consulting

Class 36 Service Insurance, Financial

Class 37 Service Construction, Repair, Cleaning

Class 38 Service Communications

Class 39 Service Transport, Utilities, Storage, and Warehousing

Class 40 Service Materials Treatment, Working

Class 41 Service Education, Amusement, Entertainment, Reproduction

Class 42 Service Scientific and Technological Services and Related Research and Design

Class 43 Service Services for Providing Food, Drink, and Temporary Accommodations

Class 44 Service Medical, Veterinary, Hygienic, and Beauty Care for Humans or Animals
Step 2: The application for a trademark can be made both online and offline.

Online application: A Class III Digital Signature Certificate is required.

Offline application: An application to the Offices of the Trademark Registry is

required.

Step 3: Once the application for the trademark registration is made, the Registrar
will search for the uniqueness of name and will check the registered marks and
pending applications to ascertain whether any such marks exists and to know the
register-ability of proposed mark as per the law.

Step 4: In case, of objection by the registrar for acceptance of application or

propose to accept the application with certain term and conditions, amendments,
limitations, etc., the same is communicated in writing to the applicant and the
applicant has to communicate back regarding their rectification within a period of
three months.

3. Cost
Step 1: So now, that you have your name, on to filing of Form TM-1. Each such
form would contain only one application. So if you are registering the trademark in
two classes (i.e. sectors): let’s say Relentless Garments and Relentless Computer,
as well as having a separate logo for each, you would be making four applications.

Step 2: With government fees Rs. 4,000 /-per application, the total would amount
to Rs. 16,000.

Step 3: Lawyer’s fee starts at Rs. 200/- per application will amount to at least Rs.
8,000/-for 4 applications.

Step 4: In the case of the logos, a jpeg image needs to be provided.

Step 5: The acknowledgment, which mentions the filing date and application
number, is received immediately, but it will take two more days to obtain the
Original Representation Sheet.
4. Use your Trademark
Now you can use the Mark, But the use of symbol would take up to 2 years if
everything goes smoothly.

5. Issue of Examination Report

Time to Complete: 3 to 6 months

Cost: Free, but Rs. 4000 to Rs. 6000 in the case of any objection.

Now begins the process of questioning your claim to the trademark. First, the
government will verify whether the application has any objections: Here’s what
happens if there is:

No Objection: If there is no objection against the application made, then a letter of

acceptance will be issued commonly known as TLA.

If there is an Objection

Reasons for objections as follows:

If a proposed trademark is similar/identical or a copy of already registered

trademark.

If a word use is obscene/ unlawful and may hurt the sentiment of particular
religion /religions.

If you wish to challenge the objection, then an additional fee Rs. 3,000 as well as
lawyer’s fee which is a minimum of Rs. 4,000 to Rs. 5,000 depending on the
lawyer is charged.

The lawyer will frame a response to the objection that has arisen and will present
the distinctiveness of the trademark. Hence, it is required for a lawyer to be well
informed and aware of business activities. If a government discarded the objection,
the trademark will be eligible for advertisement in trade Mark journal.
6. Advertisement in Trade Marks Journal
Time to Complete: 3 to 6 months

Cost: Free, but legal fees in case of opposition

The trademark will be advertised in trademark journal once the application

for registration of a trademark is accepted. It will give a third party an opportunity
to oppose the published trademark.

The entry of a trademark will entail the date of registration, a list of goods or
services for which it is registered and other particulars. The trademark
registration will be 10 years and can be further renewed.

If no one opposes the particular trademark within four months of its publication
in Trademark Journal, then a trademark registration certificate will be issued
within 6 to 10 months.

However, if there is any opposition by the third party, the process of obtaining
certificate may extend to many more months.Both parties will get the opportunity
to be heard. Legal charges too will be applicable.

7. Trademark Registration
Time to Complete: Up to 9 months.

Cost: Does not apply

Approximately, average months of nine months time period will be required to

issue a trademark certificate after the publication of advertisement in Trademark
Journal. The registered trademark is valid for a period of 10 years is renewable.
What is Secondary Significance of a Trademark?

The law stipulates that a trademark which has secured a secondary meaning or
secondary significance shall not be refused registration even if it falls within the
categories as enumerated under Section 9. It is settled law that in common
language words and names cannot be exclusively appropriated by any trader unless
and until such trade names have acquired such a great reputation and goodwill in
the market that the common language word has assumed a secondary significance.
Secondary significance here would mean that other traders in that line of trade
acknowledge that such common word has come to denote the goods belonging to a
particular trade. Even a common language word can be exclusively appropriated
by a party as a trade mark if the said word has acquired a secondary significance
but in the case of a word which is coined, fancy, new or meaningless the claim to
exclusive appropriation is sustainable without the need to prove existence of
secondary significance.
 Absolute Grounds for Refusal of Trademark Registration

 Section 9 of the Trademark Act, 1999 enumerates grounds on which a

trademark registration can be absolutely refused. The Act provides that
following marks can be refused:
• Marks that are devoid of any distinctive character;
• Marks which serve to designate kind, quality, intended purpose,
values, geographical origin or the time of production of goods;
• Marks which have become customary in the current language or in
the established practices of trade;
 Exception- Aforesaid mark shall not be refused registration if prior to date of
trademark application; the mark has acquired distinctive character or is a
well-known trademark.
• Marks that may cause deception or confusion in public;
• Mark comprises of matter that is likely to religious sentiments any
class of people;
• Mark comprises of scandalous or obscene matter;
• Mark is prohibited under the Emblems and Names (Prevention of
Improper Use) Act, 1950;
• If the mark consists of shape of goods which results from the
nature of the goods themselves;
• Mark consists of shape of goods which is necessary to obtain a
technical result;
• Mark gives substantial value to the goods
QUESTIONS WE ASKED MRS. VEENA GVALANI (PATENT &
TRADEMARK CONSULTANT)
Question1: If someone has a similar word trademarked, is there any chance I can
get that trademark?

