Intellectual Property Rights law

I) Copyrights-

Definitions-

 Copyright is a right given by the law to creators of literary,

dramatic, musical and artistic works and producers of
cinematograph films and sound recordings.
 In fact, it is a bundle of rights including, inter alia, rights of
reproduction, communication to the public, adaptation
and translation of the work.
 Copyright ensures certain minimum safeguards of the rights of
author

Copyright u/s 14 of the Act-

Copyright means the exclusive right subject to the provisions of this Act, to
do or authorize the doing of any of the following acts in respect of a work or
any substantial part thereof, namely:—

A) in the case of a literary, dramatic or musical work, 

 (i) to reproduce the work in any material form including the storing of
it in any medium by electronic means;
 (ii) to issue copies of the work to the public not being copies already
in circulation;
 (iii) to perform the work in public, or communicate it to the public;
 (iv) to make any cinematograph film or sound recording in respect of
the work;
 (v) to make any translation of the work;
 (vi) to make any adaptation of the work;
 (vii)to do, in relation to a translation or an adaptation of the work, any
of the acts specified in relation to the work in sub-clauses (i) to (vi);

B) in the case of a computer programme,—

(i) to do any of the acts specified in clause (a);
[(ii) to sell or give on commercial rental or offer for sale or for commercial
rental any copy of the computer programme:Provided that such commercial
rental does not apply in respect of computer programmes where
the programme itself is not the essential object of the rental.]

Section 13- Subject matter of Copyright

 Section 13. Works in which copyright subsists.—(1) Subject to the

provisions of this section and the other provisions of this Act, copyright
shall subsist throughout India in the following classes of works, that is
to say,—
 (a)original literary, dramatic, musical and artistic works;
 (b)cinematograph films; and
 (c)[sound recording].
 (2) Copyright shall not subsist in any work specified in sub-section (1),
other than a work to which the provisions of section 40 or section 41
apply, unless,—
 (i)in the case of a published work, the work is first published in India,
or where the work is first published outside India, the author is at the
date of such publication, or in a case where the author was dead at
that date, was at the time of his death, a citizen of India;
 (ii)in the case of an unpublished work other than a [work of
architecture], the author is at the date of the making of the work a
citizen of India or domiciled in India; and
 (iii)in the case of [work of architecture], the work is located in India.
 Explanation.—In the case of a work of joint authorship, the conditions
conferring copyright specified in this sub-section shall be satisfied by
all the authors of the work.

 (3) Copyright shall not subsist—

 (a)in any cinematograph film if a substantial part of the film is
an infringement of the copyright in any other work;
 (b)in any [sound recording]made in respect of a literary,
dramatic or musical work, if in making the [sound recording],
copyright in such work has been infringed.
 (4) The copyright in a cinematograph film or a[sound recording]
shall not affect the separate copyright in any work in respect of
 which or a substantial part of which, the film, or, as the case may
be, the [sound recording] is made.
 (5) In the case of [work of architecture],copyright shall subsist
only in the artistic character and design and shall not extend to
processes or methods of construction

SWEAT OF BROW DOCTRINE

According to this doctrine, an author gains rights through simple
diligence during the creation of a work. Substantial creativity or
“originality” is not required. The creator is entitled to such rights on
account of efforts and expense put in by him in the creation of such a
work.
The concept of “originality” has undergone a paradigm shift from the
“sweat of the brow” doctrine to the “modicum of creativity” standard
put forth in Feist Publication Inc. v. Rural Telephone Service the
United States Supreme Court.

The doctrine of “sweat of the brow” provides copyright protection on

basis of the labour, skill and investment of capital put in by the creator
instead of the originality. he US Supreme Court totally negated this
doctrine and held that in order to be original a work must not only
have been the product of independent creation, but it must also
exhibit a “modicum of creativity”. The Supreme Court prompted
‘creative originality’ and laid down the new test to protect the creation
on basis of the minimal creativity. This doctrine stipulates that
originality subsists in a work where a sufficient amount of intellectual
creativity and judgment has gone into the creation of that work. The
standard of creativity need not be high but a minimum level of
creativity should be there for copyright protection.

