CHAPTER -II

REVIEW OF LITERATURE

The researcher has made an attempt to summarise from the relevant research
studies, research works, theses, articles, journals, books in the field of trademark
law with specific reference to origins of trademark law, functions of trademark,
distinctiveness, confusion theory, dilution doctrine, infringement and passing off
actions relating to trademarks, so as to understand the scope of the research
already carried out on the subject. In the following passages, the researcher has
presented certain key findings of the earlier studies both in Indian domain and in
foreign domain, in a succinct manner.

2.1 FOREIGN STUDIES

Robert P Merges, Peter S Merkel, Mark A Lemely,12 observe that Hellenistic

author, a Greek Egyptian Horapollon, wrote his book Hieroglyphica probably
in the 5th century AD, though it was published only in the 15th century. Horapollon
considered hieroglyphs not as elements of Egyptian language, but as ideograms
conveying certain notions. Some of the hieroglyphs from Horapollon's book, for
example Phoenix bird, became a commonplace in emblematic science. They
further observe that unlike these days, there was not much of competition in
dealing with goods those days and at the most, the objects bore the symbol or
image of the person who crafted it or who owned it. Hence these markings on the
objects were called possessory marks which dates back to more than 4000 years.

Michel Solis,13 states that from ancient times human beings have been under the
process of creating and innovating things, during pre-historic period man had
made stone, jewellery, hunting materials, vessels etc, when spirituality started to
sprout up he made figurines of gods and goddesses. Originally, marks were placed
on objects to identify ownership and to deter would be thieves.

Robert P Merges, Peter S Merkel, Mark A Lemely, Intellectual Property in New Technology Age, 2003
Edition, Aspen Publishers, New York, P.529
Michel Solis, Votre PME et le Droit, 2e éd., Les Éditions Transcontinental inc., Montréal, 1994, p. 96.
 Siegrun D. Kane,14 observes that by branding goods, ancient people tried to
control low quality goods, and as the maker of the product was identified
automatically the infringers were punished. The more a trademark came to be
known, the more it inspired confidence in the goods and services to potential
clients.

Wikipedia15 states that when a mark was placed over goods, it meant that any
other third party other than the manufacturer did not have any right over it, in a
large way it helped deter people with vested interest. Since the beginning of 13th
century till the end of 16th century two kinds of marks namely Merchant Marks
and Production Marks were widely used by traders and merchants throughout
Europe. These Merchant's Marks can be considered as predecessors of modern
trademarks because, they bore names of traders and served as a guaranty that the
sold goods were of expected quality.

Mark P Mackenna,16 comments that people also started engraving their names in
ships and this was the first widely recognised method of using trademarks, where
in case of ship wreckage, identification would be possible. The other people who
started using trademarks were people doing business or in guilds started asserting
it as a mark on their goods. This made the manufacturer responsible for the quality
of the goods that are being produced and to retain their customers. One of the
driving forces for evolution for a need to protect trademarks arose from the fact
that the earlier uses of trademark was to fix liability rather than market goods. So
oods without their permission, the
urgency to seek remedy to absolve themselves from any fault or mistake or
liability arising from the low quality of goods or loss of life to the user of such
goods. Nowadays, it is up to a seller to use or not use a trademark. Modern
trademarks do not aim at identifying ownership with the goods or services as was
the case with the proprietary marks of the middle ages. Modern trademarks are an

Siegrun D. Kane, Trademark Law- A Practitioner Guide, 1989, Supplement Practising Law Institute,
New York, 1989, p. 9-10
http://en.wikipeida.org/wiki/Merchants_Mark visited on 28/01/2018
Mark P Mackenna, The Normative Foundation of Trademark Law, Notre Dame Law Review, 2007
Vol.82.5 pg 1850
 asset for the producer whereas in earlier times the trade marks were a liability.
Many of the laws like the law of bread and beer assizes fought to bring about a
mode of standardisation as well as protect the consumers so that they do not get
cheated with adulterated goods. A specific mode of measurement was fixed.

Aaron Schwabach,17 observes that in the 15th century there appeared printer's
marks, which were put on books to identify printer, for instance German printer
Johannes Gutenberg used the mark representing a double shield, which first
appeared in books published in 1462. In the 16th century emblems decorated not
only palaces and castles of noblemen, but also on inns and taverns, hence were
widely used in trade. In Great Britain the law on registration of trademarks was
enacted on August 13, 1875 and it granted to trademark holder a monopolistic
right for his mark, and also the right to sue the infringers in court on the basis
of certificate. The Department of Registration of Trademarks opened in London
on January 1, 1876. The first registered trademark was the red triangle of the
company Bass & Co., which they put on the bottles with ale. It is reported that the
said trademark is still in use.

E Stalley,18 observes that the origin of trademark law is traced to anglo-saxon law
which had its origin dating back to 1266. It was also called as the Bakers Marking
Law. As the name says, the law required bakers to place a mark on the loaves of
bread that they sold, identifying the baker. Any bread offered for sale unstamped
ffending baker
was mulcted in heavy damages.

J S Furley,19 observes that use of marks probably antedate 1275, requires every
baker to put his recognised stamp upon his bread. Marks were registered with the
local officer and were made with wood or metal and simple flower techniques and
designs were incorporated .This was basically done for easy recognition and for
standardisation of the qualities supplied, if inferior goods were being circulated
then severe action was taken and even the fraudulent bakers were fined.

Aaron Schwabach, Intellectual Property(ABC-CLIO,2007) pg 9

E Stalley,The Guilds of Florence(2nd edition-1906) pg.440:G Lastig pg 28
 Officially in England they started marking gold and silver in 1300, when the King
Edward-I enacted the law, which prohibited jewellers to sell their gold and silver
wares without previous stamping at the Goldsmith's Hall (assay office in London).
This was the birth of hallmarking of jewellery. Those who tried to counterfeit the
hallmarks were sentenced to death.

One of the earliest trademark litigation is stated to have happened in the year 1618
when a manufacturer of high quality cloth sued the producer of a low quality cloth
for using a mark belonging to the plaintiff which marking is reserved for use on
high quality cloth.

