Trademark

Trademark, generally, means a word, logo, name, signature, phrase, letters,

device, shape of goods, packaging, colours, or combinations of it. A visual

symbol that is represented graphically and able to distinguish the goods/services

of one enterprise from those of others. Trademark falls under the ambit of

Intellectual property right in other words Protection by Business Innovation

through Trademark.

Trademark In Indian Context - Indian trademark law statutorily protects

trademarks as per the Trademark Act, 1999 and also under the common law

remedy of passing off. Statutory protection of trademarks is administered by the

Controller General of Patents, Designs and Trademarks, a government agency

that reports to the Department of Industrial Policy and Promotion (DIPP), under

the Ministry of Commerce and Industry.

The law of trademark in India before 1940 was based on the common

law principles of passing off and equity as followed in England before the

enactment of the first Registration Act, 1875. The first statutory law related to

trademarks in India was the Trade Marks Act, 1940 which had similar

provisions to the UK Trade Marks Act, 1938. In 1958, the Trade and

Merchandise Marks Act, 1958 was enacted which consolidated the provisions

related to trademarks contained in other statutes like, the Indian Penal Code,

Criminal Procedure Code and the Sea Customs Act.[3] The Trade and

Merchandise Marks Act, 1958 was repealed by the Trade Marks Act, 1999 and
is the current governing law related to registered trademarks.The 1999 Act was

enacted to comply with the provisions of the TRIPS. Though some aspects of

the unregistered trademarks have been enacted into the 1999 Act, but they are

primarily governed by the common law rules based on the principles evolved

out of the judgments of the Courts.Where the law is ambiguous, the principles

evolved and interpretation made by the Courts in England have been applied in

India taking into consideration the context of the legal procedure, laws and

realities of India.

Types of trademark

As the world is changing, we are more surrounded by Businesses that contribute

towards escalating our economy.

Product Mark

The business involved in Product Mark focuses on goods rather than services.

Product Mark helps to identify the source of products or goods and differentiate

them from other companies. Example – Amul, Nestle, etc.

Service Mark

By seeing the word, we have clarity in mind that all kinds of services whether

hotels, transports, couriers, restaurants, advertising, etc. are protected under

Service Mark. Example – Apple, Wal-Mart.

Collective Mark

Collective Mark is owned by an organisation or association. It differentiates its

members or services from those of other organisations. For example, Tata Sons,

Reliance communications, etc.

Certification Mark

To acquire a Certification Mark’s a product/service needs to meet certain

standards. In India, to have Certification Mark certain standards need to be met

as provided by the BIS [Bureau of Indian standard]. It guarantees consumers

that the product meets certain prescribed standards and is safe. It reflects on its

origin, material, quality, and other characteristics. For example, ISI, Wool mark,

Silk mark, Hallmark, AG mark, Indian organic, etc.

Shape Mark

Apart from product/services, the shape also plays a prominent role when it

comes to trademarks, as innovation comes from ideas and every innovation

needs to be protected. For example, Shape of KitKat, Coca-Cola.

Sound Mark
Nowadays, many companies are branding their products or services with

specific sounds that help the consumer’s to not only differentiate their products

or services from others but also maintain a status quo in the consumer’s mind.

For example, Yahoo’s Yodel, Nokia tune, ICICI bank, etc.

Pattern Mark

Many companies are using their own patterns to make their product unique in

the market.

Significance of trademark registration :

● Trademark is an asset of the company, it brings economic benefits to the

owner/proprietor.

● Trademark builds trust amongst the consumers pertaining to products or

services as we all acquire the quality of the products and services.

Trademark is a way that helps us to identify the best product/services

because of its uniqueness.

● Acquiring registration and protection curbs infringement of the mark and

maintains a standard in people’s eye.

● Legal protection is provided to the trademark not only nationally but

internationally too along with recognition.

● Trademarks work as a shield to

protect the business.

Prior user prevails over the registered trademark

Section 34 of the Trademark Act, 1999 provides protection to the prior

use of the mark. It speaks in favour of the “First User” of the mark,

before the proprietor of a registered trademark in respect of particular

goods or services. The prior user of the mark is always on higher

pedestrian and occupy a supreme power, though in order to get protection

under section 34, which specifically talks about “First User” certain

condition or requirements has to be satisfied:

1. The use of the mark is similar to or resembling the registered

trademark.

2. The mark must be in continuous use and not intermittent.

3. The mark shall be compared fully and not in part. In Lupin vs. Sun

Pharma, Lupin [plaintiff] using the name “TRIVOLIB” since

2011 and Sun Pharma [Defendant] using the name “VOBIT” since

2008 but in 2012, Defendant added prefix TRI and started using

the name “TRI-VOBIT”. Delhi High Court noted that Plaintiff is

the prior use of the mark “TRIVOLIB” and ruled in favour of

Plaintiff [Lupin].