University of London Press v. University Tutorial Press

 Case where the test of “originality” was explained.
 Facts of the Case-
 A resolution by the University of London stated that the
copyright of all the examination papers set by the examiners
 employed by the University vested with the University.
Examiners were appointed for the purpose of setting the
examination papers for matriculation examinations. he University
entered into an agreement with the University of London Press
Limited to assign the copyright and all rights to publish the
matriculation examination papers to the later for a consideration.
Later, the University Tutorial Press Limited issued a publication
which included sixteen out of forty-two matriculation papers. The
papers were not copied from the publication of the University of
London Press Limited, but were taken from copies of the
examination papers supplied by students. In addition to the
question papers, the publication also contained answers to the
questions in some of the papers and also made some criticism
on the way the papers were set. The plaintiff, University of
London Press, sued University Tutorial Press for infringement of
copyright.
 Issue- The plaintiff contended that the term  “literary work” as
used in the Act has a very broad meaning covering work which
are expressed in print or writing, irrespective of whether the
quality or style is high and includes maps, charts, plans, tables,
and compilations. Therefore the examination papers will also fall
under the category of “literary work”.
 Judgement- The Court held that the Copyright Act does not
require that expression be in an original or novel form. It does,
however, require that the work not be copied from another work.
It must originate from the author. The question papers are
original within the meaning of copyright laws as they were
originated from the authors . The court held that merely because
similar questions have been asked by other examiners, the
plaintiff shall not be denied copyright.

Feist company case-

Rural Telephone Service Company was public utility providing telephone services. Under
some local regulation, all telephone companies had to issue annually an updated
telephone directory. Rural Telephone Service published a telephone directory using this
data. Feist Publications Inc. was a publishing company specialized in area-wide
telephone directories. Feist’s directories covered a wide range of geographical area
covering 11 different telephone service areas. Both the companies distribute the
directories free of cost to its subscribers and earn revenue on the advertisements in
yellow pages. Both competed vigorously for yellow pages advertising. To obtain the
listings for its directory, Feist approached each of the 11 telephone com. Rural refused to
license its listings to Feist. Thus Feist used Rural’s listings without their consent.

 Issues- whether a compilation like that of a telephone directory is protected under the
Copyright law. 
 Judgement- The court held that the facts like names, addresses etc are not
copyrightable, but compilations of facts are copyrightable. This is majorly owing to
the unique way of expression by way of  arrangement and if it possesses at least
some minimal degree of creativity, it will be copyrightable. The Court held that
Rural’s directory displayed a lack of requisite standards for copyright protection as it
was just a compilation of data without any minimum creativity, which was a
requirement for copyright protection. Hence, Rural’s case was dismissed.

 In India

India strongly followed the doctrine of ‘sweat of the brow’ for a considerably long time.
the standard of ‘originality’ followed in India is not as low as the standard followed in
England. The Bombay High Court in its judgement regarding copyright of a news
article stated that there is no copyright for happenings and events which could be
news stories and a reporter cannot claim any copyright over such events because
he/she reported it first.