A:You can, if you design a unique logo and include the name in it or can add the
small prefix to name. For e.g. BMW whose name is within the logo. For e.g., your
name is Ayushi and you want to have the registered trademark “Karande”, you can
use A-

Example 1: BMW whose name is within their logo.

Example 2: Ayushi is the name and you want a registered trademark as

“Karande”. You can use A-Karande. It is advisable to select a unique and distinct
name for the registration of the demark.

Question 2: With which name I can file the trademark?

A: You can file it under any name. Generally, entrepreneurs prefer to register the
trademark in their own name. As using company’s name it would mean that the
shareholders own it too.

Question 3: As a foreign corporation, can I file a single application for use of my

mark on more than one good or in association with more than one service in India?

A: Yes. India recognizes the International Classification and system of multi-class

applications. As there are 42 classes in which the goods and services have been
divided. You can file for multi-class applications for both goods and services

Question 4: Being a foreign corporation, must I sell my products or services in

India before seeking trademark registration?

A: No, Indian trademark law agrees on the filing of a trademark application with
the basic on an ‘intent-to-use’ objective. However, the registered proprietor of the
trademark in India has to commence use of the mark within 5 years and 3 months
from the date of registration. Otherwise, the registered trademark is open to
invalidation/termination /cancellation.
Question 5: Who can use symbols in India?

A: Only the proprietor can use the symbol in India who has followed the
trademark registration process in India. It would be unlawful and inappropriate if
the symbol is used is not processed for registration or unregistered.

Question 6: When can the symbol ™ be used in India?

A: It indicates that you claim to be the proprietor of the trademark. There is no

prohibition on the use of the symbol ™ in India.

Question 7: What is the penalty prescribed under criminal laws for infringement of
a trademark in India

A: Minimum penalty of six months and maximum of three years along with fine
not less than Rupees fifty thousand is applicable for using a false trademark. The
penalty may even extend to Rs. 2 lakhs.
 Trademark Infringement

Trademark infringement is a violation of the exclusive rights attached to a

trademark without the authorization of the trademark owner or any licensees
(provided that such authorization was within the scope of the license).
Infringement may occur when one party, the “infringer”, uses a trademark which is
identical or confusingly similar to a trademark owned by another party, in relation
to products or services which are identical or similar to the products or services
which the registration covers. An owner of a trademark may commence legal
proceedings against a party which infringes its registration. The laws relating to
trade mark infringement are enshrined under Section 29 of the Trade Marks Act,
1999.

Trademark infringement occurs if a person other than the registered proprietor in

the course of trade, in relation to the same good or services for which the mark is
registered, uses the same mark or a deceptively similar mark. This particularly
harms the goodwill of a brand if its trademark is well-known.

To this effect, Section 2 (1) (zg) of the Trade Marks Act, 1999 defines a ‘well-
known trade mark’ in relation to any goods or services as a mark which has
become so to the substantial segment of the public which uses such goods or
receives such services that the use of such mark in relation to other goods or
services would be likely to be taken as indicating a connection in the course of
trade or rendering of services between those goods or services and a person using
the mark in relation to the first mentioned goods or services.

Thus, if any organisation, company, business or legal entity is using the registered
trademark of another entity, without permission, it constitutes a crime and also
causes damage to the business, goodwill and reputation of that entity or company.
Essentials of Trademark Infringement

The taking of any essential feature of the mark or taking the whole of the mark and
then making any alterations or modifications therein, or

Using another’s trademark in the course of trade, business or course, i.e in a

regular trade wherein the proprietor of the mark is engaged, or

Use of the infringed mark must be in printed form; oral use of the trade mark is not
infringement.

Effect of Infringement

A trade mark used by one other than the registered proprietor is likely to cause
confusion in the mind of public or is likely to cause impression of association with
the registered trade mark.

Remedies for Trade Mark Infringement

Whenever a dispute regarding trademark infringement arises, the following

remedies are available against such infringement:

Civil

When instances of infringement and passing off occur, the court of competent
jurisdiction (court not lower than district court) can be moved for a grant of
interlocutory injunction, Anton Pillar Orders, damages and account of profits.

Criminal

Complaint may be made against the person causing infringement. Both the actions,
the civil and criminal law, can be initiated simultaneously. Under the civil law
proceedings, the plaintiff seeks reliefs for himself while under criminal law
proceedings, the complainant seeks award of punishment to the infringer.

Administrative

Opposing the registration of a deceptively similar trade mark when the trade mark
registry is in the process of considering the ground of a trade mark, can protect the
trade mark. The registry can also be moved for removing of a deceptively similar
trade mark, if registered.
 Penalty for Trademark Infringement in India
1. Applying Unauthorised Trademark
A person is considered to be applying a trademark wrongfully if:

 Falsifies any trademark.

 Falsely applies to goods or services any trademark.
 Makes, disposes of, or has in his possession, any die, block, machine, plate or other
instrument for the purpose of falsifying or of being used for falsifying, a trademark.
 Applies any false trade description to goods or services.
 Applies to any goods to which an indication of the country or place in which they were
made or produced or the name and address of the manufacture or person for whom the
goods are manufactured is required to be applied. A false indication of such country,
state, place, name or address.
 Tampers with, alters or effaces an indication of origin which has been applied to any
goods to which it is required to be applied.

For the above offences, a person is punishable with imprisonment for a term which shall not be
less than six months but which may extend to three years and with fine which shall not be less
than fifty thousand rupees but which may extend to two lakh rupees.