Although the mark of Bass & Co. is considered as the oldest registered in the
world, but it was not the first one among still existing trademarks. The point
is that the law on registration of trademarks was passed in the USA on July 8,
1870, and they began registering five years earlier than Englishmen. 20

Davies, Charles,21 observes that one of the important Acts in the history of
trademarks is the Law of Bread and Beer Assizes. The statute laid down a uniform
acceptable standard of measurement, it defined the statute by declaring that, by the
consent of the whole realm of England, the measure of the King was made that is
to say that an English penny, called a sterling round and without any clipping,
shall weigh thirty two wheat corns in the midst of the ear, and twenty pence do
make and twelve ounces one pound and eight pounds do make a gallon of wine,
and eight gallons of wine do make a London bushel, which is the eighth part of a
quarter.

Huffington Post22 reports that the first mark registered in the USA was one of the
Averill Chemical Paint Company, which represented an eagle holding in its beak
a pot of paint and a pennant with a slogan. However the Law of 1870 was later
repealed as it was ruled to be contradicting to the Constitution and the first

https://en.wikipedia.org/wiki/Bass_Brewery visited on 29/01/2018

Davies, Charles. The Metric System, Considered with Reference to Its Introduction Into the United
States. A. S. Barnes and Company, 1871
https://www.huffingtonpost.com/2012/12/28/pepsi-logo-timeline_n_2279676.html visited on 29/01/2018
 registration was annulled. The new law appeared in 1881. Since 1905 trademarks
are registered by the U. S. Patent and Trademark Office. Thereafter the Lanham
Act or the Trademarks Act, 1946 came to be passed.

The trademark of Pepsi Cola was registered in 1898 and since then this logo was
constantly changing along with fickle fashion. Thus the mark underwent
modifications in the design of typeface in 1905, 1908, and 1940. In 1950 there
appeared an image of cap with a logo on it, this cap was modified several times
so that only a circle was left. The latter was in 1996 transformed into three-
dimensional image of dual coloured children's ball. Probably the developers
of this device are exploiting our affection for childhood memories and try
to invoke a subconscious interest.

Frank I. Schechter23, a distinguished New York trademark attorney in his

seminal research paper pointed out explicitly that the limitations set by the notion
of likelihood of confusion can sometimes become extremely oppressive. The
same is being suggested by modern science of marketing and branding that studies
consumers conduct and influence upon them. This suggests that trademark law
is being seriously questioned as far as its most basic principle is concerned
with the likelihood of confusion doctrine since birth law relating trademarks.
This study is mainly a historical research of the use of marks in trade in medieval
and post-medieval times. He also emphasizes on how the evolution of the use of
marks in trade affected the development of law and judiciary approach in the field
of trademarks. He concludes that during medieval times the use of marks in trade
was greatly dependent on the operation and regulation of merchant guilds. Two
types of marks existed at that time, the Liability Mark and the Proprietary Mark.
Each type corresponded to a special function that marks were called to serve in
trade. The function of the liability mark was twofold: (a) to allow the guild to
identify the manufacturer of defective goods that were traced in the markets
and did not meet quality standards of guilds and attribute liability to this
manufacturer and (b) to allow the guild to identify and confiscate products that
circulated in its geographical area and did not originate from its members. The

Frank I. Schechter, The Historical Foundations of the Law Relating to Trade-Marks, op. cit.; Frank
I. Schechter, The Rational Basis of Trademark Protection, Harvard Law Review, No. 40, 1927, p.
813.
 function of the proprietary mark was to allow the merchant (owner of goods) to
identify his goods and claim legal possession under special judiciary proceedings
in case such goods were e.g. lost in a shipwreck and washed ashore.

Mohamed Amin Naser,24 states that the source and origin function of trademarks
is the main, and indeed, primary function of trademarks, and any trademark
should be able to function in this manner. Otherwise, it could not qualify as a
trademark. However, this does not mean that other functions of trademarks do not
exist; trademarks could have and in most cases have secondary functions such as
indicating quality, advertising and providing information. The quality function, as
a secondary function, differs from the source and origin function in that the latter
is a requirement in all trademarks, whereas the existence of the former is not
necessary.

Yann Basire,25 states that trademark has two patrimonial functions: a function of
identification of the sign and a function of exclusivity in the specialty for the right
on the sign.

B.G Antonopoulos,26 states that the need to protect consumers against the risk of
misrepresentation by producers of non-genuine low-quality goods and to do away
with such unethical marketing strategy constituted strong arguments in favour of
granting legal protection to trademarks. As a result, in some foreign jurisdictions
the crucial criterion for granting legal protection to trademarks was the existence
of trademark falsification or imitation, whereas in other jurisdictions it was the
existence of a risk of confusion about the origin of the goods from a particular
enterprise. Infringement of a trademark was regarded as incompatible with
contemporary commercial ethics.

Mohamed Amin Naser, Re-Examining the Functions of Trademark Law, 2008 Chicago Kent Journal of
Intellectual Property, pg 8

Working Paper No. 5, 2009, http://www.law.washington.edu/Casrip/WWIP/Papers/2009/The Patrimonial

Function of the trademark.pdf
B.G Antonopoulos, Industrial Property, 2nd Ed., 2005 pg 366
 Jacob Jacoby27 in his research study on the foundations of the human memory
and its ability to recall brand names and the play of human mind and psychology
in brand recall states that bran

organized. Given only a familiar brand name, one can supply a variety of pertinent
associated information. By connecting information with brand names stored in
memory, one is able to efficiently call into consciousness a host of relevant and
important information. A unique brand name and cohesive brand identity is
probably the single most powerful piece of information for the consumer. Among
enabling the consumer to
efficiently organize, store and retrieve information from memory. Indeed, when
consumers seek for information during pre-purchase decision making, brand name
information is the most frequently accessed type of information.