Eastern Book Company v. D.B. Modak

the Supreme Court discarded the ‘Sweat of the Brow’ doctrine and shifted to a ‘Modicum of
creativity’ approach as followed in the US.
The facts of the case - SCC, the Supreme Court Case reporter, was aggrieved by other
parties infringing their copyright and launching software containing the judgements edited by
SCC along with other additions made by the editors of SCC like cross references, head
notes, the short notes comprising of lead words and the long note which comprises of a brief
description of the facts and relevant extract from the judgments of the court and
standardisation and formatting of text, etc. The notion of “flavour of minimum requirement
of creativity” was introduced in this case.
t was held that to establish copyright, the creativity standard applied is not that
something must be novel or non-obvious, but some amount of creativity in the work
to claim a copyright is required. The Court held that these inputs made by the
editors of SCC can be given copyright protection because such tasks require the use
of legal knowledge, skill and judgement of the editor. Thus, this exercise and
creation thereof has a flavour of minimum amount of creativity and enjoy the
copyright protection.
Accordingly, the Court granted copyright protection to the additions and
contributions made by the editors of SCC. At the same the Court also held that the
orders and judgments of the Courts are in public domain and everybody has a right
to use and publish them and therefore no copyright can be claimed on the same.
 In subsequent cases, the Indian courts followed this approach and completely rejected the
plea to protect mere works of compilation under copyright.
Cinematograph Film
 Section 2(f): "Cinematograph film" means any work of visual recording
and includes a sound recording accompanying such visual recording
and 'Cinematograph' shall be constructed as including any work produced
by any process analogous to cinematograph including video films.
 every recorded work with moving visuals/images will be considered a
cinematograph film.
 Section 13(3)(a) – Copyright shall not subsists in any cinematograph film if a
substantial part of the film is an infringement of the copyright in any other
work.

CASE- INDIAN PERFORMING RIGHTS SOCIETY VS. EASTERN Indian Motions

Pictures Association AIR 1977 SC 1443

FACTS OF THE CASE-

 Associations of Cinematographic films filed objections before the Copyright Board

under Section 34 of the Act. The Copyright Board expressed the view that the
copyright remains with the music composers and that they could assign the
performing right in public to IPRS.
 Aggrieved by the decision of the Board, the respondents filed an appeal before
Calcutta High Court which reversed the decision of the Copyright Board and thus
held that the music composers don’t have right, instead it is the producers of
cinematographic films who has the copyright over it.
 Aggrieved by the Decision of High Court, the Appellants have preferred an appeal
under Article 133(1) of the Constitution.
 The appellants claimed that the music composers have the copyright over the work
and the IPRS can charge a fee, royalty when these works are to be performed in
public. On the other hand, the Respondents claimed that they have the copyright
over the work since the composers worked under a contract and the music was
incorporated in a film.

 ISSUES-
 Whether in view of the provisions of the Copyright Act, 1957, existing and future
rights of music composer, the lyricist is capable of assignment?
 Whether the producer of a cinematograph film can defeat the right of the
composer by engaging him?

 The Appellants argued that the composer of a literary or musical work has
exclusive copyright in a literary or musical work and that right is infringed by any
 person if he without a license from the owner of the copyright, performs the work in
public by exhibiting the cinematograph film. A person has to take permission from
the owner of the copyright i.e. the music composer, lyricist, etc. if he wants to
perform his work in public even by way of a cinematographic film. The Appellants
further argued that the copyright in a cinematographic film and the copyright in a
music work is different. They further stated that Section 17(b) of the Act has no
application hence the producers of films cannot claim copyright over the music work.
 Arguments by the Respondents- 
 The respondents argued that the soundtrack is part of a cinematograph film by virtue
of Section 2(f) of the Act.
 They further argued that cinematograph film is copyrighted under Section 13(1)(b)
of the Act and Section 14(1)(c)(ii) of the Act confers on the owner of copyright the
right to be seen in public and in so far as it consists of songs to be performed in
public. Hence the permission of composers of lyrics or music is not required for a
movie to be seen in public and no fees are required to be paid to IPRS. They have
further argued that Section 17(b) will apply because if the producers hire someone to
make music or lyrics as part of a film for consideration, it confers separate copyright
on a cinematograph film and the producer can exercise both the rights under Section
14(1)(c)(ii) and 13(4) of the Act. The Appellants relied upon the decision
in Wallerstein v. Herbert where it was held that the music composed for
consideration by the plaintiff under a contract for a drama to be performed on stage
was not an independent composition but is part and parcel of the drama and hence
the music composer did not have any copyright over it.

Judgment
 Ratio Decidendi- The Court while deciding Issue no. 1 held that, “It is accordingly
held that an existing and future right of music …… composer and lyricist in their
respective ‘works’ as defined in the Act is capable of the assignment subject to the
conditions mentioned in section 18 of the Act, as also in section 19 of the Act which
requires an assignment to be in writing, signed by the assignor or by his duly
authorized agent.