2. Selling Goods or Services with Unauthorized Trademark

Any person who sells, lets for hire or exposes for sale, or hires or has in his possession for sale,
good or things, or provides or hires services, to which any unauthorised trademark or false trade
description is applied is punishable with imprisonment for a term of not less than six months and
upto three years. A fine can also be levied to an amount of not less than rupees fifty thousand to
a maximum of rupees two lakhs. However, the person shall not be punishable if he/she proves:

 That, he/she has taken all reasonable precautions against committing an offence and at
the time of committing of the offence had no reason to suspect the genuineness of the
applied trademark.
 That, he/she on demand by or on behalf of the Prosecutor, gave all information in his
power with respect to the person from whom he obtained such goods or things or
services.
 That, he/she otherwise had acted innocently.

3. Falsely representing trademark as registered

If any person falsely represents to the effect that a registered trademark is registered in respect of
any goods or services, which is not in fact registered, then he/she is punishable with
imprisonment for a term which may extend to three years or with fine, or both.
 TRADE INFRINGEMENT SUITS
CASE LAW: TATA VS GREENPEACE
The Trade Marks Act, 1999 has outlined certain criteria as under Sections 29
which identify cases of infringement of trademarks. Here we have researched and
tried to relate the law of trademarks and trade mark infringement with the case of
TATA vs. Greenpeace India wherein the TATA group had dragged Greenpeace
India to the Court for using its trademark, i.e. the ‘T within a circle’, in an online
game launched by the organisation on its website to promote an environmental
cause and thus infringing their trademark rights.

This is a case involving TATA Steel Ltd. and an international environmental NGO
called Greenpeace. TATA Steel Ltd. plans to set up a steel plant at Dharma Port
which is situated off the coast of Orissa and is purportedly endangering the lives of
numerous Olive Ridley turtles habituating near the port. Greenpeace initially
contended that TATA did not comply with all the requirements of the Environment
Ministry whereas TATA argued that they had got the environmental clearance.
Following thus, Greenpeace India raised serious concerns against TATA’s new
project. It launched an online game on its official website title ‘Turtle v. TATA’ in
order to generate public awareness regarding TATA’s steel port located off the
coast of Orissa, which is one of the last nesting grounds of the endangered Olive
Ridley Turtles. The game, a rendition of ‘Pac-Man’ involves the yellow turtles to
eat as many white balls and other sea animals without running into the TATA
demons. TATA Group contends that Greenpeace India infringed their trademark
rights and maligned their reputation by using the TATA’s trademark and logo, ‘the
T within a circle’ to portray the ‘demons’ in the game.

Greenpeace India has relied upon Section 29 (4) of the Trade Marks Act, 1999
which states that:

A registered trade mark is infringed by a person who, not being a registered

proprietor or a person using by way of permitted use, uses in the course of trade, a
mark which-

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which
the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark
without due cause takes unfair advantage of or is detrimental to, the distinctive
character or repute of the registered trade mark.

Greenpeace maintains that since the trademark (T within a circle) was used for
gathering public support against the construction of Dharma Port Company Ltd.
and to fairly criticise the acts of the TATA group, it in no way infringed their
trademark rights. Greenpeace contended that there was no intention to defame the
TATA group, whereas the TATA demons were used as a medium to inform the
people of the harm the new project of TATAs could cause to the already
endangered species of turtles.

Usually in cases where the infringing mark is identical with the registered trade
mark and the goods or services are also identical with the goods or services
covered by the registered trade mark the court shall presume that such mark is
likely to cause confusion in the mind of the public.

The law of trade mark in India allows the usage of one’s trade mark by another
only in certain situations. This provision has been described under Section 30 (1)
of the Trade Marks Act, 1999 and reads as follows:

Nothing […] shall prevent the use of registered trademarks by any person for the
purposes of identifying goods or services as those of the proprietor, provided the
use:

a) is in accordance with the honest practices in industrial or commercial matters,

and;

b) is not such as to take unfair advantage of or to be detrimental to the distinctive

character or repute of the trade mark.

It is important to note here that if the infringer has absolutely copied the mark and
made a facsimile repression of it, no further evidence is required to prove trade
mark infringement. When the similarity is so close so as to make it impossible to
suppose that such marks were devised independently of each other, in the absence
of evidence of a common origin, the conclusion is always that one party copied the
mark of another and suitably Greenpeace should be liable for trade mark
infringement.
However, the online game is designed as creative, peaceful and non-
confrontational platform to draw attention to the threat that the Olive Ridley Sea
Turtles are facing due to the Project.

Greenpeace India submits that its use of the TATA trademark and “T” device does
not amount to trademark infringement, as it is not commercial usage, meant to
profit or gain from the goodwill or reputation of such marks.

JUDGEMENT
The Delhi High Court has declared that Greenpeace India, which is a non-profit
organisation, has not indulged in any profit-making by launching the ‘Turtle v.
TATA’ game on its website. Also the aim of the user of the trademark was to
invite the attention of the people towards the owners of the trademark. The use of
the TATA’s logo by Greenpeace has been termed merely denominative in nature
by the Court and the use of the trademark as an object of critical comment does not
amount to infringement.

