10 - Chapter 3 PDF

CHAPTER III
COMPARATIVE STUDY OF ACTS GOVERNING TRADEMARK LAW IN

INDIA AND THE UNITED STATES OF AMERICA
3.1 INTRODUCTION
Trademarks are one of the most common amongst intellectual property, due to their
association with common man in the course of his day to day living. Unlike patents
or industrial designs, while the law does not make registration of trademarks
compulsory for its legal recognition, registration of a trademark offers multitude of
benefits for the proprietor of the trademark. The common law, more specifically
law of torts, provides protection to an unregistered trademark against passing off.
However the remedy available under the common law is not arising from any
specific legal provision but due to well laid out judicial ratios and precedents
arising out of customary law. Whereas in respect of a registered trademark, in India,
the Trademarks Act, 1999 provides for protection against any infringement arising
out of confusion and / or dilution. The Delhi High Court in Cable News Network
LLP v. CAM News Network Limited61 while dealing with the claim for
ed as under which
sums up need for registration of trademarks:
common law, it is only with the advent of the capitalist-consumerist culture that
their importance has been recognised. The most common form of proprietary rights
in names is those which are vested in trademarks. A trademark is much more than
just a name or symbol of identity that a trader adopts in relation to his goods and
services; it is the repository of his business' hard-earned goodwill and reputation in
the market. A huge amount of business capital is invested in the promotion and
marketing of trademarks which have presently come to be identified with a myriad
of roles' from creating brands out of goods and services to defining the market
trend, from endorsing business ideologies to even espousing social causes
However, this is just one side of the picture. The huge stakes involved in
2008 (36) Patent and Trademark Cases(PTC) 255 Del

trademarks has made them susceptible to economic vices such as infringement and
Thus protection of trademarks which are the repository of business goodwill

becomes essential and one way of achieving it is to register the trademarks. As
stated earlier, though the law does not require compulsory registration of
trademarks, however, their registration provides tangible benefits to the proprietor
of the trademark. An unregistered trademark, in the absence of any laid out
procedural law to enable its protection, has to rely on common law for its
protection. An aggrieved proprietor of an unregistered trademark has to first
establish his ownership to his trademark by adducing documentary evidence, prior
since there can be counter claim by concurrent honest users, concurrent users of
popular trademarks in geographical area larger than the aggrieved proprietor etc
which can deny or dent the ownership claim to the trademark of the aggrieved
proprietor. Further in passing off when a suit is settled between a plaintiff and
defendant, the same does not become applicable to any other person who may be
has to conduct multiple suits against each of such persons who pass of his
trademark as theirs. Hence registration of trademark makes sense as it provides an
easy mechanism of recognition of ownership and also prescribed well laid out
protection measures in case of infringement or wrong use.
Registration of trademarks under the applicable law provides the following

benefits:
a) Registration helps in proving ownership of the trademark on the applicant.
b) In all trademark proceedings registration of a trademark per se acts as a

validity of registration resulting in immediate proof of ownership.
c) Registration confers exclusive right on the proprietor to use the mark in the
course of trade in respect of class of goods or services that are subject matter
of registration.
e) Registered proprietor can license his trademark or transfer the ownership in

the trademark by way of assignment.
f) Registered proprietor can avail the benefits of

subject to the process laid out in the law.
g) Registration process acts as information to public thereby dissuading any

person to adopt a trademark that is identical or similar to the registered
trademark.
h) India being a member of Paris Convention, home registration of trademark

enables registration of the trademark in other convention countries with a
priority date as per the process laid out in law.
i) India being a member of Madrid Protocol, and registered proprietor under the
Indian law can seek registration in over 90 countries across the globe using
the home trademarks registry to file and process the applications.
3.2 A BRIEF HISTORY OF TRADEMARK LAW IN INDIA
The first statute based law in India was enacted in 1940 called the Trademarks Act,
1940. Prior to this Act, the law governing trademarks owed its existence on
common law principles of passing off and law of equity adopted from the British
common law principles and on the basis principles laid out in Indian Penal Code,
1860. The Trademarks Act, 1940 was enacted based on the English trademarks law
of UK Trademarks Act, 1938. The Trademarks Act, 1940 was repealed by the
Trade and Merchandise Marks Act, 1958. The 1958 Act provided for exhaustive
rules for registration, opposition, licensing, assignment and infringement
proceedings. With the India acceding to WTO and TRIPS agreement, the 1958 law
came to be superseded by the present Trademarks Act, 1999. Recently with affect
from 06thMarch, 2017 the new Trademarks Rules, 2017 in place of earlier rules.
3.3 A BRIEF HISTORY OF TRADEMARKS LAW IN UNITED STATES OF

AMERCIA
United States of America (US) being one of the major economies was first to
legislate trademark law. During the period of colonisation, US also had adopted the
common law principles in trademark protection in its colonies. Post independence,
the US Congress for the first time enacted the federal Trademarks Act, 1870 which
was subsequently struck down by the US Supreme Court. Later the US Congress
passed a Trademarks Act in 1881 which was widely amended in 1905. The present
act namely the Trademarks Act, 1946 otherwise known as the Lanham Act came to
be enacted in 1946. The Lanham Act is the primary law for federal registration of
trademarks in US. The Lanham Act was amended by the Federal Trademark
Dilution Act, 1995, Trademark Dilution Revision Act, 2006 and further by the
Anticybersquatting Consumer Protection Act, 1999.
The Code Laws of United States of America or United States Code (USC) is the
official compilation and codification of all laws in US. The USC contains 53 titles
and the Trademarks Act, 1946 is listed under Title 15 of the USC. Every Section
under each law listed under the Title to the USC bears the reference to the Title and
the Section in seriatim there under. For example, the Trademarks Act, 1946 is
referred to as USC 15 and the Section 1 there under bears a cross reference to
Section 1051 of USC. Thus Section 1 of US Act will be referred to as Section 1(15
USC Section 1051). For the sake of brevity and easy reference, the cross reference
to relevant Title, Section number is not made in this chapter.
3.4 A SELECT COMPARATIVE STUDY OF THE TRADEMARKS ACT, 1999
OF INDIA WITH THE TRADEMARKS ACT, 1946 OF THE UNITED
STATES OF AMERICA
Considering the enormity of the subject and also considering the object of the
study being limited to the Theory of Confusion and Doctrine of Dilution in
policing and enforcement of trademarks under the Indian Act and the US Act, the
researcher has adopted the following scope of study. For the sake of brevity the
d the
3.4.1 Scope of the study under the Indian Act and the US Act:
a) Definitions Mark, Trademark, Service Mark, Registered Trademark, Use

in Commerce, Colourable Imitation, Deceptively Similar, Counterfeit,
Domain name, Register, Principal Register, Supplementary Register, Well
Known Trademark.
b) Law governing registration of trademark Sections 9 and 11 of Indian Act

and Section 2 of the US Act.
c) Law governing the Theory of Confusion Section 29(1), (2) and (3) of the
Indian Act and Section 32 of US Act.
d) Law governing Doctrine of Dilution Section 11(2) and (6), Section

29(4), (5) and (8) of the Indian Act and Section 43 of the US Act
e) Supplementary legislations in India and US having relevance to protection

of trademarks.
3.4.2 Comparative Analysis of Key Definitions under the Indian Act and US Act:
3.4.2.1 Mark:
Section 2(1)(m) of the Indian Act reads as:

heading, label, ticket, name, signature, word,
letter, numeral, shape of goods, packaging or combination of colours or any
combination thereof;
Section 45 of the US Act defines Mark as:

k, or
certification mark.
3.4.2.1.1 Comparative Analysis
i.e., it being an indication or tool or a sign or a symbol for identification. The

definition being inclusive, the
thus not limited by the words used in the definition. Thus the definition is
restrictive in nature and can include non-conventional trademarks like smell,
touch and feel, sound and other sensory perceptions in the ambit of the definition.
kinds of trademarks capable of being registered under the US Act. As such the
definition under the US Act does not specify the components of a mark like the
definition under Indian Act. However under the US Act the definition of the term
Hence the focus of the definition of the
towards its nature of description or identification, while the focus under the US
kinds of trademarks capable of registration under the Act.
3.4.2.2 Trademark:
Section 2(1)(zb) of the Indian Act reads as under;
capable of distinguishing the goods or services of one person from those of others
and may include shape of goods, their packaging and combination of colours;
and
(i) in relation to Chapter XII (other than section 107), a registered trade mark or a
mark used in relation to goods or services for the purpose of indicating or so as to
indicate a connection in the course of trade between the goods or services, as the
case may be, and some person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in
relation to goods or services for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or services, as the case may
be, and some person having the right, either as proprietor or by way of permitted
user, to use the mark whether with or without any indication of the identity of that
person, and includes a certification trade mark or collective mark;
Section 45
combination thereof
(1) Used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to
register on the principal register established by this chapter, to identify and
distinguish his or her goods, including a unique product, from those manufactured
or sold by others and to indicate the source of the goods, even if that source is
unknown.
3.4.2.2.1 Comparative Analysis:
a) The definition under the Indian Act is more exhaustive as it describes as to
defined to refer the nature of the mark or the sign, the definition of
trademark provides certain qualifications w
b) The requirements under the said definition is twofold -