McCarthy,28 comments that a descriptive mark is one if it is descriptive of the

intended purpose, function or use of the goods, the size of the goods, the class of
users of the goods, a desirable characteristic of the goods, the nature of the goods,
or the end effect upon the user.

He illustrates further with the help of the following trademarks:

5 minutes : glue which sets in five minutes

Quick print : printing and duplication service

Joy : for perfume

Joy : for detergent

Solar glo : for sunlit signs

The Psychological Foundations of Trademark Law, New York University, Centre for Law and Business-
Working Paper # CLB-00-003, November, 1998
McCarthy on Trademarks and Unfair Competition , 2015 edition Page 11-5
 INTA29 reports that under the international conventions and national legislations,
definition of trademark encompases the sound marks also or at the least it does not
exclude sound marks. However it observes that only a few countries have
developed a methodology and standards for registration of sound marks. It notes
that these standards have been evolved on the basis of judgements and
propositions evolved on the cases prosecuted despite the limited cases so
prosecuted. Those requirements which does not require that the sound mark be
represented graphically, it requires providing some evidence to show
distinctiveness. Two of the most important aspects which confront registrations of
sound marks is as to how to represent the sound marks graphically and affixation
of the same on the wares and as to how to connect the mark with the wares.

Edward F. Maluf, Brian L. Michaelis and Kenneth L. Wilton30 comment that a

trademark can be cancelled under Section 14(3) of the Lanham Act (15 U.S.C. §
1064(3)) if, inter alia, the trademark becomes a generic name for the type of
goods or services rather than an indicator of the source of such goods or services.
This is called dilution of mark. To determine whether a mark is generic, the Act
sets forth the "primary significance test": whether the primary significance of the
registered mark to the relevant public has become the generic name for the goods
or services. They observe that the recitation of "goods or services" throughout the
Lanham Act required that the primary significance test be interpreted as requiring
that the use supporting a claim of genericide relate to the particular type of good
or service for which the mark was registered. They emphasized the distinction
between the use of "google" to generally identify search engines, on one hand, and
the use of "google" to generally describe the act of searching the internet, on the
other, in holding that even if plaintiffs could prove that the majority of the
relevant public did use "google" as a verb in a generic sense, this fact alone is
insufficient to support a jury finding of genericism as regards the trademark
.

International Trademark Association (INTA)-A Report on protection of sound marks; February, 1997
www.country-index.com/articles/article_493.pdf-Use of google as a verb does not constitute genericide
 Pfeffer Robert31states that counterfeit goods bearing trademarks resembling either
identical or similar to popular trademarks create confusion among the consumers
in the post-sale market. No comprehensive framework exists for dealing with
trade mark disputes involving such expressive marks. A proper solution would
recognise that traditional trademark doctrine and language alone would withstand
scrutiny under the relevant trademark doctrine. In search of a solution, this article
applies economic analysis to case law and commentary on expressive marks and
provides basis for evaluating expressive trademarks that is more consistent with
the aims of the trademarks law.

Mark V B Partridge32 comments that likelihood of confusion is the key term of

art in trademark law. All trademark infringement cases turn on this issue. Yet
the words alone hold little content. He beautifully explains the types of confusion
that prevail in trademarks cases. First, are those cases that involve actual mistake
between the products. At one extreme, these are the counterfeiting cases where
even experts may have a hard time distinguishing the genuine from the imitation.
These cases also involve similar packaging or names that are likely to cause a
person to mistake one product or service for that of another. Persons familiar with
PINE-SOL cleaner who encountered PINE-SOLL cleaner in a similar package are
likely to mistake it for the national brand. The second type of confusion involves
situations where the person does not mistake one product for another. In fact, it is
quite clear that they are not the same products. Other similarities, however, lead
persons to believe that both come from the same source. That is, both are put out
by the same company. Persons familiar with the BERGHOFF restaurant in
CHICAGO would not mistake BERGHOFF frozen dinners for the popular
restaurant, but they are likely to believe that the frozen dinners are put out by the
restaurant. In the final type of confusion, the person does not mistake one product
for another or believe they are put out by the same company.

Pfeffer Robert, Wake Forest Intellectual Property Law Journal, 6(1) 2006, pp 69-107
https://www.pattishall.com/pdf/LikelihoodofConfusion.pdf
 OECD33 observes that industry world-wide loses large amounts to counterfeiters.
These losses not only affect the producers of genuine items, but they also involve
social costs. The ultimate victims of unfair competition are the consumers. They
receive poor-quality goods at an excessive price and are sometimes exposed to
health and safety dangers. Governments lose out on unpaid tax and incur large
costs in enforcing intellectual property rights. There is also an increasing concern
that counterfeiting is related to other criminal activities, such as trade in narcotics,
money laundering and terrorism. It is estimated that trade in counterfeit goods is
now worth more than 5 per cent of world trade. This high level can be attributed
to a number of factors: i) advances in technology; ii) increased international trade,
emerging markets; and iii) increased share of products that are attractive to copy,
such as branded clothing and software.

Tenesa S. Scaturro34 defines different kinds of infringers in respect of domain

names. Cybersquatters are individuals or companies that register domain names
containing the trademarks of others for the purpose of profiting from the goodwill
associated with the trademark, or by selling the domain name to the trademark
owner or its competitors. Aside from this standard definition of cybersquatting,
the practice has evolved to include at least three other categories: the
pseudo-cybersquatter The cyberpirate,
rather than intending to resell a domain name to the trademark owner or highest
bidder, uses the notoriety and goodwill of the trademark to drive traffic to the
website. The cyberpirate earns revenue by either selling advertising space on the
website or generates fees for diverting traffic to third party websites. The
typosquatter registers common misspellings of trademarks to route the web user
who misspells their intended domain name to another website. For example,
typosquatters looking to prey on web users seeking information on Hewlett-
Packard, Harry Potter, Looney Tunes, and Scooby Doo have registered
<hewlittpackard.com>, <harypotter.com>, <looneytoones.com>, and
<scobydoo.com>. Typosquatters will typically link these domain names to
websites containing Google advertisements or other third-party sponsored

Organisation for Economic Cooperation and Development The Economic Impact of Counterfeiting:
1998
Tenesa S. Sacturro, Anti-cyber squatting Consumer Protection UNDRP-The First Decade: Looking Back
and Adapting Forward; Nevada Law Jounal, Vol 11: pp 877-878
 advertisements, which web users will inadvertently click on and generate revenue
for the typosquatter. Finally, the pseudo-cybersquatter merely registers the domain
name without a website and does not offer the domain name for sale.