OBSERVATION

The present case involves trade mark infringement which has allegedly occurred
by way of TATA’s registered trade mark acquiring a reputation in India and the
use of an identical mark without due cause thereby being detrimental to the
distinctive repute of its registered trade mark. This case, therefore, takes into
account TATA’s logo which is a well-known trademark as under Section 2 (1) (zg)
of the Trade Marks Act, 1999. The Delhi High Court has, in its judgment, given
preference to environmental issues at hand and the need to garner public interest
and awareness. Greenpeace, in its latest initiative to inform the people of the harm
the TATA project would cause to the Olive Ridley Turtles, has flouted the basic
ethics of the business industry. The online game, which uses the TATA logo to
portray the demons has clearly defamed TATA’s reputation. Although, the
construction of the steel plant i.e. Dharma Port Ltd. by the TATA group has
become a great environmental issue and a threat to the life and continuance of the
species of the Olive Ridley Turtles, the act of Greenpeace India has indeed resulted
in trademark infringement as stipulated under Section 29 of the Trade Marks Act,
1999 thereby affecting the reputation and image of the TATA group.
Case Law: Makemytrip (India) Private Limited v. Orbit Corporate
Leisure Travels
Delhi HC: Delay Simpliciter is no Defence in Trademark Infringement Suit

In this case, the Delhi High Court delved into the law of acquiescence. In the case
the Plaintiff was aware of the Defendant’s mark and still did not take any action for
long. In view of the settled position of law of acquiescence, the Court did not
restrain the Defendant from using the mark GETMYTRIP which Plaintiff alleged
was deceptively similar to its mark MAKEMYTRIP.

Background of the case- In the instant case the Plaintiff i.e. MakeMyTrip filed
suit to restrain the defendants, from in any manner using the trademark
GETMYTRIP that allegedly infringed the plaintiff’s trademark MakeMyTrip.

Bench’s Verdict

In the case, the Delhi High Court denied any relief to the Plaintiff in view of the
following observations:

Plaintiff had knowledge of GETMYTRIP mark- That though the defendant

claimed user in the application since 2016, however the fact remained that plaintiff
with the same trademark and domain name i.e. GETMYTRIP and
www.getmytrip.com respectively had been dealing with the Hermes which is the
predecessor-in-interest of the defendant at least since 2011, thus Plaintiff had
knowledge of this trademark and domain name being used.

The Delhi High Court opined that in the present case the issue was not of delay and
latches only but of acquiescence where the plaintiff to its knowledge permitted
continued user by Hermes of the trademark GETMYTRIP and domain name
www.getmytrip.com , however now to its transferee-in-interest i.e. the plaintiff has
objection to it on the sole ground that Hermes never operated in B2C domain but in
B2B domain. In this regard it would be appropriate to note the documents filed by
the defendant placing on record copies of the screenshot of websites of Hermes
dated 10th January, 2012 showing its B2C user falsifying the claim of the plaintiff
that Hermes was not operating in the B2C space.
The Delhi High Court made reference to the case of National Bell Co. v. Gupta
Goods Manufacturing Co. (P) Ltd. & Anr., wherein the Supreme Court held that if
a registered proprietor of a mark ignores repeated infringements of its mark than it
can even be considered as an abandonment of its mark. With reference to the
instant case, the Court noted that the plaintiff was aware of the use of the
trademark GETMYTRIP since 2011 and admittedly since 2013. Thus despite the
use of the trademark GETMYTRIP plaintiff continued its business dealings with
Hermes which is the predecessor-in-interest of the defendant.

Law of Acquiescence- To arrive at its decision, the Delhi High Court made
reference to the case of Power Control Appliances v. Sumeet Machines (P) Ltd.
wherein it observed that Acquiescence is sitting by, when another is invading the
rights and spending money on it. It is a course of conduct inconsistent with the
claim for exclusive rights in a trade mark, trade name etc. It implies positive acts;
not merely silence or inaction such as is involved in laches.

That Delay simpliciter may be no defence to a suit for infringement of a trade

mark. That where a trader allows a rival trader to expend money over a
considerable period in the building up of a business with the aid of a mark similar
to his own he will not be allowed to stop his rival’s business. If he were permitted
to do so great loss would be caused not only to the rival trader but to those who
depend on his business for their livelihood.

That it is settled that the registered proprietor of trademark is not expected to

pursue each and every insignificant infringer who is of no consequence to his
business. In the present case, Hermes was holding a substantial share in the market
place. It cannot be said that Hermes was an insignificant infringer. As noted above
Hermes was also working in B2C space thus competing with plaintiff’s business.

In view of the aforesaid legal proposition and the fact that the Plaintiff suppressed
material facts, the Court stated that no case was made out against the Defendant.
Case Law: Patel Field Marshal Agencies and ANR. Vs. P.M. Diesels
Ltd. and Ors.
SC: Stay Trademark Infringement Suit in case of Rectification
Proceeding
In this noteworthy judgment, the Supreme Court has categorically stated that if a
proceeding for rectification of the trademark in question is pending before the
Registrar or the High Court, and simultaneously a suit for infringement is filed the
suit for infringement shall remain stayed.

Brief Facts:

The respondent in the case is the registered proprietor of three trade marks, the
common feature of all of which is the words “Field Marshal”.

The appellants in the year 1982 applied for registration of the trade mark
“Marshal” for their use. Having come to know of appellant’s application and
perceiving a similarity between the mark in respect of which registration was
sought by the appellants and the mark(s) registered in favour of the respondent, the
respondent served a legal Notice on the appellants to desist from using the
impugned mark.

Thereafter, in 1989, respondent approached the High Court for infringement of the
trademark “Marshal” and for perpetual injunction to restrain the appellants from
using the trading styles “Patel Field Marshal Agencies” and “Patel Field Marshal
Industries”.

In the case, the Appellants contested the validity of registration of the respondent’s
trade mark “Field Marshal” and claimed that the same was liable to be rectified in
the trade mark register.

The Delhi High Court dismissed the Respondent’s application for interim
injunction on the ground that the High Court did not have jurisdiction, both,
pecuniary and territorial, over the subject matter. In appeal, the Division Bench
reversed the decision of the single Judge and directed for consideration of the
Interlocutory Application for interim injunction on merits and granted temporary
injunction in favour of the respondent.
The appellant aggrieved by Division Bench’s order approached the Supreme Court.
The seminal issue for consideration that arose before the Supreme Court in the case
was:

Where a suit for infringement is pending wherein the issue of validity of the
registration of the trade mark in question has been raised either by the plaintiff or
the defendant and no issue on the said question of validity has been framed in the
suit or if framed has not been pursued by the concerned party in the suit by filing
an application to the High Court for rectification under Sections 111 read with
Section 107 of the Trade and Merchandise Marks Act, 1958, whether recourse to
the remedy of rectification under Sections 46/56 of the 1958 Act would still be
available to contest the validity of the registration of the Trade mark.