capable of being represented graphically, capable of distinguishing goods
or services of one person from that of another. Thus the principle under the
Indian Act is that
Apart from the above, the definition also includes certain
kinds of trademarks like shape of goods, combination of colours,
packaging etc.
c)
Act). Further the definition also

requires use by a person or a bona fide intention to use the same in the
course of commerce and applies for registration in the principal register
under the said Act. Further the trademark has to distinguish the goods
manufactured or sold by one person from others. Further the trademark is
required to indicate the source of goods, even if the source is not known.
d) Graphical representation of trademark is not insisted in the definition,

though the same is insisted as a process procedure while filing application
seeking registration of trademark.
e)
which differs from the definition under the Indian Act on the aspect of
requirement of use or a bonafide intention to use and to act as a source
indicator.
f)
definition whereas the indication as to the source of goods or services is
subsumed in the definition.
3.4.2.3 Use in Commerce:
i. There is no
Section 2(1)(zb) of the Indian Act subsumes the use of such Trademark
in connection with the trade so as to indicate a connection in course of
trade between the goods or services and some person having a right
either as a proprietor or permitted user to use the mark, whether with or
without the identity of the person.
ii. Section 45
ordinary course of trade, and not made merely to reserve a right in a

mark. For purposes of this chapter, a mark shall be deemed to be in use
in commerce
1.on goods when

A. it is placed in any manner on the goods or their containers or
the displays associated therewith or on the tags or labels
affixed thereto, or if the nature of the goods makes such
placement impracticable, then on documents associated with
the goods or their sale, and
B. the goods are sold or transported in commerce, and on
services when it is used or displayed in the sale or
advertising of services and the services are rendered in
commerce, or the services are rendered in more than one
State or in the United States and a foreign country and the
person rendering the services is engaged in commerce in
connection with the services.
a. As stated above though there is no separate definition for the term
course of commerce or trade is essential for its protection, though

the same is not a sine qua non for registration of a trademark.
b.
bonafide, also specifies the nature of use of the mark by placing in
any manner on the goods or displayed while rendering services.
3.4.2.4 Colourable Imitation:
i.
under:
A mark shall be deemed to be deceptively similar

to another mark if it so nearly resembles that other mark as to be likely to
deceive or cause confusion;
ii. Section 45
registered mark as to be likely to cause confusion or mistake or to deceive.
It can be seen though both the Indian and US Act do not have same
terminologies but they can be said to have in pari materia in the context
.
Thus it can be seen that both the Indian and US Act addresses the same
subject of a deceiving mark or a trademark capable of causing confusion in
the same meaning and context, however with different terminologies.
3.4.2.5 Counterfeit:
i. There is no definition
However the Indian Act under Chapter XII dealing with procedure
relating to offences and penalties provides for dealing with goods with
false description. However it is worthwhile to note that Section 28 of
the Indian Penal Code (IPC) provides for a definition for the term
causes a thing to resemble the another so as to result in deception or

knowing that making such resembling thing or its practice is likely to
deceive.
ii. Section 45
substantially indistinguishable from, a registered mark.

In the absence of identical or similar term under the Indian Act,

comparative analysis does not arise. However the import of the
definition for the term under the IPC and the US Act is such that both
provides the effect that a counterfeiting thing makes it
indistinguishable with the original thereby causing deception.
3.4.2.6 Domain Name
i.
definition is an inclusive definition. The Supreme Court in Rediff

Communication Limited v. Cyberbooth held for the first time that
domain name is a trademark.
ii. However the US Act under Section 45
registered with or assigned by any domain name registrar, domain name

registry, or other domain name registration authority as part of an
electronic address on the Internet.
In the absence of identical or similar term under the Indian Act,

comparative analysis does not arise. However it is worthwhile to note that
jurisprudence can be said to be similar.
(2004) 6 Supreme Court Cases(SCC) 145

3.4.2.7 Principal Register and Supplementary Register
i. The Indian Act defines the term Register under Section 2(t)which
reads as under:
-section
(1) of section 6;
Section 6(1) states that Register of Trademarks shall be kept in the

head office of the Trade Marks Registry, wherein shall be entered all
registered trademarks with the names, addresses and description of the
proprietors, notifications of assignment and transmissions, the names,
addresses and descriptions of registered users, conditions, limitations
and such other matter relating to registered trademarks as may be
prescribed.
ii. Section 45
1051 to 1072 of this

register provided for by Sections 1091 to 1096 of this title.
The Indian Act recognises one single Register which will contain the names of
the trademarks registered, matters relating to licensing, assignment and other
notifications relating to a trademark. The US Act recognises two different
registers Principal and Supplementary. While the Principal Register will
contain trademarks which are registered and are per se distinctive in nature,
the Supplementary Register contains trademarks which are not distinctive or
which are descriptive. A registration in the Principal Register also means that
the mark has proven continuous extensive use. The marks registered under
Supplementary Register are not per se capable of being registered under the
Principal Register. A mark which has foreign origin and not in use prior in US
jurisdiction will be registered in the Supplementary Register. However a mark
registered in Supplementary Register can pre-empt a prospective similar or
identical mark to be registered in the Principal or Supplementary Register. A
mark which is registered under the Principal Register cannot be contested after
5 years while a mark registered under Supplementary Register does not
achieve that status. Thus it can be said that US follows federal structure of
governance when it comes to registration of trademarks, while India follows a
unitary register process.
3.4.2.8 Well-known Trademark
i. -
Section 2(1)(zg) which reads as under:
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.
ii. There is no equivalent term defined under the US Act. However Section
mean a mark which is famous and is widely recognised by the general

consuming public of US as designation of source of goods or services of
the owner.
Except for the difference in terminology, the concepts under the Indian Act
and US Act relate to the same principles of a well known trademark or
famous mark. The US Act also under Section 43 provides for certain
relevant factors which Courts may consider to ascertain whether the
trademark can be considered as a famous mark. However in Indian Act
Section 11 provides for a detailed analysis and process for considering a
trademark as a Well Known Trademark. Further the Trademark Rules,
2017 has laid out a procedure providing powers to the Registrar to register
a Well Known Trademark after following due process.
3.4.3 Comparative Analysis of Law governing registration of trademark

Sections 9 and 11 of Indian Act and Section 2 of the US Act
3.4.3.1 Section 9 of the Indian Act
Section 9 on Absolute grounds for refusal of registration reads as under:
1. The trade marks
(a) Which are devoid of any distinctive character, that is to say, not
capable of distinguishing the goods or services of one person from those
of another person.
(b) which consist exclusively of marks or indications which may serve in

trade to designate the kind, quality, quantity, intended purpose, values,
geographical origin or the time of production of the goods or rendering of
the service or other characteristics of the goods or service; (c) which
consist exclusively of marks or indications which have become customary
in the current language or in the bona fide and established practices of the
trade, shall not be registered: Provided that a trade mark shall not be
refused registration if before the date of application for registration it has
acquired a distinctive character as a result of the use made of it or is a
well-known trade mark.
2. A mark shall not be registered as a trade mark if
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious

susceptibilities of any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of
Improper Use) Act, 1950 (12 of 1950).
3. A mark shall not be registered as a trade mark if it consists exclusively

of
(a) The shape of goods which results from the nature of the goods
themselves; or
(b) The shape of goods which is necessary to obtain a technical result; or
(c) The shape which gives substantial value to the goods. Explanation.
for the purposes of this section, the nature of goods or services in relation
to which the trade mark is used or proposed to be used shall not be a
ground for refusal of registration.
Relative grounds for refusal of registration reads as under