2.2 INDIAN STUDIES

Dr.S Md. Ghouse and B.R Aswini35 observe that knowledge economy leases a
stage of urgency on understanding and managing knowledge based assets such as
innovations and know-how. Intellectual property rights have become important in
the face of changing trade environment which is characterised by the following
features namely, global competition, high innovation risks, short product cycle,
need for rapid changes in technology, high investments in research and
development, production and marketing and need for highly skilled human
resources.

Ashwani KR Bansal36, observes that the Merchants Mark indicated ownership

whereas the Production Mark indicated the Origin. Production marks were used
by guilds to guarantee quality and to control entry to particular trade.

P.Narayanan37, states that while some form of proprietary protection for marks in

to 1860. Prior to 1940 there was no official trademark Law in India. The subject
was based on common law and the same was substantially the same as that
applied in England before the passing of the fist Registration Act, 1875.
Numerous problems arouse on infringement, law of passing off etc and these were
solved by application of Section 34 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.

Dr.S Md. Ghouse and B.R Aswini, Current Trends of Intellectual Property Law in India, International
-2787
Ashwani KR Bansal, Law of Trademarks in India, Commercial Law Publishers(2001)pg 21
P.Narayanan, Law of Trademarks and Passing Off, Sixth Edition-2017, Pg 3
He further observes that although extensively used as marks in advertisements,
moving objects can only be registered as a 3D image under the Trademarks Act,
1999. Moving objects, as such, are not enabled for registration in India, however
there should not be an issue as such in their registration as long as the the
description of the mark as a moving object and the description as to how the
portions of the trademark move can be disclosed. However, USPTO supports

To overcome the aforesaid difficulties the Indian Trademarks Act was passed in
1940, this corresponded with the English Trademarks Act. After this there was an
increasing need for more protection of Trademarks as there was a major growth in
Trade and Commerce. The replacement to this Act was the Trademark and
Merchandise Act 1958.This Act was to provide for registration and better
protection of Trademarks and for prevention of the use of fraudulent marks on
merchandise. This Law also enables the registration of trademarks so that the
proprietor of the trademark gets legal right to the exclusive use of the trademark.
The objective of this act was easy registration and better protection of trademarks
and to prevent fraud.

The re-appellation of the Trademarks and Merchandise Act, 1958 gave rise to the
Trademark Act 1999. This was done by the Government of India so that the
Indian Trademark Law is in compliance with the TRIPS obligation on the
recommendation of the World Trade Organisation. 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.
It for the first time provided for protection of service marks and provided
provision of registration for collective marks, provided for differentiation between
Well Known Trademarks and trademarks in general, and also provided for
specific registration, special treatment and rights for Well Known Trademarks.
The Act of 1999 also gives police the right to arrest in case of infringement.
 There are some points of changes between the 1958 Act and 1999 Act and it can
be said that the 1999 Act is a modification of the 1958 Act, however, it has
provided exhaustive definitions of terms frequently used, enhanced punishment
for offenders, increased the period of registration and enabled registration of non-
traditional trademarks. The Rules under the Trademarks Act, 1999 was originally
called the Trademark Rules 2002. Both the Act and its set of rules came to effect
on 15th September 2003. The Trademark Rules, 2002 was superseded by the
Trademark Rules, 2017 which came into effect from 06th March, 2017. The
Trademark Act, 1999 and its Trademark Rules 2017 presently govern Indian
Trademark Laws in India.

Latha Nair G38 traces the history of trademarks back to ancient times and states
that it is hardly possible to fix the exact date when the first trademarks appeared.
Yet in 5000 BC people were producing pottery with indication of the name of the
ruling Chinese emperor, name of the manufacturer and place of making. When
East India Company was chartered by Queen of England in the year 1600, it was
customary for each such chartered company to adopt distinguishing mark or
emblem to differentiate their vessels, company and goods. She further observes
that even prior to the advent of WTO, under the GATT regime, various
international conventions and treaties were entered into by industrialised nations
in order to ease re
trade. The TRIPS under WTO has increased the need for the harmonisation of
laws. The TRIPS recognises the following treaties and conventions as regards
trademarks:

i) The Paris Convention, 1883

ii) The Madrid Agreement and the Madrid Protocol

iii) The Madrid Agreement for Indications of Origin

iv) The Vienna Agreement establishing international classification of the

figurative elements of the marks

Latha Nair. G- Legal protection of trademarks in WTO Era, Bangalore University, 2013,Chapter-2, pg 17
 iv) The Nice Agreement on classification

v) Trade Related Intellectual Property Rights under WTO

vi) The Community Trademark System of European Union

Pankaj Jain and Pandey Sangeet Rai,39 observe that

simply put is the address of a particular site on the Internet, not much different
from a telephone number. The Domain Name itself acts as a front for a number

The Domain Names map to unique Internet Protocol (IP) numbers that serve
as routing addresses on the Internet. The Domain Name System (DNS)
translates Internet names into the IP numbers needed for transmission of
information across the network. On the internet, the domain name is that part
of the Uniform Resource Locator (URL) that tells a domain name server using
the Domain Name System (DNS) where to forward a request for a web page.
The request will be obviously from the person who has accessed the internet
and logged on to that Site. The domain name is mapped to an IP address
(which represents a physical point on the Internet).

The meaning of domain name has been expanded and affirmed by the Court
practice. Thus, an interpretation of a domain name can be given as:

(i) A common address depends on the location, while the web-address is

selected by an applicant, provided that it is not identical to any other address
name;

(ii) A web-address may be often guessed, since in order to enter a site of a

firm, its name should be typed. Therefore, a domain name is not a common

goods and services for sale. A domain acquires features, which characterize
industrial property.