It would be relevant to mention here that Sections 46, 56, 107 and 111 of
Trademark Act, 1958 correspond to Sections 47, 57, 124 and 125 of the 1999 Act.

Bench’s Verdict

That Section 111 of the 1958 Act (corresponds to Section 124 of 1999 Act) which
deals with “stay of proceedings where the validity of registration of the trade mark
is questioned” specifically provides that if a proceeding for rectification of the
register in relation to the trade mark of either the plaintiff or the defendant is
pending before the Registrar or the High Court, as may be, and a suit for
infringement is filed wherein the aforesaid plea is raised either by the defendant or
by the plaintiff, the suit shall remain stayed.

That Section 111 of the 1958 Act cannot be understood to be determinative of the
true purport, intent and effect of the provisions contained therein so as to
understand the said section to be contemplating only stay of proceedings of the suit
where validity of the registration of the trade mark is questioned. Naturally, the
whole of the provisions of the section will have to be read and so read the same
would clearly show lack of any legislative intent to limit/confine the operation of
the section to what its title may convey.

That statutory provisions under the Trademark Act make it cear that questions with
regard to the validity of a Trade Mark is required to be decided by the Registrar or
the High Court under the 1958 Act or by the Registrar or the IPAB under the 1999
Act and not by the Civil Court. The Civil Court, infact, is not empowered by the
Act to decide the said question. Furthermore, the Act mandates that the decisions
rendered by the prescribed statutory authority [Registrar/High Court (now IPAB)]
will bind the Civil Court.

That all issues relating to and connected with the validity of registration has to be
dealt with by the Tribunal and not by the civil court.

That the legislature by enacting Section 111 of the 1958 Act has mandated that the
issue of invalidity which would go to the root of the matter should be decided in
the first instance and a decision on the same would bind the parties before the civil
court. Only if the same is abandoned or decided against the party raising it that the
suit will proceed in respect of the other issues, if any.
 Trademark Passing Off

The Trademark Act, 1999 under Section 27 provides for the remedy of passing off
for misuse of an unregistered trademark by the Defendant. It enumerates that no
person shall be entitled to institute any proceeding to prevent infringement of an
unregistered trademark. The law further entails that the provision shall not affect
the rights of action against any person for passing off goods or services as the
goods of another person or as services provided by another person, or the remedies
in respect thereof.

Section 27 of the Act recognizes common law rights of the trademark owner to
take action against any person for passing of goods as the goods of another person
or as services provided by another person or remedies thereof. The remedy made
available under Section 27 protects the rights of the proprietor of an unregistered
trademark to register complaint against another person for passing off his goods as
goods the goods of proprietor. An unregistered proprietor of trademark can also
oppose an application for registration on grounds as enumerated under Section 11
of the Act.

In an action of passing off, the Plaintiff has to establish prior use to secure an
injunction and that the registration of the mark or similar mark in point of time, is
irrelevant.
 Classical Trinity Test in Passing off Action
Lord Oliver in the case of Reckitt & Colman Products Ltd. v. Borden Inc.
enumerated three elements for a successful passing off action:

(1) Goodwill owned by a trader,

(2) Misrepresentation and

(3) Damage to goodwill.

Thus, the passing action is essentially an action in deceit where the common law
rule is that no person is entitled to carry on his or her business on pretext that the
said business is of that of another.

Tests in the case of passing off

The Supreme Court states that a passing off action depends upon the principle that
nobody has a right to represent his goods as the goods of some body. In other
words a man is not to sell his goods or services under the pretence that they are
those of another person. As per Lord Diplock, the modern tort of passing off has
five elements, namely

 a misrepresentation
 made by a trader in the course of trade
 to prospective customers of his or ultimate consumers of goods or services
supplied by him
 which is calculated to injure the business or goodwill of another trade (in the
sense that this is a reasonably foreseeable consequence), and
 which causes actual damage to a business or goodwill of the trader by whom
the action is brought or (in a quia timet action) will probably do so.

Further in another case, it was observed that the principle of similarity could not to
be very rigidly applied and that if it could be prima facie shown that there was a
dishonest intention on the part of the defendant in passing off goods, an injunction
should ordinarily follow and the mere delay in bringing the matter to Court was not
a ground to defeat the case of the plaintiff.
 Is fraud an essential element of passing-off?
According to Kerly -Passing off cases are often cases of deliberate and intentional
misrepresentation, but it is well-settled that fraud is not a necessary element of the
right of action, and the absence of an intention to deceive is not a defence though
proof of fraudulent intention may materially assist a plaintiff in establishing
probability of deception. The burden to prove passing off is on the Plaintiff.

The defendant may escape liability in an action for passing off if he can show that
his mark or goods, besides the essential features which are sufficient to distinguish
the same from that of the plaintiff. Thus, while in an action for infringement of a
registered trade mark the plaintiff has to establish either an use of his registered
trade mark as such or of an identical mark or of a deceptively similar mark by the
defendant, he has to establish in an action for passing off that the defendant’s mark
or goods are such that the defendant can pass off his goods as those of the plaintiff.

Difference between Trademark Infringement and Passing off

Cadbury India Limited and Ors. v. Neeraj Food Products

The difference between a passing off action and an action for trademark
infringement was expounded by the Delhi High Court in the case of Cadbury India
Limited and Ors. v. Neeraj Food Products as under:

• An action for passing off is a common law remedy whereas an action for
trademark infringement is a statutory remedy.

