CASE SCENERIOS

1. Dr.Kapoor v. Mr. Ram Kapoor [REFERENCE]

Many people say that common words can never be protected as trademarks, which is absolutely
wrong. Common words can be used as trademarks; it depends on how they are being used. So a
word “apple” is a common word but also it functions as a world famous trademark for a computer
company. So the answer to this question is that not everyone can protect their surname as a
trademark even if they are already using it as a company name or as the brand name for their
products or services, According to our law mark is considered as primarily merely a surname
because it is to create an impression on public that it is a mere surname and not a trademark. Such
trademark law is used to protect the consumers from being confused or deceived by the use of a
particular trademark so that not everyone can claim rights in the same surname just because it is
their actual surname. So no the defendant will not succeed in the suit because the surname kapoor
has already achieved a level of recognition among the consuming public as more of a mark and not
merely as a surname. So defendant claims cannot be justified just because he also has a same
surname.

2. Kamal Trading Co and Ors v. Gillette U.K Ltd 1988(8) PTC1 (BOM)

Companies’ names are important they serve as a very important marketing devices and statements
of identity. Many companies both large and small invest lot of money and time into marketing.
Trademark doesn’t infringe if both the companies do not compete and are not distributed in same
trade channels or products. If the two products are not related to one another and not likely to cause
any confusion to the public than the trademark law will not prevent the two companies from using
the same name. If the same name is registered in different trademark classes, than this doesn’t give
an issue to infringement claim. So here the defendant is selling toothpaste which is completely
different from what plaintiff is selling. So there won’t be any confusion to consumers. So
trademark law won’t be concerned if there is no risk of consumer confusion. So both the entities
can coexist peacefully without any serious degree of consumer confusion. So no the plaintiff’s
company won’t succeed in this action.

3. Tea Board v. Itc Limited 2011(48)PTC169(CAL) [REFERENCE]

There are some products that have unique features that allow them to aspire to be produced
exclusively in certain geographic regions. So the names you have in your minds for the products
like tea, dairy products don’t seem to allude to their origin. In the year 1999, the parliament had

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passed the Geographical indication of goods act 1999, these acts helps to provide for the
registration and better protection of geographical indications relating to goods in India. So here in
this case the defendant succeeds because the defendant is using goods (saplings) that have been
originated from a specific geographical area and he is not misleading the people as to the
geographical origin of such goods. But their (plaintiff) claims can succeed if the tea produced by
the defendant doesn’t meet the standards set out in the code of practice for the geographical
indication.

SHORT NOTES

1. WELL KNOWN MARK

One creates a trademark when he enters the stream of commerce, or when you enter a business
world. A trademark is a unique thing in IP law; it protects the consumer but not his business
entity. Most of the IP law protects those who enter stream of commerce. When a person creates
a good or service, he wish to sell that product to the public for money, and obviously those who
wants to purchase that product wants to know if it’s worth purchasing it or not. As you perform
your service, you build something called as “goodwill” and people will talk about it. People
will call it as a solid or crappy product depending on your performance in the market. This is
everything about trademark. So when I pick up a drill that has Dewalt[R] embossed on the side.
I know that I have a drill that will either stand up to the test of time, or the company will
replace if it craps out. But how do I know this? Because it’s a Dewalt. There are few touchy
rules regarding trademark infringement because the consumer is the one who loses. There are
few trade names around us that hold a high reputation or fame, which is so high that they often
represent themselves as a symbol of regard or a mark of identification in relation to specific
goods or services. In legal terms, these trademarks are known as “well-known marks”. In case
of Daimler Benz v. Hybo Hindustan [AIR 1994 DEL 2369] defendant was using the
plaintiff’s logo and word “Benz” because of which the plaintiff has sued for injunction against
the use of such logo. The court recognized plaintiff’s logo as a well-known trademark on the
ground of trans border reputation and goodwill and granted a injunction against the impugned
use of logo by the defendant.
2. CERTIFICATION MARK AND COLLECTIVE MARK
A collective mark is a mark used by different companies collectively. They represent a peculiar
characteristic of product or services offered by different companies or individuals. So a person

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 can be authorized to use the collective mark if they are a member of an organization, public
institution or even an association. For example, the CA mark used by chartered accountants in
India. Whereas the certification mark is like an approval stamp that shows that the goods and
services of the trademark owner are certified for their material, quality, standards, accuracy,
place of origin etc. The certification mark ISI provides a guarantee that the users are receiving
products or services approved and quality checked. Common products that have certification
marks are perishable edible goods, electronics, skincare products, children toys.
3. AUTHORISED USER UNDER GEOGRAPHICAL INDICATION ACT
It means that any person who is claiming to be the products of those goods in respect of which a
geographical indication has been registered may apply in writing to the registrar for registering
him as an authorized user of such GI. So here the registration of authorized user will
authenticate the genuine nature of the GI they are producing or trading in all market and help
them fetch premium price. So here the authorized user must conform to all the regulating
criteria relating to specification, description and quality as forth in the GI application of the
respective items for which the authorized user is registered. A GI tag is a kind of sign used on
products that have a specific geographical origin and possess qualities or a reputation that are
due to that origin. In simple words, one can say it is like a patent owned by a community rather
than individual. It can be used for agricultural, natural and manufactured goods. So for a
product to get a GI tag, the goods needs to be produced or processed or prepared in that
particular region only. It also needs to be in a special quality or reputation. Products like
Darjeeling tea, Chanapatna toys, Mysore Silk, Kollapuri Chappal, Agra Petha, Kanchipuram
Silk Saree as the same of place associated with the product.
4. ANTON PILLAR ORDERS
Anton pillar orders is a kind of civil search warrant which displaces the normal rules on
discovery of records. So this enables the applicant to attend the premises of defendant, without
any notice, or take any possession of the records of the defendant. It is a search order, given to
one party to enter into the premises of other. The primary purpose of an Anton Pillar Order is to
prevent a respondent from interfering with discovery and frustrating a trial by destroying
documents or evidence. And also to assist applicant to quickly establish the existence of
infringing items. In order to ensure that respondent does not destroy evidence, applications for
Anton Pillar Orders are made without the presence of the respondent. Because of this applicant
can only enter the premises of respondent with their permission, but if the respondent refuses to
comply with the order or if he obstructs its execution than they can be in contempt of court

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which might result in fines or imprisonment. This is issued only in circumstances where there is
clear and compelling evidence and where the court imposes a number of safeguards.

Submitted by:
PRAVALIKA RAMESH