 According to Provision (b) & (c) of Section 17 of the Act if the producer of the
film hires a music composer to make music or lyrics to be incorporated in a film
under a contract of service for a valuable consideration, it is the producer and not
the composer who has the right over the music so composed. 
 Justice Singh further held that according to Section 17(c) of the Act if the music is
composed under a contract of service or apprenticeship, the producer will have the
right over the rights of composer and he can defeat the rights of the composer
according to the provisions of Section 17 of the Act. The Court also approved the
decision of Wallerstein v. Herbert [iii]on which the respondents have relied.
 Obiter Dicta- Justice Krishna Iyer while agreeing with Justice Singh widened
the right of the music composers to some extent. Justice Iyer held that the
producer does have exclusive right over the film as a whole and he need not pay any
fee or royalty to IPRS. But music as a separate part remains the copyright of the
composer which means the producers can claim copyright over the film when it is
performed in public as a whole but the producers cannot play parts of music
 separately in a theatre to attract the audience and if he does so he will infringe the
right of the composer.

 R.G. Anand v. M/S Delux Films and Ors

 Facts of the case- the plaintiff in 1953 wrote a play Hum Hindustani that was
performed and re performed play. The respondent was alleged for the violation of
copyright as the movie was made on the same line of that of the play with new title
New Delhi.
 The appellant filed a suit of permanent injunction in the Trial Court in Delhi. He
appealed that the respondent had tried to imitate his work, breaching his copyright,
and pleaded for a restraining order against the respondent. But the court refused to
grant the same, stating that both the film and the play did not have similarities
 The appellant then took to the High Court of Delhi, seeking to set aside the order
imparted by the Trial Court. But even the High Court refused to entertain his plea,
asserting that the Trial Court was correct in its stance. Seeing no other way, the
appellant finally approached the Supreme Court 
 Issue- Whether the film titled ‘New Delhi’, created by the respondent breaches the
appellant’s copyright for the play titled ‘Hum Hindustani’ or not.
 Judgement-
 SC held that even though the movie is made on same line as that of the play and
portrays the same concept but it cannot be said as copy of the play. Film had
portrayed many other things that were not the part of play. An ordinary man in its
ordinary prudence cannot tell the similarities between the two. Therefore, there is no
infringement of Copyright.
 The court also reiterated that the copyright does not apply to a concept or a
storyline, but it does apply to how they are represented. If the same strongly
encourages replication, then it would be considered a copyright infringement.

Authorship and Ownership of Copyright

 First Owner of the Copyright (Section 17)

Section 17 deals with the ownership of copyright. Provisos deal with the exceptions. Section
17 statutorily recognizes the author of the work to be the first owner of the copyright.
‘Author’ is defined undersection2 (d) of the Act.  As per Section 17 of the act An Author is the first
owner of copyright in a work but it lays certain exceptions in which the Author is not the first owner of
his work. AS per the rule the author is creator of his work with the essence of creative originality and
hence he becomes the first owner of his work.

 There are certain exceptions to the general rule that author is the first owner, i.e.
when the author is an employee and the work is made in the course of employment,
or the work is a cinematograph film or sound recording, then the copyright in the
work vests with the employer.
  An author may create a work independently, or he may create a work under contract
of service or contract for service.
 Where a man employs another to do work for him under his direct control and
supervision, which includes what to be done and how it is to be done, then it is a
contract of service.
 If, on the other hand, a man employs another to do certain work but leaves it to the
discretion of the other person the manner in which it is to be performed to result in
desired product, then it is contract for service. The ‘real test’ to ascertain the nature
of contract is whether the employee is employed as a part of the business and
whether his work is an integral part of the business or is only an accessory to it. In
the former case, it is a contract of service and in the latter a contract for service.
Therefore, the distinction between the two is that of between an employee and an
independent contractor.
 Contract of Service
 Contract of Service means contract of employment. It arises when there is a
employer and employee relationship. When there is an employer an employee
relationship then any work assigned by the employer to its employee who is under
the contractual obligation to perform it. In that case the employer will be the owner
of work and not the employee.
 In other words Where a man who acts an employer employs another to do work for
him under his direct control and supervision, which includes what to be done and
how it is to be done, then it is a contract of service. V.T. Thomas
v Malayala Manorama Co. Ltd. AIR 1989 Ker 49

 Najma Heptullah v. M/s Orient Longman Ltd. AIR 1989 Del. 63

Section 17: The fundamental rule according to section 17 is that the author is the first
owner of the copyright.