• Passing off action in essence is an action of deceit that is, a passing off by a
person of his own goods as those of another whereas in case of infringement, the
Plaintiff on account of being registered proprietor of the disputed trademark,
claims to have an exclusive right to use the mark in relation to those goods.
• The use by the defendant of the trademark of the plaintiff may be
prerequisite in the case of an action for infringement while it is not an essential
feature of an action for passing off.

• If the essential features of the trademark of the plaintiff have been adopted
by the defendant, the fact that the getup, packing and other writing or marks on the
goods or on the packets in which the defendant offers his goods for sale show
marked differences or indicate clearly a trade origin different from that of a
registered proprietor of the mark, would be immaterial for the case of infringement
of the trademark. The liability of the defendant for such infringement may be
absolute. In the case of passing off, the defendant may escape liability if he can
show that the added material is sufficient to distinguish his goods from those of the
plaintiff.

The distinction between passing off and infringement was examined by Judge
Clauson, wherein he opined that if you are restraining the infringement of a
registered mark, you can restrain the man from using the mark; but, restrain him
from selling the articles under the label containing that word without clearly
distinguishing his goods from the goods of the Plaintiff is quite a different thing.

The Supreme Court in a recent case (S. Syed Mohideen v. P. Sulochana Bai),
stated that passing off right is a broader remedy than that of infringement. This is
due to the reason that the passing off doctrine operates on the general principle that
no person is entitled to represent his or her business as business of other person.
The said action in deceit is maintainable for diverse reasons other than that of
registered rights which are allocated rights under the Act.
 Win-Medicare Pvt. Ltd. v Galpha Laboratories Ltd
In this case it was seen that two companies manufacturing pharmaceutical
preparations used similar name for a certain product. There arises a chance of
likelihood of confusion in cases when similar names are used. And as consumers
being illiterate recognize medicines based on trade dress and colour schemes.
There can be health problems in the pharmaceutical industry due to such deception
and confusion. Passing off someone else’s goods as its own is not right. Therefore
proper usage and implementation of law should be there to stop such harmful
process.

About the case:

Win-Medicare Pvt. Ltd. v Galpha Laboratories Ltd. and Ors. I.A. Nos.22711/2014
& 26365/2014 in CS(OS) No.3507/2014 decided on 4th January, 2016 is the case
where such confusion was created. The plaintiff company, Win-Medicare Pvt. Ltd.,
was engaged in the business of manufacturing, distributing and marketing of high
quality pharmaceutical preparations. The plaintiff’s key therapeutic segments
include antiseptics, analgesics, gastroenterology, gynaecology, dermatology and
neurocare and protein supplements. The plaintiff had launched its range of
medicinal preparations consisting of a Povidone-Iodine combination under the
trademark BETADINE in the year 1990. In or about May 2013, the plaintiff, for
the first time, became aware of the defendant No.1 when the plaintiff noticed an
advertisement appearing in Trade Marks Journal No.1584 for registration of the
mark BECTODINE-M. The plaintiff became aware of the product being
manufactured by the defendant. The plaintiff approached the Delhi High Court for
an injunction.
It was argued by the plaintiff that the trademark BETADINE has a source
identifying significance origin associated with the plaintiff alone. They held that
the mark “BECTODINE’ is deceptively similar to their mark. Both the marks have
same pronunciation and are not distinguishable to a person having imperfect
recollection. The mark “BECTODINE” has been adopted solely for the purpose of
using the reputation and goodwill of their company. The defendants had mala fide
intent. Thus the defendants were just trying to cause confusion amongst the public
and also the people in the trade. However, the defendants claimed that they had
honestly, independently honestly, independently coined, conceived and adopted the
mark BECTODINE-M for use in respect of its medicinal and/or pharmaceutical
preparation containing the molecule Povidone-Iodine. And their products using the
trademark Bectodine has been used extensively in the country since 2006.

ANALYSIS BY THE COURT:

After hearing both the parties, the court first checked for likelihood of confusion
and found that there was a probability of confusion. The Court held that where the
defendant’s mark contains the essential feature of the plaintiff’s mark combined
with other matter, the Court must consider the broad and essential features of the
two marks to come to the conclusion about whether one mark is deceptively
similar to another. They should not be placed side by side to find out if there are
differences, rather, similarity has to be judged as a whole. The overall impression
in the minds of the general public must be considered.

The court looked into certain cases like Laxmikant V. Patel v. Chetanbhai Shah &
Anr where it was held:

“A person may sell his goods or deliver his services such as in case of a profession
under a trading name or style. With the lapse of time such business or services
associated with a person acquire a reputation or goodwill which becomes a
property which is protected by courts. A competitor initiating sale of goods or
services in the same name or by imitating that name results in injury to the
business of one who has the property in that name. The law does not permit any
one to carry on his business in such a way as would persuade the customers or
clients in believing that the goods or services belonging to someone else are his or
are associated therewith. It does not matter whether the latter person does so
fraudulently or otherwise.”

The Court also referred to the judgment in Cadila Healthcare Ltd. Vs. Cadila
Pharmaceuticals Ltd., where the Supreme Court laid down several principles with
respect to trademark infringement in pharmaceuticals. The Court also referred to
the judgment in Allergan Inc. v. MilmetOftho, 1999 PTC (19) (DB) 160 where the
case of “Ocuflox” was considered. The word ‘Ocu’ was derived from Ocular and
‘Flox’ from Ciprofloxacin. The Court in this case, injuncted the use of Ocuflox on
the basis of trans-border reputation and keeping in view the interest of the public,
and held, “In the interest of the public there cannot be two medicinal preparations
bearing the same name from different sources and with different compositions.
One must go.”