4. The mark must be used prior to the date of a registered trademark.

5. Merely adoption or advertisement of the mark does not constitute

the user of the mark.

 6. The first user must have gained a reputation in the market/ has

done voluminous sales.

Prior use act as a defence in a trademark infringement dispute

Yes, the first user acts as a defence in trademark infringement and

overrides the subsequent user even if the subsequent user has registered

the trademark. Provided:

● The first user has used the mark for a long and continuous period

compared to the registered user.

● Gained reputation in the market.

Supreme Court and High Court Judgements favouring the proposition .

1)Peps Industries Private Limited vs. Kurlon Limited, 2020 - the High Court of

Delhi talked about the scope of section 34 and if it can be used as a defence,

while also discussing descriptive trademarks. Via this suit under the steady gaze

of the Delhi High Court, the plaintiff party looked for an announcement of

lasting order against the respondent from assembling, selling, offering available

to be purchased, publicising, offering types of assistance straightforwardly or in

a roundabout way managing in merchandise and enterprises under the enlisted

mark ‘NO TURN’ or in any way utilising the plaintiff enrolled mark ‘No Turn’

or whatever other brand name which is misleadingly comparative thereto,

adding up to encroachment, making the litigant’s business look like that of the

offended party or bringing about weakening and discolouration of offended

party’s enlisted brand name. What’s more, the respondent thus took the guard

that it was the earlier user of the Brand name ‘NO TURN’.The Hon’ble Court

held that it is obvious that that the plaintiff has an enrolled trademark and the

imprint ‘NO TURN’ is being utilised by the plaintiff as a trademark. The Court

additionally saw that the respondent is the earlier user of the imprint since the

year 2007, notwithstanding, since the utilisation of the imprint by the

respondent is irregular and not voluminous to set up the protection under section

34 of the Act. Notwithstanding, the Court held that the plaintiff would in any

case not be qualified for the injunction for the explanation the imprint ‘NO

TURN’ is an expressive imprint and that the plaintiff had not set any material

on record to show that on the date of use or even on the date of enrollment

plaintiff’s brand name had gained the uniqueness to accomplish the situation

with a notable imprint.

Full Document

https://indiankanoon.org/doc/123662832/

2) M/s R. J. Components and Shafts vs. M/s Deepak Industries Limited, 2017 -

the Delhi High court again revisited the doctrine of the prior user of a trademark

under section 34 and revised the law that prior user will get priority over the

later user in the matters of trademark, even if the prior user has not registered

the trademark. The moment case was initiated by one, Rajeev Kumar who
professed to be the sole owner of M/s. R.J. Parts and Shafts (Plaintiff Company)

against the Defendants to limit them from in any way utilising the Plaintiff’s

enlisted brand name NAW. The Plaintiff Company is occupied with the matter

of assembling and promoting of bury alia ‘gears’ being farm hauler leaves

behind regard to products falling under Class 12. The Plaintiff battled that its

business is grounded and the reproved brand name NAW is a notable brand

name and throughout the long term its image has accumulated bountiful

altruism and notoriety in the exchange. Rajeev Kumar further battled that at first

his granddad to be specific, Ramji Das was the sole owner of the Plaintiff

Company and vide a deed of task in the year 2000 Ramji Das appointed all

rights, title and interest of the brand name NAW in the assignor. He additionally

battled that according to the deed of the task, he turned into the enlisted owner

of the imprint NAW and after the demise of his granddad the contested imprint

was being utilised by him.

The Court expressed that despite a few chances the Plaintiff had neglected to

deliver any proof and no believable proof had been illustrated to gather that the

brand name NAW was enrolled for the sake of Ramji Das was at any point

utilized by him or was alloted to Rajeev Kumar. Also, no proof had been

delivered by the plaintiff to dispute the defendants’ declaration that they were

earlier users of the imprint NAW since 1971. The Court also said that regardless

of a couple of chances the plaintiff had failed to convey any verification and no
authentic evidence had been represented to suspect that the brand name NAW

was enlisted for Ramji Das was anytime used by him or was alloted to Rajeev

Kumar. Additionally, no verification had been conveyed by Plaintiff to question

the Defendants’ presentation that they were prior users of the engraving NAW

since 1971. As expressed before, the Delhi High Court for this situation

perceived the earlier user directly as the better right which likewise beats the

enrolled owner of a comparable or indistinguishable brand name, considering

the previously mentioned realities, the Delhi High Court ordered an injunction

against the Plaintiff from utilising the imprint NAW.

Full Document

https://indiankanoon.org/doc/166567648/

3) Yash Tekwani vs Dheeraj Kashyap on 19 December, 2020 - By this order, I

propose to dispose of application of the defendant under Order 39 Rule 4 r/w

Section 151 CPC for vacation of exparte ad interim injunction order dated

19.10.2020 alongwith application under Order 39 Rule 1 and 2 CPC of the

plaintiff.