EXCEPTIONS-

1. Author an employee [section 17(a)]: First owner of literary, dramatic, artistic  work
made by a person in employment of newspaper, magazine or periodical:  The first
exception to the abovestated rule is that where a literary, dramatic or artistic work
has been created in the course of employment under a contract of service or
apprenticeship for the purpose of publication in a newspaper, magazine or similar
periodical, the employer is to be the first owner of the copyright in the work. There
will be a contract to the contrary in this respect. Further, apart for such publication,
in all other respects the author is to be the first owner of copyright in the work.

2. Work created for valuable consideration [section 17(b)]: First owner of  copyright in
case of commissioned work: photograph, painting, engraving,  portrait,
cinematograph film: Where a photograph has been taken or a painting or portrait
drawn or engraving or cinematograph film has been made for a
valuable consideration at the instance of any person, such person is to be the first
owner of the copyright unless there is an agreement to the contrary. A person who
 employs another to work for him creating a design for consideration becomes the
first owner of copyright.

3. Section 17 (C) Work made in the course of employment − in the case of a work made in the
course of author’s employment under a contract of service or apprenticeship, the employer (not
being proprietor of a newspaper, magazine or similar periodical), in the absence of any
agreement to the contrary, is the first owner of the copyright.

4. Section 17 (D) Lectures delivered in public − where a person has delivered any address or
speech in public that person will be the first owner of the copyright therein. If the speech is
delivered on behalf of some other person, such other owner will be the first owner of copyright.
This is so even if the person who delivers the speech is employed by any other person who
arranges such address or speech or on whose behalf or premises it is delivered.

5. Section 17 (e) Government work − in the case of government work, the government, in the
absence of any agreement to the contrary, will be the first owner of the copyright.

6. Section 17 f) Work made on behalf of a public undertaking − in the case of work made or first
published by or under the direction or control of any public undertaking such

Case- INDIAN PERFORMING RIGHTS SOCIETY VS. EASTERN Indian Motions

Pictures Association AIR 1977 SC 1443 and

Concept-

Joint Ownership- section 2z

To constitute joint ownership it is necessary that there should be a common design and co-
operation in carrying out that design. A person who only suggests the idea or the subject
matter of the work cannot be considered as joint author.8 A person who revises and makes
some minor addition for making the work more attractive cannot claim the authorship with
the author.9 Joint authors of a work hold the copyright as ‘tenants in common’ rather than
as joint tenants, and, in the absence of agreement to contrary, each owns an equal
undivided share in the copyright. One joint author cannot reproduce the work himself or
grant licenses to others to reproduce it, without the consent of the other author or authors,
but he may by himself take proceedings for infringement.

 The owner of the copyright can thus assign, licence, can make a testamentary
disposition or relinquish the right, transfer can also take place by operation of law in
the case of any other property. 

1. Assignment of Copyright (Section 18, 19 and 19A)

 Section 18: Assignment of Copyright

  Section 19: Modes of Assignment

 Section 19A: Disputes with respect to assignment of copyright

Limitations to the Copyright

 Copyright is not an absolute right, it is the right with limitations. There are 3

statutory limitations on copyright under the Copyright Act, 1957.

1. Temporal Limitations (section 22-29)-term of the copyright in published literary,

dramatic, musical and artistic works (section 22) If a literary, dramatic, musical or
an artistic work published within the lifetime of the author then the period is until
sixty years from the beginning of the calendar year next following the year in which
the author dies. (b) Term of copyright in anonymous and pseudonymous
literary, dramatic, musical or artistic work (section 23). (c) Term of the Copyright
in posthumously published work, which includes literary, dramatic, musical work or
adaptation of any of these works or engravings (section 24). Term of copyright in
cinematograph films (section 26) and Term of copyright in sound recording
(section 27).