Pankaj Jain and Pandey Sangeet Rai, Copyright and Trademark Laws relating to Computers, First Edition
2005, Eastern Book Company pg.88
 K C Kailasam, Ramu Vedaraman40 observe that Trademakrs Act, 1999 provides
for registration of trademarks for services, in addition to goods. This need was
greatly felt with the growth of the service sector in the country. Whereas the
Trademarks and Mechandises Act 1958 made provision for registration of
trademarks only for goods, the present Act provides facility for registration of
marks for services, in addition to goods. The expres
defined comprehensively to mean service of any description, which is made
available to potential users. Furthermore, it is obligatory on India to provide

Convention [Article 1(2) read with Art. 6] and for registration under the TRIPS
Agreement [Article 15(4)] of which India is a member. The Trademarks Act of

provides for registration of trademark for services. The definition of trademark

has become enlarged so as to include services, along with shape of goods as well
as their packaging to keep in pace with the changing trends of the world. The
so been modified to include services.
Service mark can be said to be a trademark that denotes a relation with services.
Services mean services of any description which is made available to potential
users and includes the provision of services in connection with business of any
industrial or commercial matters such as banking, communication, etc.

V K Ahuja,41 observes that origin of contemporary trademark law can be traced

back to industrial
controversy over the objectives of trademark law is to look at the original purpose
of guild members during the medieval period who affixes the mark of their guild
to the goods they sold. The mark was meant to identify the goods as the product of
a particular craftsman or group of craftsmen. In addition the manufacturers also
started advertising their goods by affixing their trademarks on them. This led to
trademark acquiring good will and reputation amongst the consumers.

K.C Kailasam, Ramu Vedaraman, Law of Trademarks and Geographical Indications, 1st Edition, p. 8.
V K Ahuja, Intellectual Property Rights In India,Vol I, 2nd Edn 2009, p.447
 Wikipedia42 states that this particular aspect of intellectual property can fall
under the domains of trademark law and copyright law or other neighbouring
law concept of
property, trespass and intentional tort. In a case involving personality rights
involving brands being a well known personality like a film actor or a famous
sports person or a well know public figure, the issue to be determined is whether
a significant section of public would be misled into believing, contrary to the
fact, that an commercial arrangement existed between the plaintiff (being the
personality whose rights are infringed) and the defendant under which the
plaintiff agreed to the advertising involving his image or reputation. Well known
English footballer David Beckham, has applied for a community trademark
registration for sunglasses, hair-do, t-shirts, etc.

Zoya Nafis,43 observes that invoking Personality rights as property rights makes
sense. Celebrities build up personalities that add commercial value to their
individual's persona. The personality that they create is their property and they
are commercially profited by it. Few Indian celebrities like A.R. Rahman,
Shahrukh Khan, and Kajol have already registered their personal name as a
trademark. Others following the trend have started applying for the registration.
The fact that the Trademark Registry has allowed the registration of these
personal names as trademark shows that personality rights can be covered under
Intellectual Property. However, the need of the hour is to have a clear and
distinct legal status of these rights.

Omesh Puri44 comments that IP rights such as trademarks and copyright can be
enforced through civil or criminal litigation, while designs and patents can be
enforced only through civil litigation. The Trademarks Act punishes offences such
as falsifying or falsely applying a trademark with imprisonment of between six
months and three years and a fine of between Rs.50,000 ($770) and
Rs.200,000 ($3,076). Similar search and seizure powers are available under the
Copyright Act, which states that any police officer with the rank of at least sub-

https://en.wikipedia.org/wiki/Personality_rights visited on 15/01/2017

http://www.mondaq.com/india/x/345080/Personality+Rights+Need+For+A+Clear+Legislaton, October,
2014
Omesh Puri, India:Combating Counterfeiting; Lex Orbis, May, 2017
 inspector can seize without warrant all copies of an infringing work and the plates
used to make those copies if he or she is satisfied that a copyright
infringement offence has been, is being or is likely to be committed.

Times of India45 reports that The iconic Taj Mahal Palace, the 114 year old a Taj
property hotel under the Tata Group and which is in one of the most visited
locations in Mumbai, near the Gateway of India, has obtained trademark
registration for the architectural design of the building for the first time in India.
Thus the hotel has joined the small club of trademarked properties of the world
which includes the Empire State Building in the New York, the Eiffel Tower in
Paris and the Opera House at Sydney. It is worth to note that prior to this
registration no other architectural design of a building has ever been registered as
a trademark in India. While the Lanham Act or the Trademark Act, 1946 of the
US provides for registration of architectural design of buildings to be registered as
trademark, there is no such provision in the Indian Trademarks Act, 1999. Hence
the requirement of graphical representation which is one of the important
requirements for registration of trademarks has made a major shift to
accommodate architectural designs.

Times of India46 further reports that cocktails served in pubs and bars have sought
trademark protection. Some famous cocktails are trademarked by the distilleries.

it needs to be seen as to how these cocktail brand owners will enforce their
cocktail brands.

Times of India, Mumbai Edition dated 19th Jun, 2017

Times of India, Coimbatore Edition dated 19th January, 2018
 Suwarn Rajan,47 comments that the doctrine of reverse confusion is to enable
small and senior users to protect their trademarks rights against junior users junior
users whose marks have gained commercial strength through extensive marketing.
Accordingly, since a senior user may only learn of the junior use of the mark
through the junior user's advertising campaign, the application of the doctrine may
result in the loss to the junior user of substantial sums already invested in the
marketing and promotion of goods under the mark and, in some cases, loss of
profits in the form of damages. Reverse confusion, therefore, can be a powerful
weapon in the arsenal of lesser known companies both in terms of protecting their
trademark rights and as leverage against larger users.