JUDGEMENT:

The Court held that it was beyond doubt that the defendants had knowingly
adopted a deceptively similar mark as was evident from the identical trade dress,
colour, and similar packaging. The ‘common to trade’ defense of the defendants
was rejected in favor of prolonged use of the plaintiff and the Court granted an
injunction restraining the defendants from using the trademark “Bectodine /
Bectodine-M” or any other similar mark.

OBSERVATION

From the above-mentioned case, it can be seen how trademark infringement can
hamper a company’s reputation. And most importantly can affect human health.
Thus it is up to the courts now to give proper judgments so as to protect human
health and also a company’s business.
 Trademark Law in India and Foreign Brands
Case law: Munish Kumar Singla Trading as Chakshu Food
Products v. Jollibee Foods Corporation
Delhi HC: MNC’s can’t claim right on Trademark if they don’t use
it in India
In this recent case, the Supreme Court was confronted with non-use of the
impugned trademark and made a scathing attack on grant of injunction by the Trial
Court in the case on the very first day of decreeing the suit itself.

Factual Matrix in the case- The respondent is owner of fast food brand under the
trademark ‘Jollibee’. The word mark ‘Jollibee’ was along with an image mark of a
bee. The respondent in the case admitted that though the trademark ‘Jollibee’ with
the image of a bee was registered in favour of the respondent way back in the year
2005, and from the year 2005 till today in the year 2017, the Respondent has not
yet commenced its business in India. That the registrations of Respondent’s
trademark is on the basis of “proposed to be used basis”.

The Respondent was aggrieved by alleged use of deceptively similar mark with the
image of bee by the Appellant and prayed for injunction to restrain the appellant
from using the impugned mark. The Trial Court in the case granted injunction to
the Respondent. Aggrieved by Trial Court’s order, the Appellant approached the
Delhi High Court.

Delhi High Court’s Order and Observation

• That as per the facts of the case, the Respondent in spite of registration of its
trademark since the year 2005 has till now not commenced business in India. In
such admitted facts of a case as per the plaint itself where the respondent has not
commenced business in India.

• Dissimilar business of parties-That the business of the Respondent is of a

fast food chain and food products and the business of the Appellant is selling of
packaged spices.
• Delay in Seeking Ex-parte Injunction- That the respondent was aware about
the existence of the appellant since November 2016 i.e. since when the appellant
sought registration of wordmark ‘Chakshu’ with an image of bee. Therefore, on
filing of the suit many months later in August 2017, respondent was hit by the
principle of delay for not seeking an ex-parte injunction.

• Non-Use of Trademark by Respondent- The Delhi High Court opined that in

the present case, there was really no jurisdiction in the trial court to grant ex-parte
order as the respondent had not commenced business in India in spite of
registration of its trademark in India since the year 2005.

In this context, Delhi High Court made reference to Supreme Court’s verdict in the
case of Milmet Oftho Industries and Others vs. Allergan Inc.[1], wherein it was
held that multinational companies have no right to claim exclusivity of the
trademark if they do not enter or intend in a reasonable time to enter into business
in India and which observations squarely apply in the facts of this case where in
spite of registration since the year 2005 till today in the year 2017 the respondent
has not commenced his business in India.

In view of the aforesaid, Delhi High Court allowed the appeal and set aside Trial
Court’s order.

Section 47 of Trademark Act, 1999 provides for removal of trademark from

register on grounds of non-use of the mark. It provides that a registered trademark
may be taken off the register in respect of goods or services in respect of which it
is registered on application made in the prescribed manner. According to the
statutory provision, any person who is aggrieved that a registered trademark has
not been used for a continuous period of 5 years and 3 months from the date of
which the mark was actually entered in the register of trademarks then he can make
an application for removal of the trademark from the Register.
 LANDMARK JUDGEMENTS IN TRADEMARKS LAW
CASE LAW: CADILA HEALTHCARE LIMITED V. CADILA
PHARMACEUTICALS LIMITED

The Supreme Court’s judgement in this case is considered as one of the landmark
judgment in the field of intellectual property disputes related to the pharmaceutical
sector. In this case the Court laid down certain guidelines which should be
followed while adjudicating on the matters concerning deceptive similarity
between two trademarks of pharmaceutical products.

In this case, the two companies were the successors to the erstwhile pharmaceutical
company Cadila Group after its restructuring under Sections 391 & 394 of the
Companies Act. The appellant filed a suit for injunction against the respondent in
the District Court at Vadodara, Gujarat. The suit related to a medicine being sold
under the brand name Falcitab by the respondent which, as per the appellant, was a
brand name similar to the drug being manufactured by it under its brand name
Falcigo and the plaintiff also claimed that the same would be passed off as
appellants drug Falcigo for the treatment of the same disease in view of confusing
similarity and deception in the names.

On the other hand, the defendants claimed that the word Falci, which is the prefix
of the mark, is derived from the name of the disease called as Falcipharum
Malaria. In addition to this, the defendants also claimed that the products in
question were Schedule L drugs which can be sold only to the hospitals and clinics
only and therefore there could not even be a remote chance of confusion and
deception as the drug dealers and medical practioners are experts in the field to
distinguish between diverse drugs.

The lower court’s judgment favoured the defendant on the ground that the two
products in question differed in appearance, preparation formula and price and in
addition to these, could be sold only to hospitals and institutions and there was no
chance of deception or/of confusion specially as the drug was not meant to be sold
to any individual.