2. Doctrine of Fair Dealing Section 52

The Chancellor, Masters & Scholars of the University of Oxford & Ors.

v. Rameshwari Photocopy Services & Ors. [DU Photocopying Case]

3. Fair Dealing/Permitted Acts (section 52)-

Section 52(1)(i): the reproduction of any work— 

(i) by a teacher or a pupil in the course of instruction; or
(ii) as part of the question to be answered in an examination; or
 (iii) in answers to such questions;
Syndicate of the Press of the University of Cambridge v. B.D. Bhandari & Anr.
2011 (47) PTC (Del.) (DB)

 Section 52(1)(q): the reproduction or publication of—  any judgment or order of a

court, tribunal or other judicial authority, unless the reproduction 
 case- Eastern Book Co. v. Navin J. Desai 2001 (21) PTC 57 (Del.)
 Eastern Book Co. v. D. B. Modak 2008 (36) PTC (SC)

 There is a difference between ‘Fair Dealing’ and ‘Public Domain’. If a work in

public domain then there is no application of Fair Dealing Doctrine as the work
is not protected by copyright. A work comes in public domain by any of the
following three methods:
 The work does not fall under section 13.
 The copyright owner, has relinquished his copyright vide section 21
 The term of copyright in the work has expired.
 

4. Non-voluntary Licences (section 31-32B)

Statutory Licence

 (i) Statutory Licence for cover versions (section 31C): Cover means a sound
recording made in accordance with section 31C. Any person desirous of making a cover
version, being a sound recording in respect of any literary, dramatic or musical work
with the consent or licence of the owner of the work, can do so.
 (ii) Statutory Licensing for Broadcasting of Literary and Musical Work and Sound
Recording (Section 31-D): Any broadcasting organization, desirous of communicating
published work to the public by way of broadcast (by way of television broadcast or
radio) or a performance of any published musical/ lyrical work and sound recording, can
do so by giving prior notice of this intention to the owners. The notice must specify the
duration and territorial coverage of the broadcast. Corresponding royalties are required
to be paid to the owner of copyrighted work. Rates of television broadcasting are
different from the rate fixed with respect to radio broadcasting. At the time of fixing the
rate of royalty the Copyright Board may ask the broadcasting organisation to deposit
some amount of money in advance to the owner.

Case-Entertainment Network (India) Limited vs Super Cassette Industries

Limited (2008) SCC 30-

The Department of Industrial Policy and Promotion (DIPP) vs. Wings case-

ESPN Stars Sports v. Global Broadcast News Ltd. 2008 (36) PTC 492
(Del.) (Broadcast Reproduction Right)

2. FACTS OF THE CASE:

Mr. Amar NathSehgal was a world-renowned sculpturist, who had been

conferred with several awards for his contribution to the Indian art
andheritage.

The main issues framed before the Delhi High Court on 1.4.2003 were:

(A). Whether the suit was barred by limitation?

(B). Whether the plaintiff had any rights under Section 57 of the Copyright Act,1957 in the
impugned work although the copyright in the same has been vested to the defendant?

(C). Has the defendant violated the plaintiff’s rights under Section 57 of the said Act?

(D). Whether the plaintiff has suffered any damage?

ARGUMENTS RAISED BY THE PETITIONER: he destruction of the mural which
was done without the permission, consent or authorization of the Petitioner resulted
in violation of his special rights under Section 57. whether the plaintiff had moral
right over the mural under Section 57 even when the copyright vested with the
defendant. It was hereby clarified that whenever the work of art or literary works is
done by an author, the rights such as attribution rights, divulgation rights, moral
rights of integrity and right of retraction are automatically vested upon him. The
court recognized these rights and held that all of them except the divulgation right
should be referred as author’s moral rights and the same to be vested in the plaintiff.