1. Save as provided in section 12, a trade mark shall not be registered if,
because of
(a) its identity with an earlier trade mark and similarity of goods or
services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of
the goods or services covered by the trade mark, there exists a likelihood
of confusion on the part of the public, which includes the likelihood of
association with the earlier trade mark.
2. A trade mark which
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those
for which the earlier trade mark is registered in the name of a different
proprietor, shall not be registered if or to the extent the earlier trade mark
is a well-known trade mark in India and the use of the later mark without
due cause would take unfair advantage of or be detrimental to the
distinctive character or repute of the earlier trade mark.
3. A trade mark shall not be registered if, or to the extent that, its use in India is
liable to be prevented
(a) by virtue of any law in particular the law of passing off protecting an
unregistered trade mark used in the course of trade; or
(b) by virtue of law of copyright.
4. Nothing in this section shall prevent the registration of a trade mark where
the proprietor of the earlier trade mark or other earlier right consents to the
registration, and in such case the Registrar may register the mark under
special circumstances under section 12. Explanation. for the purposes of
this section, earlier trade mark means
(a) a registered trade mark or an application under section 18 bearing an

earlier date of filing or an international registration referred to in section
36E or convention application referred to in section 154 which has a date
of application earlier than that of the trade mark in question, taking
account, where appropriate, of the priorities claimed in respect of the
trademarks;
(b) a trade mark which, on the date of the application for registration of the
trade mark in question, or where appropriate, of the priority claimed in
respect of the application, was entitled to protection as a well-known trade
mark.
5. A trade mark shall not be refused registration on the grounds specified in sub-
sections (2) and (3), unless objection on any one or more of those grounds is
raised in opposition proceedings by the proprietor of the earlier trade mark.
6. The Registrar shall, while determining whether a trade mark is a well-known

trade mark, take into account any fact which he considers relevant for
determining a trade mark as a well-known trade mark including
(i) the knowledge or recognition of that trade mark in the relevant section
of the public including knowledge in India obtained as a result of
promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade
mark;
(iii) the duration, extent and geographical area of any promotion of the
trade mark, including advertising or publicity and presentation, at fairs or
exhibition of the goods or services to which the trade mark applies;
(iv) the duration and geographical area of any registration of or any

application for registration of that trade mark under this Act to the extent
that they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark, in
particular the extent to which the trade mark has been recognised as a
well-known trade mark by any court or Registrar under that record.
7. The Registrar shall, while determining as to whether a trade mark is known or

recognised in a relevant section of the public for the purposes of sub-section
(6), take into account
(i) The number of actual or potential consumers of the goods or services;
(ii) The number of persons involved in the channels of distribution of the

goods or services;
(iii) the business circles dealing with the goods or services, to which that
trade mark applies.
8. Where a trade mark has been determined to be well known in at least one
relevant section of the public in India by any court or Registrar, the Registrar
shall consider that trade mark as a well-known trade mark for registration
under this Act.
9. The Registrar shall not require as a condition, for determining whether a trade
mark is a well-known trade mark, any of the following, namely:
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has been filed in
India;
(iv) that the trade mark

(a) is well-known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been filed in,
any jurisdiction other than India; or
(v) that the trade mark is well-known to the public at large in India.
10. While considering an application for registration of a trade mark and

opposition filed in respect thereof, the Registrar shall
(i) protect a well-known trade mark against the identical or similar

trademarks;
(ii) take into consideration the bad faith involved either of the applicant or
the opponent affecting the right relating to the trade mark.
11. Where a trade mark has been registered in good faith disclosing the material
information to the Registrar or where right to a trade mark has been acquired
through use in good faith before the commencement of this Act, then, nothing
in this Act shall prejudice the validity of the registration of that trade mark or
right to use that trade mark on the ground that such trade mark is identical
with or similar to a well-known trade mark.
3.4.3.3 Section 2 of the US Act
Section 2 (15 U.S.C. § 1052) on l

reads as under:
No trademark by which the goods of the applicant may be distinguished

from the goods of others shall be refused registration on the principal
register on account of its nature unless it
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or

matter which may disparage or falsely suggest a connection with persons,
living or dead, institutions, beliefs, or national symbols, or bring them into
contempt, or disrepute; or a geographical indication which, when used on
or in connection with wines or spirits, identifies a place other than the
origin of the goods and is first used on or in connection with wines or
spirits by the applicant on or after one year after the date on which the
WTO Agreement as defined in section 3501(9) of title 19 enters into force
with respect to the United States.
(b) Consists of or comprises the flag or coat of arms or other insignia of

the United States, or of any State or municipality, or of any foreign nation,
or any simulation thereof.
(c) Consists of or comprises a name, portrait, or signature identifying a

particular living individual except by his written consent, or the name,
signature, or portrait of a deceased President of the United States during
the life of his widow, if any, except by the written consent of the widow.
(d) Consists of or comprises a mark which so resembles a mark registered

in the Patent and Trademark Office, or a mark or trade name previously
used in the United States by another and not abandoned, as to be likely,
when used on or in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive: Provided, That if the
Director determines that confusion, mistake, or deception is not likely to
result from the continued use by more than one person of the same or
similar marks under conditions and limitations as to the mode or place of
use of the marks or the goods on or in connection with which such marks
are used, concurrent registrations may be issued to such persons when they
have become entitled to use such marks as a result of their concurrent
lawful use in commerce prior to (1) the earliest of the filing dates of the
applications pending or of any registration issued under this chapter; (2)
July 5, 1947, in the case of registrations previously issued under the Act of
March 3, 1881, or February 20, 1905, and continuing in full force and
effect on that date; or (3) July 5, 1947, in the case of applications filed
under the Act of February 20, 1905, and registered after July 5, 1947. Use
prior to the filing date of any pending application or a registration shall not
be required when the owner of such application or registration consents to
the grant of a concurrent registration to the applicant. Concurrent
registrations may also be issued by the Director when a court of competent
jurisdiction has finally determined that more than one person is entitled to
use the same or similar marks in commerce. In issuing concurrent
registrations, the Director shall prescribe conditions and limitations as to
the mode or place of use of the mark or the goods on or in connection with
which such mark is registered to the respective persons.
(e) Consists of a mark which, (1) when used on or in connection with the
goods of the applicant is merely descriptive or deceptively misdescriptive
of them, (2) when used on or in connection with the goods of the applicant
is primarily geographically descriptive of them, except as indications of
regional origin may be registrable under section 1054 of this title, (3) when
used on or in connection with the goods of the applicant is primarily
geographically deceptively mis-descriptive of them, (4) is primarily
merely a surname, or (5) comprises any matter that, as a whole, is
functional.
(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and
(e)(5) of this section, nothing herein shall prevent the registration of a
goods in commerce. The Director may accept as prima facie evidence that
the mark has become distinctive, as used on or in connection with the
continuous use thereof as a mark by the applicant in commerce for the five
years before the date on which the claim of distinctiveness is made.
Nothing in this section shall prevent the registration of a mark which,
when used on or in connection with the goods of the applicant, is primarily
geographically deceptively misdescriptive of them, and which became
enactment of the North American Free Trade Agreement Implementation

Act. A mark which would be likely to cause dilution by blurring or
dilution by tarnishment under section 43(c), may be refused registration
only pursuant to a proceeding brought under section 13. A registration for
a mark which would be likely to cause dilution by blurring or dilution by
tarnishment under section 43(c), may be canceled pursuant to a proceeding
brought under either section 14 or section 24.
3.4.3.4 Comparative Analysis:
a. The Indian Act under Section 9 identifies certain characteristic features

which are per se deemed not distinctive or devoid of distinctive character.
One of the basic qualifications for a trademark is its distinctive or
distinguishing feature or its ability to distinguish goods or services of one
person from that of another. Hence a mark which is not distinctive or
which is descriptive or suggestive of quality, kind, quantity, intended
purpose, geographical origin or which consists of marks which become
generic or customary in the current language are deemed not capable of
registration. Further a mark which is of such nature that it can cause
deception or cause confusion to public, or likely to hurt religious
susceptibilities of any class of public, or which is scandalous or prohibited
by the Emblems and Names (Prevention of Improper Use) Act, 1950.
Further a trademark which exclusively consists of shape of goods can be
registered, unless, the shape results from the nature of the goods, or to
obtain technical result or shape gives substantial value to the goods. Since
the above factors goes against the grain of the important function of
trademark being the distinguishing feature, the above grounds are called
absolute grounds for refusal. Hence when a mark fall under any other
categories mentioned above the application for registration of such mark
will be summarily rejected by the Registrar.
The Indian Act under Section 11 deals with much more complex aspects as
regards identical or similarity in trademark vis-a-vis the trademarks
already registered or in the process of registration. The grounds of
objection under
Section 11 of the Indian Act dealing with relative grounds of refusal reads
as under:
i. Applicant mark being identical to earlier trademark and
goods or services being similar to goods or services covered
under the earlier trademark
ii. Applicant mark being similar to earlier trademark but the

goods or services covered by it is either similar or identical
to the goods or services covered by the earlier trademark.
However this objection can be raised only in opposition
proceedings.
iii. Applicant mark is identical or similar to earlier trademark

and the goods or services covered by it is not similar to the
goods or services for which the earlier trademark is
registered, provided the earlier trademark is a well known
trademark. However this objection can be raised only in
opposition proceedings.
iv. Applicant mark could be prevented under law of passing off

or under the Copyright Act. However this objection can be
raised only in opposition proceedings.
v. If the proprietor of an earlier registered trademark consents

to registration of a trademark then the Registrar can register
the same under special circumstances.
vi. Section 11 provides for a detailed process to classify a