Rohas Nagpal48 observes that if an owner of a domain name wants to sue a

registrant infringer, then the plaintiff has to prove that the Registrant's domain
name has been registered or is being used in bad faith. Simply put, the following
circumstances are evidence of the registration and use of a domain name in bad
faith:

1. circumstances indicating that the Registrant has registered / acquired the

domain name primarily for
a. selling,
b. renting, or
c. otherwise transferring it to the Complainant or its competitor for a profit.

2. the Registrant has registered the domain name in order to prevent the owner of
the trademark or service mark from reflecting the mark in a corresponding domain
name [provided that the Registrant has engaged in a pattern of such conduct]

3. by using the domain name, the Registrant has intentionally attempted to attract
Internet users to the Registrant's website or other on-line location.

http://www.lawyersclubindia.com/articles/Reverse-Confusion-in-Trademark/suvarn rajan-508.asp
Rohas Nagapal; IPR & Cyber Space Indian Perspective-reproduced by Asian School of Cyber
Laws,2009; p.4
 Dr.T.Ramakrishna,49 observes that in the economic point of view, a trademark is
merely a symbol that allows a purchaser to identity goods or services that have been
satisfactory in the past and reject goods or services that have failed to give
satisfaction. Microeconomic theory teaches that trademarks perform at least two
important market functions:

(1) They encourage the production of quality product; and

Thus all in all, enabling the promotion of economic efficiency. Trademarks play a
crucial role in our free market economic system. By identifying the source of goods

counterfeiting, if freely permitted, would eventually destroy the incentive of

trademark owners to make the investments in quality control, promotion and other
activities necessary to establishing strong marks and brand names. It is this result that
would have severe anticompetitive consequences.

products would be untraceable to their source. Therefore, trademarks create an

incentive to keep up a good reputation for a predictable quality of goods. An
important purpose underlying trademark law is the protection of the trademark

the mark identifies. A certain amount of image differentiation also helps consumers
select products of high quality and reliability and motivates producers to maintain

trademarks,

parasite who must be en-joinable by the law. If all may take a free ride on the
successful selle
goods and services.

Dr.T.Ramakrishna, Basic Principles and Acquisition of Intellectual Property Rights, Fourth Edition-2008,
National Law School of India University, pp.116-118
A trademark is but a species of advertising, its purpose being to fix the identity of the
article and the name of the producer in the minds of people who see the
advertisement, so that they may afterwards use the knowledge themselves and carry
it to expanded and systems of distribution became increasingly complex, trademarks
came to function as an important instrument of advertising. If the trademark owner
succeeds in creating a favourable image for its trademark in the marketplace, the
mark itself can become a significant factor in stimulating sales. This ability of a mark
to generate good will through advertising has also gained recognition under the law
of trademarks.

In the marketing of products, the promises and images that distinctive containers and
packages induce are much more than the product as the physical materials
themselves. The product purchased by a consumer includes not only the chemical
components that any competent laboratory can itemise, but host of commercial
intangibles that distinguish the product in the market place. A product is more than a
mere tangible piece of hardware. It is surrounded by a host of intangible consumer
psychological needs and desires. Thus, each product goes to the market with a
-utilitarian psychological factors. A trademark
not only symbolizes the goodwill behind the physical product, but also a penumbra of
psychological factors that surround the product. These facts of modern

likelihood of confusion between conflicting trademarks, some courts have found that

confusion.

consumers of their ability to distinguish among the goods of competing

consumers is accurate by ensuring correct information in the market place, the

trademark laws reduce losses caused by misunderstanding and deceit and thus permit
consumers and merchants to maximize their own welfare confident that the
information presented is truthful. Thus while the consumer is not directly
 protection of trademarks is merely a facet of consumer protection. As a result, the

There are some basic differences between assignment and license. Assignment is a
permanent transfer of ownership in trademark, whereas license is a temporary
transfer for use of the trademark. Assignment is with or without the assignment of
the goodwill and it is preferable to have licensing with control over the quality than
to assign without goodwill. License is revocable whereas the assignment is not
revocable. However both assignment and licensing can be subject to such conditions
as the proprietor of the trademark may impose for its valid use.

Prashanth Reddy50 observes that once

by a Registrar of Trademarks or a court of law, the Trade Mark Registry is bound

and services. Similarly at the time of

been declared a well-known trademark under Indian law, which means nobody else

industry and not just the internet industry. The commercial implications of being

Gunjan Paharia51 states that India became the 90th member of Madrid Protocol in
July, 2013. The first major change was initiated in 1999 when the new Act (of 1999,
effective from 2003) was enacted, repealing the Trade and Merchandise Marks Act

Trade Marks Act, 1999, was amended in 2010 to include Chapter IV (containing

https://groups.google.com/forum/#!msg/spicyip/ikuSi4gwkqs/3D1oQjalAwAJ
Accession to Madrid Protocol and its impact on the Brand Owners; INTA
Bulletin April 15, 2015; Volume 70 No.8
 relating to Protection of Trademarks through international registration under the
Madrid Protocol.

N.S.Gopalakrishnan & T.G.Agitha52, observe that an action for trademark

infringement is a statutory right, conferred on the registered proprietor of a registered
Trademark for the vindication of the exclusive right to its use in relation to those
goods. Passing off is a common law remedy, an action for deceit that is passing off
by a person of his own goods as those of another. In the case of infringement what
needs to be proved is that the plaintiff was the first to adopt and use the mark and the
mark is registered. In a passing off action the use of a mark for a sufficient long time
so as to be known to the public is one of the conditions precedent to the filing of such
action.

In infringement action, the issue is whether the defendant is using a trademark, which
is the same, or which is a colourable imitation of the plaintiffs registered mark.
Whereas in the passing off goods, the important thing is whether the defendant is
selling goods so marked as to be designed or calculated to mislead the purchasers
that they are goods of the plaintiffs.

Passing off action is based solely on deception. In an infringement action the plaintiff
must make out that the use of the defendant mark is likely to deceive but where the
similarity between two marks is so close and the court reaches the conclusion that
there is an imitation no further
rights are violated. If the essential features of the trade mark of a plaintiff have been
adopted by the defendant, the fact that the get-up, packaging, other writing or marks
on the goods show marked differences or indicate clearly a trade origin different
from that of the registered proprietor of the mark is immaterial.