The court also acknowledged the author’s work of art or literary works to the
national culture. The court connected the right of authorship with the cultural
development of the country and hence emphasis was laid on the interdependency of
author’s right of integrity and the overall integrity of the nation. n the third issue that
whether UOI had infringed the moral rights of the author, the Court observed that
the mutilation is nothing but the demolition of the author’s work as to render it
imperfect and is therefore detrimental to the reputation of the author. It was held
that displaying the distorted version of the author’s work may led to emergence of
poor impression the author among the viewers and ultimately to the whole natio

PASSING OFF &INFRINGEMENT OF TRADEMARK

Facts of the case

NADINI VS. NANDINI

The dispute is for the adoption of the mark “Nandhini” by the Nandhini Deluxe
(appellant) who has been operating the commerce of eateries or restaurants under
the same mark since 1989. The restaurant applied for the registration of marks
nearly after 12-13 years.

But, the respondent “Karnataka Cooperative Milk producer Federation Ltd.” has been
operating its milk business under the same name since 1985. Moreover, it has
registered the same under classes 29 and 30.

The cause of action arose when Nandhini deluxe (appellant) adopted the registration
of the mark “Nandhini” for its restaurant and sought registration of a few products
which were sold at the restaurant.

The respondent objected to such registration upon the grounds that such a mark is
deceptively similar to their mark and hence it may cause confusion in the mind of the
public at large.

Issues-
“whether or not a comparable trademark or a similar trademark can be utilized by
two diverse companies for un-identical and distinctive items”.

Judgement-

According to the Supreme Court, the burden of proof (BOP) is on the person seeking
trademark registration to establish that his or her mark is not identical to an already
existing trademark and hence will not cause public confusion or deceit.

The Supreme Court decided that the new mark should not be compared side by side
with the current one while determining on the question of identicalness. In this
scenario, it is necessary to consider the markings as if they were an ordinary man
with common intellect, and how they would react, in order to assess the
identicalness of the marks.

Vishnudas v. Vazir Sultan Tobacco Ltd., a 1996 decision, expressly stated that "the
trademark proprietor cannot enjoy monopoly or appreciate imposing business
models over the entire class of goods in particular when the same is not using the
said trademark in regard to certain products falling under the same course."

Further, the Supreme Court observed that the appellant has been using the marks
since 1989 and the respondent since 1985 woefully the respondent has failed to
show any record by the year 1989 that it has acquired a significant character in the
society. Subsequently, it has been seen by the appellant and the Supreme Court as a
concurrent user of a mark.

According to the Supreme Court, the appellant's use of the mark "Nandhini" for
various goods would not jeopardize the Karnataka Co-operative Milk Producer
Federation Ltd's status or distinctiveness. the Supreme Court concluded that not only
are the parties' products distinct, but that their marks are also distinct, unalike, or
non-identical. Even the nature of business between the parties is so different that it
is pretty unlikely that the product will create any confusion between the two. As a
result, the Supreme Court determined that both marks are distinct and would not
deceive the general public.

Laxmikant vs. Patel passing off and the intentions-

this case, the plaintiff has expanded his business by incurring substantial
expenditure on advertisement and by incorporating the word ‘Muktajivan’ in all
stationary materials, albums, sign-board, etc. The defendant who was carrying on
similar business in the name and style of ‘Gokul Studio’ is intending to commerce
business through his wife by adopting the name and style of ‘Muktajivan Colour Lab
and Studio’. A passing-off action was initiated by the plaintiff.

The name under which a firm trades is  usually a trade-mark, according to the court
(or if the business provides services, a service mark, or both). A passing-off case will
be brought when the defendant company's name, or its intended name or brand
name, is aimed to deceive and divert business away from the plaintiff, or to cause
confusion between the two companies or trades. Even if the defendants chose the
name innocently, an injunction will be issued if there is a risk of confusion in
commerce or trade.

In Laxmikant V. Patel vs. Chetanbhai Shah, the Hon’ble Supreme Court held the
three elements of passing-off action are:-

a. Reputation of the goods;

b. Possibility of deception; and

c. Likelihood of damages to the Plaintiff.