trademark as Well-known Trademark and provides power
to the Registrar of Trademarks to register the same.
b. The US Act under Section comprises all of the absolute grounds

under Section 9 of the Indian Act and relative grounds under
Section 11 of Indian Act. It provides specific objection relating to
geographical indications in respect of wines and spirits, whereas
Indian Act provides a general objection to all geographical
indications. Further the US Act provides for objections on the
grounds of a mark resembling flag, coat of arms or other insignias,
name, signature, portrait of a person living or dead. However
widow of a dead person can provide consent for registration to use
the name, portrait or signature of that dead person. The Indian Act
takes care of all these things under the Emblems and Names
(Prevention of Improper Use) Act, 1950 however, there is no
concept of a mark getting prohibited from registration just because
it is similar or identical to the name of a dead person unless such a
person is recognised as a national icon as specified in the above
Act. Further, the provisions are in place to refuse registration on
account of confusion, deception, mis-description, mistake or
descriptive nature of the marks. Further a mark which has become
distinctive by continuous use of five years or more can be
registered subject to the application of the objections stated above.
There is no concept of a trademark getting to a not-challengeable
position after 5 years in Indian Act. Further a mark may be refused
registration if it were likely to cause dilution by blurring or dilution
by tarnishment under Section 43(c) of the US Act. While these
concepts are not expressly stated in the Indian Act, they are well
covered in its general language.
c. Thus it can be seen that the provisions in relation to objections or

refusal to register trademarks on an application is similar in many
aspects with exception of certain additional grounds provided in
the US Act especially with regard to aspects relating to dilution of
trademark.
3.4.4 Law governing the Theory of Confusion Section 29 of the Indian Act and
Section 32 of US Act.
Infringement of registered trademarks

as under:
(1) 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 is identical with, or deceptively similar to,
the trade mark in relation to goods or services in respect of which the trade
mark is registered and in such manner as to render the use of the mark
likely to be taken as being used as a trade mark.

course of trade, a mark which because of
(a) its identity with the registered trade mark and the similarity of the
goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity
of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods
or services covered by such registered trade mark, is likely to cause
confusion on the part of the public, or which is likely to have an
association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall
presume that it is likely to cause confusion on the part of the public.
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.
(5) A registered trade mark is infringed by a person if he uses such

registered trade mark, as his trade name or part of his trade name, or name
of his business concern or part of the name, of his business concern
dealing in goods or services in respect of which the trade mark is
registered.
(6) For the purposes of this section, a person uses a registered mark, if, in
particular, he
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks
them for those purposes under the registered trade mark, or offers or
supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such

registered trade mark to a material intended to be used for labeling or
packaging goods, as a business paper, or for advertising goods or services,
provided such person, when he applied the mark, knew or had reason to
believe that the application of the mark was not duly authorised by the
proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade

mark if such advertising
(a) takes unfair advantage of and is contrary to honest practices in

industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or

include words, the trade mark may be infringed by the spoken use of those
words as well as by their visual representation and reference in this section
to the use of a mark shall be construed accordingly.
Section 32 (15 U.S.C. § 1114) of the US Act on

reads as under
(1) Any person who shall, without the consent of the registrant
(a) use in commerce any reproduction, counterfeit, copy, or colorable

imitation of a registered mark in connection with the sale, offering for sale,
distribution, or advertising of any goods or services on or in connection
with which such use is likely to cause confusion, or to cause mistake, or to
deceive; or
(b) reproduce, counterfeit, copy or colorably imitate a registered mark and
apply such reproduction, counterfeit, copy or colorable imitation to labels,
signs, prints, packages, wrappers, receptacles or advertisements intended
to be used in commerce upon or in connection with the sale, offering for
sale, distribution, or advertising of goods or services on or in connection
with which such use is likely to cause confusion, or to cause mistake, or to
deceive, shall be liable in a civil action by the registrant for the remedies
hereinafter provided. Under subsection (b) hereof, the registrant shall not
be entitled to recover profits or damages unless the acts have been
committed with knowledge that such imitation is intended to be used to
cause confusion, or to cause mistake, or to deceive.
States, all agencies and instrumentalities thereof, and all individuals, firms,
corporations, or other persons acting for the United States and with the
authorization and consent of the United States, and any State, any
instrumentality of a State, and any officer or employee of a State or
instrumentality of a State acting in his or her official capacity. The United
States, all agencies and instrumentalities thereof, and all individuals, firms,
corporations, other persons acting for the United States and with the
authorization and consent of the United States, and any State, and any such
instrumentality, officer, or employee, shall be subject to the provisions of
this chapter in the same manner and to the same extent as any
nongovernmental entity.
(2) Notwithstanding any other provision of this chapter, the remedies

given to the owner of a right infringed under this chapter or to a person
bringing an action under section 1125(a) or (d) of this title shall be limited
as follows:
(A) Where an infringer or violator is engaged solely in the business of

printing the mark or violating matter for others and establishes that he or
she was an innocent infringer or innocent violator, the owner of the right
infringed or person bringing the action under section 1125(a) of this title
shall be entitled as against such infringer or violator only to an injunction
against future printing.
(B) Where the infringement or violation complained of is contained in or is

part of paid advertising matter in a newspaper, magazine, or other similar
periodical or in an electronic communication as defined in section
2510(12) of Title 18, United States Code, the remedies of the owner of the
right infringed or person bringing the action under section 1125(a) of this
title as against the publisher or distributor of such newspaper, magazine, or
other similar periodical or electronic communication shall be limited to an
injunction against the presentation of such advertising matter in future
issues of such newspapers, magazines, or other similar periodicals or in
future transmissions of such electronic communications. The limitations of
this subparagraph shall apply only to innocent infringers and innocent
violators.
(C) Injunctive relief shall not be available to the owner of the right
infringed or person bringing the action under section 1125(a) of this title
with respect to an issue of a newspaper, magazine, or other similar
periodical or an electronic communication containing infringing matter or
violating matter where restraining the dissemination of such infringing
matter or violating matter in any particular issue of such periodical or in an
electronic communication would delay the delivery of such issue or
transmission of such electronic communication after the regular time for
such delivery or transmission, and such delay would be due to the method
by which publication and distribution of such periodical or transmission of
such electronic communication is customarily conducted in accordance
with sound business practice, and not due to any method or device adopted
to evade this section or to prevent or delay the issuance of an injunction or
restraining order with respect to such infringing matter or violating matter.
(D)(i)(I) A domain name registrar, a domain name registry, or other
domain name registration authority that takes any action described under
clause (ii) affecting a domain name shall not be liable for monetary relief
or, except as provided in subclause (II), for injunctive relief, to any person
for such action, regardless of whether the domain name is finally
determined to infringe or dilute the mark.
(II) A domain name registrar, domain name registry, or other domain name
registration authority described in sub-clause (I) may be subject to
injunctive relief only if such registrar, registry, or other registration
authority has
(aa) not expeditiously deposited with a court, in which an action has been
filed regarding the disposition of the domain name, documents sufficient
disposition of the registration and use of the domain name;
(bb) transferred, suspended, or otherwise modified the domain name

during the pendency of the action, except upon order of the court; or
(cc) willfully failed to comply with any such court order.
(ii) An action referred to under clause (i)(I) is any action of refusing to

register, removing from registration, transferring, temporarily disabling, or
permanently cancelling a domain name
(iii) A domain name registrar, a domain name registry, or other domain

name registration authority shall not be liable for damages under this
section for the registration or maintenance of a domain name for another
absent a showing of bad faith intent to profit from such registration or
maintenance of the domain name.
(iv) If a registrar, registry, or other registration authority takes an action

described under clause (ii) based on a knowing and material
misrepresentation by any other person that a domain name is identical to,
confusingly similar to, or dilutive of a mark, the person making the
knowing and material misrepresentation shall be liable for any damages,
as a result of such action. The court may also grant injunctive relief to the
domain name registrant, including the reactivation of the domain name or
the transfer of the domain name to the domain name registrant.
(v) A domain name registrant whose domain name has been suspended,
disabled, or transferred under a policy described under clause (ii)(II) may,
upon notice to the mark owner, file a civil action to establish that the
registration or use of the domain name by such registrant is not unlawful
under this chapter. The court may grant injunctive relief to the domain
name registrant, including the reactivation of the domain name or transfer
of the domain name to the domain name registrant.
(E) As used in this paragraph
title; and
violation under section 1125(a) of this title.
Section 29(1) provides that a registered trade mark is said to be infringed,

if a person other than the registered proprietor or a permitted user, uses the
trade mark in relation to goods or services (in respect of which a trade
mark is registered) so as to render the use of the mark as being used as a
trade mark. The use by an unregistered proprietor should be such that the
unregistered trade mark is deceptively similar to a registered trade mark.
Hence under Section 29(1) the mere similarity or identical nature of an
unregistered trade mark with a registered trade mark will render such use
by the unregistered trade mark liable to be sued for infringement. The term
other mark as to be likely to deceive or cause confusion. Hence the