N.S.Gopalakrishnan & T.G.Agitha, Principles of Intellectual Property, First Edition 2009, Eastern Book
Company pp.118-141
 In an infringement, the defendant must use the offending mark on the same goods for

not be same it may be allied or even different. In an infringement action, an

injunction can be issued against using the trademark. In a passing off action the
defendant is prevented not only from using the trademark but is also stopped from
using it in such a way to pass off his goods as that of another. In an infringement case
the main issue that the court is concerned with is what the defendant is doing and not
with what it might do.

The statutory recognition and protection of well known trademarks and tests for their
determination have also been inserted so as to protect the interests of persons who
have adopted and used the mark in bonafide manner.

The Trademarks Act, 1999 defines well-known trademarks in relation to any goods
or services, 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 trademark in
relation to other goods or services would be likely to be taken as indicating a
connection in the course of trade rendering of services between those goods or
services and a person using the mark in relation to the first mentioned goods and
services.

The jurisdiction of district court to entertain suits for infringement and passing off
has been made same as for infringement of copyright thus enabling a plaintiff to file
the suit in the district court within whose jurisdiction he resides or carries on
business. There has also been substantial enhancement of punishments for offences
relating to trademarks and false description.

Dr.T.Ramakrishna,53 states that in reverse confusion cases, a junior user (defendant)

adopts a mark already in use by the senior user (plaintiff). However, the junior user
dwarfs the senior user through advertising and other expenditures used to promote
he

only identify the mark with the junior user and are not confused by the dual uses of

Dr.T.Ramakrishna, Ownership and Enforcement of Intellectual Property Rights, Fourth Edition-2008,

National Law School of India University, pg.77
 the mark. Thus the use of mark by the senior user appears as though it injures the
reputation and goodwill of the junior user, thereby enabling him to take legal
recourse against the use of the mark by the senior user.

Issues in reverse confusion:

(i) Whether the plaintiff has established a goodwill or reputation in connection with a
business, profession, service or any other activity, among the general public or
among a particular class of people, prior to the first use of the defendant.
(ii) Whether the defendants activities or proposed activities amount to a
misrepresentation which is likely to injure the business or goodwill of the plaintiff
and cause of likely to cause damage to his business or goodwill.
(iii) Whether the defendant succeeds in one or more of the defences set up by him.
(iv) If the plaintiff succeeds what relief he is entitled to.

Anu Tiwari,54 comments that a passing off claim when contrasted with an action for
infringement reveals that, though common in origin, they now occupy distinct realms

statutory rights and additions in get up or trade dress may be relevant to the
defendants to escape liability. Whereas in infringement cases in which violations are
basically on statutory rights conferred under the Trademarks Act and hence facts
hardly assume any significance or precedence or relevance. Another determining
factor is the use of the mark itself. In an action for infringement the use of the mark of
the plaintiff in relation to goods is a sine qua non for action. In contradistinction, in a
passing off action it is deceit as practiced on the public is shown and per se the use of
the mark.

Soumya Bannerji55 beautifully brings out the disparity between reputation and
goodwill stating that though concept of reputation and goodwill are overlapping in
nature, yet a line of disparity tends to co-exist between them. Goodwill is an asset and
hence it is species of property which law protects. The tort revolves around the

Anu Tiwari; Passing off and Trade Dress Protection: Reflection on Colgate v. Anchor; Journal of
Intellectual Property Rights; Vol 10; November, 2005; pp 480-490;
Soumya Bannerji; Transborder Reputation; Journal of Intellectual Property Rights;Vol 11;2006; pp 274-
279
 economic policy with the need to encourage and ensure commercial stability of the
enterprises. On the other hand reputation is complex and is manifested in many
factors which lead the clients or customers to associate a particular business of one
person with that of the other. It is impossible to have goodwill without reputation, but
the converse is not possible.

Aditya Vardhan56 notes that while fictional characters are generally associated with
copyright protection, increasing commercialization has meant that the intellectual
property in these characters is no longer limited to the artistic works that created
them, but has also extended to associated goods and services, which has benefited
tremendously from the immense appeal and popularity of these fictional characters.
This is known as character merchandising. The obvious consequence of the fact that
the goodwill of these characters perform both, source-identifying as well as
promotional functions meant that in most cases, they have been protected with
trademarks.

The Department of Industrial Policy and Promotion, Ministry of Commerce and

Industry, Government of India57 while establishing National IPR Policy states that
India was regularly accused by the west about lack of proper protection of IP assets
especially in the realm of patent laws. Hence Government of India formed a think
tank with the former Chairperson of IPAB Justice Ms.Prabha Sridevan as
Chairperson. The think tank has since rolled out the National IP Policy with the new
tag line Creative India; Innovative India. The key objectives of the IP Policy is to
provide a legal framework that will provide a substantial time reduction in registering
patents and trademarks when compared to the period taken in the present
dispensation. The seven pronged IP Policy provides for the following:

(i) IP awareness outreach and promotion- To create public awareness about

public, social and cultural benefits of IPR among all sections of the society. It
espouses a nationwide program of IP awareness with an aim to improve the
awareness about the benefits of IPR's and their value to the public and the
creators of IP. It helps in building an atmosphere such that creativity and

India: IP Rights Encompassing Comic Books; Khurana and Khurana; December, 2017
www.dipp.nic.in/policies-rules-and-acts/policies/national-ipr-policy
 innovation are encouraged in public and private sectors, R&D centers,
industry and educational institutions.

(ii) Generation of IPR To stimulate generation of IP assets in the business.

Accordingly government has encouraged start-ups to register patents and
trademarks with lesser costs. As the country boasts a huge talent pool with
young graduates and technologists, any resounding success in the market will
require generation of IPRs and their commercial expoitation.

(iii) Legal and Legislative framework To have strong IPR laws which will
balance the rights of owners with the larger public interest. While IPR laws in
India are TRIPS compliant, this objective will ensure that the laws keep pace
with development of commerce.