The Court observed that although both the drugs are sold under prescription but
this fact alone is not sufficient to prevent confusion which is otherwise likely to
occur. In view of the varying infrastructure for supervision of physicians and
pharmacists of medical profession in our country due to linguistic, urban, semi-
urban and rural divide across the country and with high degree of possibility of
even accidental negligence, strict measures to prevent any confusion arising from
similarity of marks among medicines are required to be taken. The Court also
observed that the purchaser of such goods in India who may have absolutely no
knowledge of English language or of the language in which the trade mark is
written and to whom different words with slight difference in spellings may sound
phonetically the same.

Henceforth the Court concluded that although the two products were to be sold on
prescription only, greater care and precaution has to be taken while dealing with
medical products and therefore since both the products are phonetically similar,
this would amount to being deceptively similar.
 CASE LAW: The Coca-Cola Company Vs. Bisleri International Pvt. Ltd

The Maaza War.

The Delhi High Court held that if the threat of infringement exists, then this court
would certainly have jurisdiction to entertain the suit.

It was also held that the exporting of goods from a country is to be considered as
sale within the country from where the goods are exported and the same amounts
to infringement of trade mark.

In the present matter, the defendant, Bisleri by a master agreement, had sold and
assigned the trade mark MAAZA including formulation rights, know-how,
intellectual property rights, goodwill etc for India only with respect to a mango
fruit drink known as MAAZA to Coca-Cola.

In 2008, the defendant filed an application for registration of the trade mark
MAAZA in Turkey started exporting fruit drink under the trade mark MAAZA.
The defendant sent a legal notice repudiating the agreement between the plaintiff
and the defendant, leading to the present case. The plaintiff, the Coca Cola
Company also claimed permanent injunction and damages for infringement of
trade mark and passing off.

It was held by the court that the intention to use the trade mark besides direct or
indirect use of the trade mark was sufficient to give jurisdiction to the court to
decide on the issue. The court finally granted an interim injunction against the
defendant (Bisleri) from using the trade mark MAAZA in India as well as for
export market, which was held to be infringement of trade mark.
 ANALYSIS
The very first thing that we realized while studying this act was that syarting a
business is not as easy as it may seem at times. We never knew that there could be
so many complications in the very first step of starting a business that is
identifying and protecting the right name and identity.

It was truly exemplary to understand that there is a righteous and law abiding
provision to protect the identity of your business.

The concept of deceptive similarity is one of the vital aspects of the trademark
regime. It is a substantial weapon brought in to use by the Courts to decide upon
complex issues of trademark infringements which are a common thing to see in
today’s world of competitive market. Fairness and just conduct of business needs a
better regime to protect the goodwill and market reputation of the players in
market. Trademarks being a vital component of the technology driven market
where in the identification of the goods are directly related to the features and
characteristics; there protection from fraud and misrepresentation is of primary
concern of the law. As we have seen in the cases discussed above, the judiciary has
evolved a variety of tests and criterias to supplement the concept of deceptive
similarity which in its statutory from suffers from vagueness.

In our opinion, it is worthy to note that the approach of the Court has never been
rigid in many matters of conflict in the intellectual property arena. The Courts have
chosen a very balanced approach while dealing with such question and have
decided upon cases based on specific facts of the cases.

We believe that the judicial decisions have led to the evolution of a touchstone
upon which trademark regime can function in a just and equitable manner.
Through our analysis of the cases discussed above we observe that the court has
taken in to account the problems which may erupt on ground of a rigid approach
for determination existence of deceptive similarity.

After closely analyzing the judicial decisions, it can be safely assumed that the
focus of the Courts have been to maintain a harmony between the rights of the
trademark owners and flourishment of the markets as well as economic growth.
In our opinion, the judicial wisdom of a balanced approach is also reflected in the
cases upon which the courts have adjudged keeping in mind, a balanced approach.

Considering the case laws cited throughout the assignment, hence forth we safely
conclud through an analysis of the judicial pronouncements that the approach of
the judiciary has been well balanced when it comes to determination of deceptive
similarity and the view has been formulated keeping in consideration the interests
of the trademark proprietors as well as the smooth functioning of competitive
market and economic prosperity.
 CONCLUSION
In conclusion we would like to state that the entire Trademarks Act, 1999
eliminates the inconvenient provisions of the old act and of course has
fostered the rights of the traders and other service providers significantly. It
is a kind of a warning to the infringers. Positively, the new Indian
Trademarks act caters to the developments in trading and commercial
practices, increasing globalization of trade and industry, the need to
encourage investment flows and transfers of technology, need for
simplification and harmonization of trademark management systems which
further gives effect to relevant judicial decisions. It was the much-awaited
legislation by the legal as well as the business community. Ultimately, the
long lingering desire has been satiated.

In order to conclude this assignment, we considered the experience to be a

learning one, wherein, we learnt various aspects of, not only the provisions
available under the Trademarks Act, 1999 but its fair and righteous
implementation by the government as well as the organisations. We
conclude this study with being more informed than ever regarding the topic
and we are certain that the knowledge gained through this experience will
be put to use in the future and would help us to have a better
understanding of an important aspect of running a business.
 ACKNOWLEDGEMENT

We would like to use this opportunity to express our gratitude to

everyone who helped us throughout this assignment.
We are grateful to Prof. Kishu Daswani & Prof Aazmeen Kasad for
guiding us through.
We would also like to thank Dr.Ashok Wadia(principal of Jai Hind
College) for providing us the infrastructure to to this assignment.
We would especially and wholeheartedly like to thank Mrs. Veena
Gvalani and Mr. Sunil Gvalani for helping us to get an in depth
knowledge on this topic.
 BIBLIOGRAPHY
https://www.advocatekhoj.com

http://www.ipindia.nic.in

https://www.indiafilings.com

https://www.legalzoom.com

https://www.vakilno1.com

https://www.legalraasta.com

https://en.wikipedia.org

https://economictimes.indiatimes.com

https://www.altacit.com

http://www.lawsofindia.org

sci.gov.in

www.indiatoday.in