provisions of Section 29(1) can be stated to be mark centric meaning that a
registered proprietor can claim action for infringement, if,
mark identical or is deceptively similar to the registered mark. No loss of
profits or damage need to be proved.
Section 29(2) provides a combination of instances of identical nature or

similarity of the infringing mark vis-a-vis the registered trade mark and the
goods or services which it represents so as to ascertain whether the use of
such unregistered trade mark will cause confusion in the eyes and minds of
the public. A registered trade mark is infringed by a person who, not being
the registered proprietor or a permitted user, uses in course of trade, a
mark which because of
(a) its identity with the registered trade mark and the similarity of the
goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity
of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods
or services covered by such registered trade mark is likely to cause
confusion on the part of the public, or which is likely to have an
association with the registered trade mark. Hence this provision can be
stated to be effect centric, meaning that the impact of the infringing
mark vis-a-vis the registered mark and the goods or services for which
its registration operates needs to be seen. The concept of likelihood of
confusion is the key factor which needs to be seen. However in respect
of an infringing mark which is identical both in respect of the
registered trademark and also the goods or services in respect of which
it is registered, as per sub-section (3) under Section 29, the Court
dealing with the issue shall presume likely hood of confusion on the
part of the public.
The Supreme Court in Amritdhara Pharmacy v.Satya Deo Gupta
in the minds of the public held that the question has to be seen from the
who is a man of average intelligence and
and hence the marks deceptively similar.
The Bombay High Court in Ajanta Pharma v. Theon Pharmaceuticals

& Another encountered the argument of defence against infringement
of a registered trade mark as that the provisions of Section 29(1) is
state plainly, under Section 29(1) a registered proprietor of a trade

mark should prove that the infringing mark is identical or deceptively
similar with its registered trade mark, then the offence of infringement
is established. Whereas under Section 29(2) not only the registered
proprietor should prove that the infringing trade mark is similar or
identical, as the case may be, such similarity or identical nature of the
infringing mark should have the ability to cause public confusion.
Further the defence went on state that the presentation of the effect of
likelihood of confusion gets proven when an infringing mark is not
only identical with the registered trade mark but also identical in
respect of goods or services covered by such registered trade mark.
However a deeper reading of Section 29(1) will reveal that the

provision is not just mark centric. The provision provides for a
comparative analysis of use of the infringing trade mark vis-a-vis the
goods or services in respect of which a registered trade mark is
registered, provided, such usage have to be in the course of trade.
Hence a combination of comparison of trade mark, its usage in the
course of trade and the similarity or identical nature of the goods or
services in respect of which the infringing mark is used, are essential
points to nail an infringement case. Further Section 29(2) provides that
All India Reporter(AIR) 1963 SC 449

www.India Kanoon.org/doc/149703451
the concept of likelihood of public confusion stands proved once the
infringing trade mark and the registered trade mark are identical and
there is identity of nature of goods or services represented by the
respective trade mark.
On an analysis of provisions of Section 29(1) and (2), the following

summation can be reached:
Under Section 29(1) two permutations are provided: One is use in the
course of trade by an identical infringing trademark (vis-a-vis the
registered trade mark) as regards identical goods or services which
might render the infringing mark to be taken as registered trademark.
The second is that, the use in the course of trade by a deceptively
similar trademark in respect of identical or similar goods or services
which might render the infringing mark to be taken as registered
trademark. In both the permutations the use of the infringing trademark
in the course of trade is essential.
Under Section 29(2) a wider permutation of conditions of
Identical trade mark vis-a-vis similar goods or services

Similar trade mark vis-a-vis identical goods or services
Similar trade mark vis-a-vis similar goods or services
Identical trade mark vis-a-vis identical goods or services
In such a manner that use of the infringing mark in the course of trade is
likely to cause public confusion or likely to have an association with the
registered trade mark.
Hence it can be understood that the combination of permutations on the

identical or similar nature of the infringing trade mark vis-a-vis the
identical or similar nature of goods as regards the registered trade mark
widens the ambit of coverage of factors which can lead to public
confusion. The burden of proving whether a competing mark is likely to
cause confusion amongst the public is on the registered proprietor who
sues.
Thus the position of the Act under Section 11(1) and Section 29(1) and (2)
is as regards the ability of mark to cause public confusion and not to prove
actual confusion.
Section 29(6) and (7) provides that use of a registered trademark is deemed
to occur if it is affixed to goods or packaging, if the goods bearing such
registered trademark is offered for sale or put up for sale or if the goods
bearing the registered trademark is imported or exported and the registered
trademark is used as part of advertising. Further Sections 29(4), (5) and (8)
deals with protection against dilution of registered trademark.
The US Act provides for a cause of action on the ground of likelihood of

confusion under Section 32 against a person who uses in commerce any
reproduction, counterfeit, copy or colourable imitation of a registered trade
mark in connection with the sale, offering for sale, distribution, or
advertising of any goods or services on or in connection with which such
use is likely to cause confusion, or to cause mistake or, to deceive; or
(a) reproduce, counterfeit, copy or colourably imitate a registered mark and

apply such reproduction, counterfeit, copy or colourable imitation to
labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be sued in commerce upon or in connection with which such
use is likely to cause confusion, or to cause mistake, or to deceive.
Hence under Section 32 of the US Act, to prove infringement of a mark a claimant

must demonstrate the following:
a) That it owns a valid mark mark, i.e., the mark that is registered, and is entitled to
protection;
b) That the defendant is using the mark, or a confusingly similar mark, in commerce
without permission;
c) That the defendant's use of the mark in commerce is likely to cause confusion,
mistake or deception as to who actually is the source of either the plaintiff's or the
defendant's products;
One interesting differentiating feature of US Act is that use of a mark as stated above
by a non-registrant is liable for civil action only if it can be proved that such use is
with a purpose to cause confusion, or to confuse or to cause a mistake or to deceive.
Hence there a situation, whereby, an innocent user without any intention to deceive or
to cause confusion may use the registered mark and in such an instance he can be let
off with a cease and desist order without any damages. Hence intention to deceive or
bad faith is the corner stone of any civil proceedings under Section 32(1) of the US
Act.
Section 32(2) of the US Act provides limitations against civil action under Section
32(1) and also under Section 43(a) of the US Act where, the infringer or violator is
only a printer or publisher or advertiser in a newspaper or a magazine or similar
periodical if such infringer or violator proves that he is an innocent infringer or
innocent violator. However injunctive relief is available on the owner of the
registered trademark. Further such injunctive relief is not available even in such cases
if it can be shown that, such relief if awarded will delay the issue or transmission of
publication of newspaper or magazine as a sound business practice and not to avoid
or evade the action under Section 32(1) of the US Act.
This is a major difference from the provisions of Indian Act point of view, since, as
per the Indian Act, mere use of a registered identical trademark is considered to be an
infringement. There is no express provision under the Indian Act under Section 29 or
elsewhere for an innocent infringer. However reference can be made to Section 29(7)
which provides an action for infringement against an advertiser or a person who
labels or packs goods with infringing marks is possible if it can proved that such
person(s) has reason to believe that the application of the mark is not duly authorised
by the proprietor of the registered mark or by the licensee. However when it comes to
awarding damages, the Court may take a call on its quantum based on the loss
suffered by the plaintiff.
Further the US Act vide the amendment caused by the Anticybersquatting Consumer
Protection Act, 1999 introduced provisions relating to domain name protection
enabling the domain name registrar, the domain name registry, the domain name
registration authority to claim injunctive relief against domain name infringement or
dilution. Hence any registration of a domain name which is likely to deceive or cause
confusion in the minds of the public vis-a-vis a registered trademark amounts to
infringement or dilution, as the case may be.
Hence both under the Indian Act and the US Act the law effectively deals with
infringing marks which are likely to confuse or cause deception in the minds of the
public. However the scope and applicability of the provisions of US Act is expansive
whereas the provisions of Indian Act is inclusive and needs excellent interpretational
skill to expand its coverage to acts of infringement which is not otherwise so worded
in the Section explicitly.
3.4.5 Law governing Doctrine of Dilution Section 11(2) and (6), Section 29(4), (5)
`and (8) of the Indian Act and Section 43 of the US Act
3.4.5.1 Section 11(2) and (6) of the Indian Act
Section 11(2) and (6) reads as under:
(2) A trade mark which