(iv) Administration and Management To modernise and strengthen service

oriented administration such that that there is reduction of time taken for
completion of process and registration with the reduction of costs associated
with registration. The rules under the Trademarkr Act, 1999 have been
completely revamped with lesser forms and lean process administration.

(v) Commercialisation of IPR- Leveraging the commercial value of IPR assets is

the ultimate object which will make the creativity reach the common man.
Hence IP entrepreneurship is one of the important aspects which links the
creators of the IP with the investors.

(vi) Enforcement and Adjudication - To strengthen enforcement and adjudicatory

processes in combating infringement of IPR. A robust IP regime is one which
is well supported by an efficient and effective IP enforcement eco system.

(vii) Human Capital Development To strengthen and expand human resources,

institutions and capacities for teaching, research and skill building in IPRs.
Further it requires development of knowledge pool of IP professionals who
can help in IP protection and its commercial exploitation.
 Vivek Kumar Choudhary58 observ Mareva Injunctions
for freezing defendents assets so as to retrain from disposing of their assets before a
court gives its judgement. Section 135(2)(c) of the Trademarks Act, 1990 provides for
an order of injunction retraining the defendents from disposing of or dealing with his

damages, costs or other pecuniary remedies that may be finally me be finally

awarded to the plaintiff. He states that this kind of injunction was for the first time
evolved by courts in United Kingdom.

Anton Piller Order

which are passed when there is a possibility of the defendants destroying or removing
the incriminating material. The order is similar to an ex parte interlocutory order
passed by courts to seize or take an inventory of articles which are subject matter of
the suit.

Norwich Pharmacal Orders

parties who are not defendants in the suit concerned. To obtain such an order the
respondent must be a party who is involved in the wrong doing, irrespective of his
innocence, and is likely to be party to the potential proceedings. Under these orders
mostly the Customs and Excise personnel may be directed to disclose details of the
movement of goods, quantity etc to find out the suspected infringing activities.

Both Mareva Injunction and Norwich Pharmacal Orders are creations of UK

jurisprudence. are orders passed in relation to infringing goods to
seize them wherever they are located and to apply later on the person who is accused
of the infringement. This order is normally passed in respect of goods of well known
trademarks or popular brands since the identity of the infringer is not easily
ascertainable.

Protection of Well Known Trademark and Weakening of Honest Concurrent Use Defence, Journal of
Intellectual Property Rights, Vol 15, July, 2010, pp 293-301
 Federation of Chambers of Commerce and Industry (FICCI)59 partnered with The
Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce,
Government of India and issued a tool kit in January, 2017 for the police to enable
IPR enforcement which is part of one of the seven principles of National IPR Policy
of Government of India. The toolkit provides a summary of the key terms namely

copyrights and further a summary of key enforcement provisions under the

Trademarks Act, 1999, Copyright Act, 1957 and Indian Penal Code, 1860. The toolkit
also provides classification of offences under the Code of Criminal Procedure, 1973
and search and seizure powers of police in IP crimes. The highlight of the toolkit is a
general checklist and guidelines for search seizure by police in case of IP crimes. It is
expected that the IP toolkit would act as a ready reckoner for the police force to
provide the necessary fillip for taking quick action in IP offences relating to
trademarks and copyrights.

CIPM60 reports that 26 Programs for training of Police officials on IP Enforcement

have already been undertaken by CIPM in association with IP experts from law firms
and the industry, trainings have been organized in the states of Andhra Pradesh, Uttar
Pradesh, West Bengal, Madhya Pradesh, Telengana, Haryana, Jharkhand as also two
rounds of trainings in the North-East Police Academy (which included participants
from 9 states) and three rounds at Sardar Vallabhbhai National Police Academy,
Hyderabad. An advisory has been issued by the Ministry of Home Affairs to all State
Police Academies to incorporate IPR in their training curriculum for both regular and
in service police officers. CIPM has written to all State Police Academies to
undertake these training programs and include IPR as a subject in their training
curriculum.

http://dipp.gov.in/sites/default/files/IPR_EnforcementToolkit_06January2017_0.pdf-Issued by
Department of Industrial Policy and Promotion, Ministry of Commerce and Industry, Government of India
in association with Federation of Indian Chambers of Commerce and Industry (FICCI)
IPR Regime in India, January, 2018- Report prepared by Cell for IPR Promotion and
Management(CIPM), DIPP, Ministry of Commerce, Government of India.
2.3 RESEARCH GAP

While there is an enormous amount of research study and publications on the

various aspects and components generally under intellectual property rights and
particularly under trademark law, the researcher could not find either a specific
study or a detailed study on the domain comparisons of trademarks law or a
comparative study of the Indian trademarks law (either of the erstwhile Trade and
Merchandises Marks Act, 1958 or the present Trademarks Act, 1999) vis-a-vis the
Lanham Act or the Trademarks Act, 1946 (Title 15 of United States Code). The
researcher could find an expansive research in the fields of theory of confusion
and doctrine of dilution under the respective trademarks law of India and the US.
After a thorough and detailed search, the researcher perceived confidently that so
far, no comparative study or an analysis has been made on the provisions
governing Theory of Confusion / Deception and Doctrine of Dilution under the
Trademarks Act, 1999 and the Lanham Act or the Trademarks Act, 1946 (Title 15
of United States Code). Further no researcher has compared and analysed the
extent to which the provisions governing the Theory of Confusion / Deception and
Doctrine of Dilution under the Trademarks Act, 1999 and the Lanham Act or the
Trademarks Act, 1946 (Title 15 of United States Code), either confer or differ as
regards the said legal concepts. Hence, as stated in the Statement of the Problem,
the researcher has attempted to fill this research gap by carrying out research on
Theory of Confusion and Doctrine of Dilution in Policing and Enforcement of
Trade Marks under the Trademarks Act, 1999 and the Lanham Act or the
Trademarks Act, 1946 (Title 15 of United States Code) comprised herein.