Full Document

https://indiankanoon.org/doc/156131229/

4) Institute For Inner Studies & Ors. vs Charlotte Anderson & Ors. on 10

January, 2014 - The plaintiffs, (ten in numbers) have filed the present suit

seeking declaration, permanent injunction and mandatory injunction alongwith

damages against the defendants in order to restrain the defendants from carrying
out activities of spreading Pranic Healing teachings, techniques, practises and

courses, or any other techniques, practises, courses and other teachings invented

by the Master Choa Kok Sui ("Master") and organising and continuing to

organise workshops, training programmes, seminars in relation to Pranic

Healing without authorization from the plaintiffs.

Full Document

https://indiankanoon.org/doc/6236790/

5)H S Sahni vs Mukul Singhal & Ors. on 17 January, 2022 -The suit has been

filed by the plaintiff/Sh. H.S. Sahni as the sole proprietor of M/s M.K. Auto

Sales Corporation, which is stated to manufacture and trade in a wide range of

automobile fittings, control cables and spare parts and other allied goods,

against the defendant No.1/Mukul Singhal and defendant No.2/Gaurav Singhal,

who are partners of the defendant No.3/M/s M.G. Cables (India) and are stated

to be brothers.

Full Document

https://indiankanoon.org/doc/64747093/

6) Addl. Cit vs Kwality Frozen Foods Ltd. on 5 October, 2004 -ORDER Dr.

O.K. Narayanan, A.M.

This appeal is filed by the revenue. The relevant assessment year is 1995-96.

This appeal is directed against the order passed by the CIT (A)-XLIV at
Mumbai on 28-5-2001 and arises out of the assessment completed under section

143(3) of the Income Tax Act, 1961.

Full Document

https://indiankanoon.org/doc/1605819/

7) M/S Lakhan Pal Shaym Kumar vs M/S Ram Prasad Gupta & Anr. on 24

May, 2012- The present suit has been filed by the plaintiff for permanent

injunction and rendition of accounts against the defendant alleging infringement

of its trademark "Shyam Surti"

Full Document

https://indiankanoon.org/doc/97883394/

8) Itc Limited vs Philip Morris Products Sa And Ors. on 7 January, 2010- The

plaintiff (hereafter referred to as "ITC") contends being one of India‟s largest

private sector companies with an annual turn-over of Rs.23,144 crores. It

mentions being rated amongst "World‟s Best Big Companies", "Asia‟s „FAB-

50‟" concerns and being listed in the Forbes magazine as one of the "World‟s

Most Reputable Companies". It claims also being rated amongst India‟s most

respected companies by the Business World and also amongst India‟s most

valuable companies by Business Today. The suit refers to various publications,

containing laudatory descriptions of the plaintiff. The plaintiff claims having

diverse business in products and services such as hotels, paperboards, speciality

papers, packaging, agro-business, Fast Moving Consumer Goods (FMCG),

including cigarettes; foods, confectionary, Information Technology, branded-

apparel, personal care, stationery etc. It also contends being one of the

country‟s largest foreign exchange earners. Para 11 of the suit lists several

achievements to the plaintiff‟s credit, including the "World Business Award",

instituted jointly inter alia by UNDP; it‟s restaurant Bukhara at ITC Maurya in

New Delhi having been declared as the "Best Indian Restaurant in the world" by

‗The Restaurant Magazine', UK; ITC Sonar in Kolkata being described as one

of the best hotels in the world by the Association of British Travel Agents

(ABTA); its Kaya Kalp - The Royal Spa at its hotel, ITC Mughal Agra as

"World‟s Best City Spa"; a Golden Peacock Award bagged by it for "Corporate

Social Responsibility (Asia)" in 2007 and also it being the only FMCG to have

featured in the Forbes 2000 list.

Conclusion

The modern Trademark Law of the country is in compliance with the TRIPs

agreement and is intended to protect the rights of the owners of trademark and

brand names. Section 34 of the Indian Trade Mark Act talks about the doctrine

of prior use. In the article, it is studied how the doctrine is applicable in Indian

practice and how the courts have interpreted the law as has been faced by them.

The first user rule is an original piece of the Act and it has consistently

appreciated pre-greatness. The owner of an earlier user, by utilizing and

spreading the word about the stamp or get up comparable to his merchandise,

and along these lines making it be related or related to those products, will

secure a semi restrictive right to the selective utilization of the imprint and
intrusion of this privilege by any individual who, by utilizing the equivalent or

some misleadingly comparative imprint and initiating the users to purchase

from his merchandise, not of the owner of an earlier user as his own adds up to

encroachment.