(a) is identical with or similar to an earlier trade mark; and
(b) Is to be registered for goods or services which are not similar to those
for which the earlier trade mark is registered in the name of a different
proprietor,
shall not be registered if or to the extent the earlier trade mark is a well-
known trade mark in India and the use of the later mark without due cause
would take unfair advantage of or be detrimental to the distinctive
character or repute of the earlier trade mark.
(6) The Registrar shall, while determining whether a trade mark is a well-
known trade mark, take into account any fact which he considers relevant
for determining a trade mark as a well-known trade mark including
(i) the knowledge or recognition of that trade mark in the relevant section
of the public including knowledge in India obtained as a result of
promotion of the trade mark;
(ii) The duration, extent and geographical area of any use of that trade
mark;
(iii) The duration, extent and geographical area of any promotion of the
trade mark, including advertising or publicity and presentation, at fairs or
exhibition of the goods or services to which the trade mark applies;
(iv)The duration and geographical area of any registration of or any

application for registration of that trade mark under this Act to the extent
that they reflect the use or recognition of the trade mark;
(v) The record of successful enforcement of the rights in that trade mark, in
particular the extent to which the trade mark has been recognised as a
well-known trade mark by any court or Registrar under that record.
3.4.5.2 Section 29(4), (5) and (8) of the Indian Act
Section 29(4), (5) and (8) of the Indian Act reads as under:

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.
(5) A registered trade mark is infringed by a person if he uses such

registered trade mark, as his trade name or part of his trade name, or name
of his business concern or part of the name, of his business concern
dealing in goods or services in respect of which the trade mark is
registered.
(6)..........
(7) A registered trade mark is infringed by a person who applies such

registered trade mark to a material intended to be used for labelling or
packaging goods, as a business paper, or for advertising goods or services,
provided such person, when he applied the mark, knew or had reason to
believe that the application of the mark was not duly authorised by the
proprietor or a licensee.
Section 43 (15 U.S.C. § 1125) of the US Act on

reads as under:
(a) (1) Any person who, on or in connection with any goods or services, or
any container for goods, uses in commerce any word, term, name, symbol,
or device, or any combination thereof, or any false designation of origin,
false or misleading description of fact, or false or misleading
representation of fact, which
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person,
or as to the origin, sponsorship, or approval of his or her goods, services,
or commercial activities by another person, or
(B) In commercial advertising or promotion, misrepresents the nature,

characteristics, qualities, or geographic origin of his or her or another
, or commercial activities, shall be liable in a civil
action by any person who believes that he or she is or is likely to be
damaged by such act.
instrumentality of a State or employee of a State or instrumentality of a

State acting in his or her official capacity. Any State, and any such
instrumentality, officer, or employee, shall be subject to the provisions of
this chapter in the same manner and to the same extent as any
nongovernmental entity.
(3) In a civil action for trade dress infringement under this chapter for
trade dress not registered on the principal register, the person who asserts
trade dress protection has the burden of proving that the matter sought to
be protected is not functional.
(b) Any goods marked or labelled in contravention of the provisions of this

section shall not be imported into the United States or admitted to entry at
any customhouse of the United States. The owner, importer, or consignee
of goods refused entry at any customhouse under this section may have
any recourse by protest or appeal that is given under the customs revenue
laws or may have the remedy given by this chapter in cases involving
goods refused entry or seized.
(c) Dilution by Blurring; Dilution by Tarnishment.--
(1) Injunctive relief.--Subject to the principles of equity, the owner of a

famous mark that is distinctive, inherently or through acquired
distinctiveness, shall be entitled to an injunction against another person
who, at any time after the owner's mark has become famous, commences
use of a mark or trade name in commerce that is likely to cause dilution by
blurring or dilution by tarnishment of the famous mark, regardless of the
presence or absence of actual or likely confusion, of competition, or of
actual economic injury.
(2) Definitions.--(A) For purposes of paragraph (1), a mark is famous if it

is widely recognized by the general consuming public of the United States
as a designation of source of the goods or services of the mark's owner. In
determining whether a mark possesses the requisite degree of recognition,
the court may consider all relevant factors, including the following:
(i) The duration, extent, and geographic reach of advertising and publicity
of the mark, whether advertised or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of goods or

services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881, or
the Act of February 20, 1905, or on the principal register.
(B) For purposes of paragraph (1), `dilution by blurring' is association
arising from the similarity between a mark or trade name and a famous
mark that impairs the distinctiveness of the famous mark. In determining
whether a mark or trade name is likely to cause dilution by blurring, the
court may consider all relevant factors, including the following:
(i) The degree of similarity between the mark or trade name and the
famous mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous mark is engaging in
substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create an
association with the famous mark.
(vi)Any actual association between the mark or trade name and the famous
mark.
(C) For purposes of paragraph (1), `dilution by tarnishment' is association

arising from the similarity between a mark or trade name and a famous
mark that harms the reputation of the famous mark.
(3) Exclusions.--The following shall not be actionable as dilution by

blurring or dilution by tarnishment under this subsection:
(A) Any fair use, including a nominative or descriptive fair use, or

facilitation of such fair use, of a famous mark by another person other than
as a designation of source for the person's own goods or services,
including use in connection with--
(i) Advertising or promotion that permits consumers to compare goods or
services; or
(ii) Identifying and parodying, criticizing, or commenting upon the famous

mark owner or the goods or services of the famous mark owner.
(B) All forms of news reporting and news commentary.
(C) Any non-commercial use of a mark.
(4) Burden of proof.--In a civil action for trade dress dilution under this
Act for trade dress not registered on the principal register, the person who
asserts trade dress protection has the burden of proving that--
(A) the claimed trade dress, taken as a whole, is not functional and is
famous; and
(B) if the claimed trade dress includes any mark or marks registered on the
principal register, the unregistered matter, taken as a whole, is famous
separate and apart from any fame of such registered marks.
(5) Additional remedies.--In an action brought under this subsection, the

owner of the famous mark shall be entitled to injunctive relief as set forth
in section 34. The owner of the famous mark shall also be entitled to the
remedies set forth in sections 35(a) and 36, subject to the discretion of the
court and the principles of equity if--
(A) the mark or trade name that is likely to cause dilution by blurring or
dilution by tarnishment was first used in commerce by the person against
whom the injunction is sought after the date of enactment of the
Trademark Dilution Revision Act of 2006; and
(B) In a claim arising under this subsection--
(i) by reason of dilution by blurring, the person against whom the

injunction is sought wilfully intended to trade on the recognition of the
famous mark; or
(ii) by reason of dilution by tarnishment, the person against whom the

injunction is sought wilfully intended to harm the reputation of the famous
mark.
(6) Ownership of valid registration a complete bar to action.--The

ownership by a person of a valid registration under the Act of March 3,
1881, or the Act of February 20, 1905, or on the principal register under
this Act shall be a complete bar to an action against that person, with
respect to that mark, that--
(A) Is brought by another person under the common law or a statute of a

State; and
(B)(i) Seeks to prevent dilution by blurring or dilution by tarnishment; or

(ii) Asserts any claim of actual or likely damage or harm to the
distinctiveness or reputation of a mark, label, or form of advertisement.
(7) Savings clause.--Nothing in this subsection shall be construed to

impair, modify, or supersede the applicability of the patent laws of the
United States.''
(d)(1)(A) A person shall be liable in a civil action by the owner of a mark,

including a personal name which is protected as a mark under this section,
if, without regard to the goods or services of the parties, that person
(i) Has a bad faith intent to profit from that mark, including a personal
name which is protected as a mark under this section; and
(ii) Registers, traffics in, or uses a domain name that
(I) in the case of a mark that is distinctive at the time of registration of the
domain name, is identical or confusingly similar to that mark;
(II) In the case of a famous mark that is famous at the time of registration
of the domain name, is identical or confusingly similar to or dilutive of
that mark; or
(III) Is a trademark, word, or name protected by reason of section 706 of

title 18, United States Code, or section 220506 of title 36.
(B)(i) In determining whether a person has a bad faith intent described

under subparagraph (A), a court may consider factors such as, but not
limited to
(i) The domain name violates any right of the owner of a mark registered
in the Patent and Trademark Office, or protected under subsection (a) or
(c) of this section; and
(ii) The court finds that the owner
(I) is not able to obtain in personam jurisdiction over a person who would
have been a defendant in a civil action under paragraph (1); or
(II) Through due diligence was not able to find a person who would have
been a defendant in a civil action under paragraph (1) by
(aa) sending a notice of the alleged violation and intent to proceed under
this paragraph to the registrant of the domain name at the postal and e-mail
address provided by the registrant to the registrar; and
(bb) publishing notice of the action as the court may direct promptly after
filing the action.
(B) The actions under subparagraph (A)(ii) shall constitute service of

process.
(C) In an in rem action under this paragraph, a domain name shall be

deemed to have its situs in the judicial district in which
(i) The domain name registrar, registry, or other domain name authority
that registered or assigned the domain name is located; or
(ii) Documents sufficient to establish control and authority regarding the

disposition of the registration and use of the domain name are deposited
with the court.
(D)(i) The remedies in an in rem action under this paragraph shall be

limited to a court order for the forfeiture or cancellation of the domain
name or the transfer of the domain name to the owner of the mark. Upon
receipt of written notification of a filed, stamped copy of a complaint filed
by the owner of a mark in a United States district court under this
paragraph, the domain name registrar, domain name registry, or other
domain name authority shall
(I) expeditiously deposit with the court documents sufficient to establish
registration and use of the domain name to the court; and
(II) Not transfer, suspend, or otherwise modify the domain name during
the pendency of the action, except upon order of the court.
(ii) The domain name registrar or registry or other domain name authority
shall not be liable for injunctive or monetary relief under this paragraph
except in the case of bad faith or reckless disregard, which includes a
wilful failure to comply with any such court order.
(3) The civil action established under paragraph (1) and the in rem action
established under paragraph (2), and any remedy available under either
such action, shall be in addition to any other civil action or remedy
otherwise applicable.
(4) The in rem jurisdiction established under paragraph (2) shall be in

addition to any other jurisdiction that otherwise exists, whether in rem or
in personam.
Dilution is independent of source of confusion and applies even in the

absence of the latter. It is based on the principle that the primary purpose
of the trademark is the creation and retention of custom or reputation,
rather than designation of source, and that the preservation of the
uniqueness of individuality of the trademark is of paramount importance to
65
The Indian Act has not provided or dedicated any separate provision
unlike the US Act to protect a registered trademark from dilution. While
Section 29(1), (2) and (3) provides for protection against infringement of
registered trademark arising from confusion. However, Sub-sections (4),
(5) and (7) deal with dilution of registered trademark. Further Section 11
(2) of the Indian Act also aids in protecting a registered trademark against
dilution, however at the time of registration of an identical or similar
trademark. Section 29(4) provides protection of reputation in India of a
registered trademark against use of the same by a person so as to take
unfair advantage due to the distinctive character or repute of the registered
Thomas McCarthy, Trademarks and Unfair Competition §24:70 124-5 (St. Paul, Minn: West Group,
1996)
trademark. Section 29(5) provides that a registered trademark is infringed
by a person if he uses such registered trademark, as his trade name or part
of his trade name, or name of his business. Section 29(8) provides
protection against disparagement of registered trademark in the form of
taking unfair advantage which is against honest practices in industrial and
commercial matters or which is detrimental to the distinctive character of
the registered trademark or which is against the reputation of the registered
trademark. It is interesting note that while the Indian Act under Section 29
per se which is
purely a US term, however providing the import of the meaning of the
term dilution and providing for remedies against such dilution of a
registered trademark, its reputation and distinctive character.
Under Section 11(2) a mark which is identical or similar to a registered
trademark shall not be registered even in respect of goods or services
which may not be similar to the goods or services represented by the
registered trademark, if such registration may lead to taking unfair
advantage or be detrimental to the distinctive character or repute of the
registered trademark.
i. the knowledge or recognition of that trademark in the relevant

section of the public including knowledge in India obtained as a
result of promotion of the trademark;
ii. the duration, extent and geographical area of any use of that
trademark;
iii. the duration, extent and geographical area of any promotion of the
trademark, including advertising or publicity and presentation, at
fairs or exhibition or the goods or services to which the trade-mark
applies;
iv. the duration and geographical area of any registration or any

publication for registration of that trademark under the Trademark
Act to the extent they reflect the use or recognition of the
trademark;
v. the record of successful enforcement of the rights in that

trademark, in particular, the extent to which the trademark has
been recognized as a well-known trademark by any court on
Registrar under that record;
vi. the number of actual or potential consumers of the goods or

services;
vii. the number of persons involved in the channels of distribution of

the goods or services;
viii. the business circles dealing with the goods or services;
The US Act under Section 43 provides for detailed provisions against dilution.
This doctrine prevents the weakening or reduction of the ability of a mark to
clearly and unmistakably distinguish one origin of goods or services for the other
and protects thus affords protection for the distinctiveness of a mark. The doctrine
of dilution as a separate basis for protection of trademarks originated in Britain
and Germany and was introduced into the United States through the writings and
Congressional testimony of Frank Schechter in his seminal article.
dimensions:
i. Blurring: This is the classic or traditional impact of dilution. The unique

and distinctive significance of the mark to identify and distinguish one
source may be diluted and weakened. There is no confusion as to source,
sponsorship, affiliation or connection
to mean a mark that is inherently distinctive or distinctive through

acquired distinctiveness and has become widely recognised by the general
consuming public in the United States as a designation or identifier or
source of goods or services. To determine whether a mark has become
a. The duration, extent and geographic reach of advertising and publicity

of the mark
b. The amount, volume, and geographic extent of sales or goods or

services represented by the mark
c. The extent of actual recognition of the mark by the consuming public

d. Whether the mark is registered under earlier acts or the current act on
the Principal Register.
ii. Tarnishment: Here, the effect of the junior mark is to tarnish, degrade, or
dilute the distinctive quality and reputation of the senior mark. The junior
mark is used on a product or in a context which degrades the reputation of
The Rational Basis of Trademark Protection, Harvard Law Review,

See Tiffany and Co. V. Boston Club Inc., 231 F. Supp; 836; Sally Gee Inc v. Myra Hogan Inc., 699 F. 2d
621; Mead Data Cent Inc. V. Toyota Motor Sales Inc. 875 F. 2d 1026.
the mark established by the senior user or is totally dissonant with the
image projected by the senior mark .
Thus it can be learnt that while the concept of dilution is recognised under the
Indian Act by creating a separate class of trademark called a Well Known
Trademark, the same concept is advanced under the US Act through
recognition of a Famous Mark.
3.4.6 Supplementary legislations in India and US.
3.4.6.1 Indian Position:
Apart from the Trademark Marks Act, 1999, there are two other statutory sources
of law which can protect rights of trademark proprietors in India. They are:
a. Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007.

b. The Companies Act, 2013.
The import of the aforesaid supplementary legislations in brief is explained

hereunder:
3.4.6.1.1 Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007.
Section 140 of the Trademarks Act, 1999 enables proprietor or licensee of a

registered trademark to give notice in writing to Collector of Customs to
prohibit importation of any goods, if import of such goods constitute
infringement under Section 29(6)(a) of the said Act. The Central Government
under Section 11(2)(n) of the Customs Act can issue a notification for
prohibition against importation of certain goods for protection of trademark
proprietor s rights in India. Accordingly the Central Government has notified
See Bean Inc. V. Darake Publishers Inc., 811F. 2d 26; Coca Cola Co v. Gemini Rising Inc., 346F Supp
1183
by the Intellectual Property Rights (Imported Goods) Enforcement Rules,
2007.
As per the provisions of these Rules, a right holder being the proprietor of a
registered trademark can give notice to the Commissioner of Customs or any
other Customs Officer to suspend clearance of goods imported into India
which are infringing on his rights as proprietor of a registered trademark. If the
notice of the right holder is accepted by the Commissioner of Customs, then
the Commissioner of Customs shall, based on surety and indemnity provided
by the rights holder to indemnify the Customs Department of any liability and
to meet the costs of demurrage and other costs, provide in writing the period
and terms subject to which the registration of notice of the rights holder will
hold good. The rights holder is also provided an opportunity to inspect the
infringing goods. If it is established that the goods imported are infringing
goods, then the same may be disposed off or destroyed with the official
supervision, after providing notice to the rights holder and the importer. Hence
this law provides an opportunity to the registered trademarks owner to stop
infringing his rights as the proprietor of a trademark.
3.4.6.1.2 The Companies Act, 2013:
Section 16 Rectification of Name of Company reads as:
16. (1) If, through inadvertence or otherwise, a company on its first

registration or on its registration by a new name, is registered by a name
which,
(a) in the opinion of the Central Government, is identical with or too nearly
resembles the name by which a company in existence had been previously
registered, whether under this Act or any previous company law, it may direct
the company to change its name and the company shall change its name or
new name, as the case may be, within a period of three months from the issue
of such direction, after adopting an ordinary resolution for the purpose;
(b) on an application by a registered proprietor of a trade mark that the name is
identical with or too nearly resembles to a registered trade mark of such
proprietor under the Trade Marks Act, 1999, made to the Central Government
within three years of incorporation or registration or change of name of the
company, whether under this Act or any previous company law, in the opinion
of the Central Government, is identical with or too nearly resembles to an
existing trade mark, it may direct the company to change its name and the
company shall change its name or new name, as the case may be, within a
period of six months from the issue of such direction, after adopting an
ordinary resolution for the purpose.
(2) Where a company changes its name or obtains a new name under sub-
section (1), it shall within a period of fifteen days from the date of such
change, give notice of the change to the Registrar along with the order of the
Central Government, who shall carry out necessary changes in the certificate
of incorporation and the memorandum.
(3) If a company makes default in complying with any direction given under
sub-section (1), the company shall be punishable with fine of one thousand
rupees for every day during which the default continues and every officer who
is in default shall be punishable with fine which shall not be less than five
thousand rupees but which may extend to one lakh rupees.
Section 16 provides rights to registered proprietor to apply to the Central

Government (which powers have been delegated to the Regional Directors,
Ministry of Corporate Affairs, and Government of India) within three years
from the date of incorporation of a company, if the name of the company is
identical or too nearly resembles the existing registered trademark. If the
Central Government is convinced with the merits of the application it can
issue an order directing the company to change its name. The said Section also
provides suo moto powers to the Central Government at any time to direct
change the name of a company if it is identical or too nearly resembles the
name of a company previously registered.
Hence it is incumbent upon the proprietors to constantly scan the market and
portals of the regulatory authorities like Registrar of Companies and
Trademark registry to see if any person seeks registration of an identical or
similar mark or has registered a Company under the Companies Act, 2013
with name which is identical or similar to the registered trademark. The law as
explained above provides necessary remedy.
3.4.6.1.3 Emblems and Names (Prevention of Improper Use) Act, 1950
This Act provides for prohibition against use of certain emblems and
names by private persons i.e., persons other than Government of India or
its agencies without the approval of the competent authority prescribed
by Government of India in trade and commerce. The prohibition extends to
registering a name for a company or obtaining registration of a trademark
or a patents in respect of the names and certain emblems are provided in
the schedule to the Act. The Act provides for a schedule which lists
specific names and emblems like World Heath Organisation (WHO),
United Nations Organisation (UN), the Indian Flag, emblems, names and
official seal of President of India, Governors of States, Interpol etc. The
Act prescribes a penalty of Rs.500 for any violation.
3.4.6.2 US Position
Sections 32, 42 and 43(a) of the US Trademarks Act, 1946 provides against
import of grey goods in order to protect the rights of registered trademark
proprietors. Similar to the Indian Position, the Customs Law of the US under
Section 526(a) of the Tariff Act, prohibits import of infringing goods as under:
foreign manufacture if such merchandise, or the label, sign, print, package,
wrapper, or receptacle, bears a trademark owned by a citizen of, or by a
corporation or association created or organized within, the United States, and
registered in the Patent and Trademark Office by a person domiciled in the United
States ... unless written consent of the owner of such trademark is produced at the
Hence the aforesaid statute provides for injunctive and monetary relief. Unlike the
Trademarks Act, 1946 the aforesaid legislation does not require to prove
likelihood of confusion for blocking or prohibiting infringing goods into US.
There is no similar provision or law like the Indian Companies Act, 2013 in US to
seek rectification of name of companies.
3.5 SUMMATION
The comparative study undertaken by the researcher between the Indian

Trademarks Act, 1999 and the Trademarks Act, 1946 of the US though with the
limited scope of examining law against confusion theory and dilution doctrine, has
established that a well structured legal architecture is in place as regards
registration and protection of a registered trademark in both the Indian and US
domains. The research has enabled the researcher to scan the legal landscapes of
both the US and India supplemental to the subjects covered under the Statement of
the Problem.
It can be stated that while the Indian Trademarks Act, 1999 though not very
exhaustive in its language, its content is wider in ambit requiring excellent
interpretational skills to bring out the spirit and import of the law. Whereas the
Trademarks Act, 1946 of the US is quite exhaustive and long winding but
however provides legal measure to take on trademark based violations in
advanced economy. The US has always been a front runner in establishing
concepts and principles in registration and protection of trademarks, which India
has already taken advantage of and can take advantage of further in the near future
too.
In the background of limited scope for the comparative study and analysis, the
major points of difference between the Indian Trademarks Act, 1999 and the
Trademarks Act, 1946 of the US are as under:
a. The language and import of the provisions under the Indian Trademarks
Act, 1999 is short and crisp while the same in the US Trademarks Act,
1946 is exhaustive.
b. There is no provision under the Indian Trademarks Act, 1999 in respect of

counterfeit goods, while the US Trademarks Act, 1946 has provided for
definition and provisions for dealing with counterfeit goods.
c. While the Indian Trademarks Act, 1999 indirectly provide for matters
relation to dilution of trademarks, the US Trademarks Act, 1946 provide
directly for matters relating to dilution by virtue of amendments brought
out by Federal Trademark Dilution Act, 1995 (FTDA) and the Trademark
Dilution Revision Act, 2006 (TDRA).
d. Under the Indian Trademarks Act, 1999 there is no provision against using
images or photographs or any connotation relatable to a dead person,
unless such person is a national icon use of which is prohibited under the
Emblems and Names (Prevention of Improper Use Act), 1950, whereas the
US Trademarks Act, 1946 directly provides against use of images or
photographs or any connotations relatable to a dead person unless his
widow has permitted such usage.
e. There is no provision under the Indian Trademarks Act, 1999 as regards

protection against domain name used as a trademark. However the US
Trademarks Act, 1946 by virtue of the amendment brought through the
Trademark Dilution Revision Act, 2006 has introduced provisions against
domain name infringement resulting in dilution of trademarks.
Hence, it can be summed up that both the Indian Trademarks Act, 1999 and the
US Trademarks Act, 1946 provide for provisions against confusion / deception
theory and dilution doctrine. The specific provisions against counterfeit goods,
dilution of trademarks and domain name protection makes US Trademarks Act,
1946 look more apt and best suited for ever evolving e-commerce era.

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CHAPTER III

COMPARATIVE STUDY OF ACTS GOVERNING TRADEMARK LAW IN

2008 (36) Patent and Trademark Cases(PTC) 255 Del

Thus protection of trademarks which are the repository of business goodwill

Registration of trademarks under the applicable law provides the following

a) Registration helps in proving ownership of the trademark on the applicant.

b) In all trademark proceedings registration of a trademark per se acts as a

e) Registered proprietor can license his trademark or transfer the ownership in

f) Registered proprietor can avail the benefits of

g) Registration process acts as information to public thereby dissuading any

h) India being a member of Paris Convention, home registration of trademark

3.2 A BRIEF HISTORY OF TRADEMARK LAW IN INDIA

3.3 A BRIEF HISTORY OF TRADEMARKS LAW IN UNITED STATES OF

a) Definitions Mark, Trademark, Service Mark, Registered Trademark, Use

b) Law governing registration of trademark Sections 9 and 11 of Indian Act

d) Law governing Doctrine of Dilution Section 11(2) and (6), Section

e) Supplementary legislations in India and US having relevance to protection

Section 2(1)(m) of the Indian Act reads as:

Section 45 of the US Act defines Mark as:

3.4.2.1.1 Comparative Analysis

i.e., it being an indication or tool or a sign or a symbol for identification. The

kinds of trademarks capable of registration under the Act.

Section 2(1)(zb) of the Indian Act reads as under;

3.4.2.2.1 Comparative Analysis:

a) The definition under the Indian Act is more exhaustive as it describes as to

b) The requirements under the said definition is twofold -

Act). Further the definition also

d) Graphical representation of trademark is not insisted in the definition,

3.4.2.3 Use in Commerce:

ordinary course of trade, and not made merely to reserve a right in a

1.on goods when

3.4.2.3.1 Comparative Analysis:

a. As stated above though there is no separate definition for the term

course of commerce or trade is essential for its protection, though

3.4.2.4 Colourable Imitation:

A mark shall be deemed to be deceptively similar

registered mark as to be likely to cause confusion or mistake or to deceive.

3.4.2.4.1 Comparative Analysis:

causes a thing to resemble the another so as to result in deception or

substantially indistinguishable from, a registered mark.

In the absence of identical or similar term under the Indian Act,

3.4.2.6 Domain Name

definition is an inclusive definition. The Supreme Court in Rediff

ii. However the US Act under Section 45

registered with or assigned by any domain name registrar, domain name

3.4.2.6.1 Comparative Analysis:

In the absence of identical or similar term under the Indian Act,

jurisprudence can be said to be similar.

(2004) 6 Supreme Court Cases(SCC) 145

Section 6(1) states that Register of Trademarks shall be kept in the

1051 to 1072 of this

3.4.2.7.1 Comparative Analysis:

3.4.2.8 Well-known Trademark

mean a mark which is famous and is widely recognised by the general

3.4.3 Comparative Analysis of Law governing registration of trademark

3.4.3.1 Section 9 of the Indian Act

Section 9 on Absolute grounds for refusal of registration reads as under:

1. The trade marks

(b) which consist exclusively of marks or indications which may serve in

2. A mark shall not be registered as a trade mark if

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

(b) it contains or comprises of any matter likely to hurt the religious

(c) it comprises or contains scandalous or obscene matter;