Page |1

MAHARASHTRA NATIONAL LAW UNIVERSITY MUMBAI

TERM PAPER TOWARDS THE FULFILLMENT OF THE ASSESSMENT IN THE

SUBJECT OF INTELLECTUAL PROPERTY

PROTECTION OF TRADE NAME IN INDIA

SUBMITTED BY: NISHIT GOKHRU

SUBMITTED TO: PROF. SAJID SHAIKH

ENROLLMENT NO.: 2020 149

SECTION - A

1|Page
 Page |2

TABLE OF CONTENT

 INTRODUCTION.................................................................................................................................2

 BACKGROUND (HISTORY) IN BRIEF.................................................................................................3

 PURPOSE OF TRADE MARK PROTECTION.........................................................................................4

 RIGHTS & REMEDIES OF A TRADE MARK OWNER..........................................................................5

 LEGAL PROTECTION FOR TRADEMARKS..........................................................................................5

 UNREGISTERED TRADEMARKS.........................................................................................................6

 CASE LAWS......................................................................................................................................6

 CONCLUSION....................................................................................................................................8

2|Page
 Page |3

 INTRODUCTION

Trademarks do not depend on novelty. It requires "no fancy or imagination, no genius, no

laborious thought they simply reward a seller that was first to use a distinctive mark in
commerce. Among the three main types of intellectual property of patents, copyrights and
trademarks, the important distinction is that in the first two cases the protected right is to the
tangible object of creation where as in the case of trademarks it extends to the public goodwill in
the product that a trademark stands for. Copyright and patent protection stems from the desire on
the part of the governmental authority to stimulate economic activity by enriching public domain
with production of expressive and utilitarian original works. The rationale behind the Trademark
Laws, on the other hand, is based on regulating the quality of information in the marketplace by
protecting consumers from misrepresentation by sellers and preventing unfair competition
practices.

In India, under trading name or style as per seller profession he may sell his goods or deliver his
services. After period of time that service or business associated with a seller gains a goodwill,
publicity or reputation. This reputation, goodwill etc. becomes the property of the seller and
which is protected by the court. If the competitor starts selling the goods or service by the same
name then it would lead to the injury to that person who owns that property. The law does not
allow to anyone to carry a business in a way that it would persuade clients or customers in belief
that it is the reputed name which owns the true seller.

Copyrights and patents reward original artistic creativity and scientific innovation by securing
the rights of authorship, trademarks, on the other hand, allow commercial entities to secure
claims to an identity in the marketplace. The property value does not lie within the trademarks
themselves, but in the information investments of the companies that they embody. Since a
trademark is just a tool that helps the consumer navigate in the barrage of marketing information
by pointing at a particular provider of goods and services, it can be any device, a symbol, a word,
a phrase, a sound, a shape, even a color or a smell as long as it communicates a unique identity

3|Page
 Page |4

for the consumer. The successful registration of a trademark by a person or a company entitles
them to some exclusive rights, guaranteed under the Trademark Law in India.

 BACKGROUND (HISTORY) IN BRIEF

In India for over four decades the Trademark Law was governed by the Trade and Merchandise
Act, 1958. But due to the developments in Trading and Commercial practices, increasing
globalization of Trade and industry, the need to encourage investment flows and transfer of
technology. Need for simplification and harmonization of trademark management systems and to
give effect to important judicial decisions, The Trade Marks Act, 1999 was enacted. The new
Trademarks Act of 1999 is in line with the WTO recommendations and is in conformity with the
TRIPS Agreement to which India is a signatory. The new Act protects service marks and gives
provision for registration for collective marks. It differentiates between well known trademarks
and trademarks in general, and also special treatment and rights are envisaged for well known
trademarks The Act of 1999 also gives police the right to arrest in case of infringement.

 PURPOSE OF TRADE MARK PROTECTION

A trade mark is one which is capable of distinguishing the goods and services provided by one
individual from those provided by another.1 By doing so, a trade mark performs various other
ancillary functions. Firstly, it provides the customer a means to differentiate goods based on their
quality.2 It also provides a significant fillip to the enterprises so that they can indulge in fair
competition.3 Trade mark owners, thus, get an incentive in the form of goodwill, which their
trade mark bestows on them.4 Secondly, it provides for a reduction in cost of searching for the
consumer.5 Thirdly, it helps in protection of the consumer against deceit. The importance which a
trade mark enjoys in India can be gauged from the fact that the Indian courts have read trade

1
S. 2(1) (zb), Trade Marks Act, 1999; see also, Jill Ann Ealy, “Utilitarianism and Trademark Protection” (2010) 19 J
Contempt Legal Issues 14.
2
. Raveen Obhrai, “Traditional and Contemporary Functions of Trademarks” (2001) 12 J Contempt Legal Issues 16,
17.
3
Leslie D. Taggart, “Trade-Marks: Monopoly or Competition?” (1945) 43 Mich L Rev 659, 668.
4
Frank I. Schechter, “The Rational Basis of Trademark Protection” (1927) 40 Harv L Rev 813, 819.
5
William M. Landes and Richard A. Posner, “Trademark Law: An Economic Perspective” (1987) 30 J L & Econ
265, 270.

4|Page
 Page |5

mark protection as a part of fundamental right of the citizen. 6 In the same breath, the Indian
courts have also read trade mark as a property right. 7 The economic justification of trade mark
protection lies in the fact that it reduces the transaction cost. The transaction cost includes search
cost. Trade mark reduces the search cost by minimising the time to make the decision to purchase
a good or service. Time to make a purchasing decision affects transaction as well as transaction
cost.

 RIGHTS & REMEDIES OF A TRADE MARK OWNER

To prevent the unauthorized use of the trademark the owner of the trademark may commence the
for trademark infringement. However, registration is not required. The owner of a common law
trademark may also file suit, but an unregistered mark may be protectable only within the
geographical area within which it has been used or in geographical be protectable only within the
geographical area within which it has been used or in geographical areas into which it may be
reasonably expected to expand. .

Two types of remedies are available to the owner of a trademark for unauthorized use of his or
her mark or its imitation by a third party. These remedies are: an action for infringement’ in case
of a registered trademark; and an action for passing off’ in the case of an unregistered trademark
While former is a statutory remedy, the latter is a common law remedy.

In an action involving infringement or passing off, a court may grant relief of injunction and/or
monetary compensation for damages for loss of business and/or confiscation/destruction of
infringing labels and tags etc. Although registration of trademark is prima facie an evidence of
validity of a trademark, yet the registration cannot upstage a prior consistent user of trademark,
for the rule is ‘priority in adoption prevails over priority in registration’.

 LEGAL PROTECTION FOR TRADEMARKS

A person or an entity that sells products under a trademark gradually gains exclusive rights over
the trademark through usage. However, it is advisable for enhanced security to register a
trademark under the applicable intellectual property laws in order to prevent competitors from

6
Colgate Palmolive v. K.V. Swaminathan, 1990 SCC OnLine Bom 175: AIR 1991 Bom 111.
7
Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel, (2006) 8 SCC 726: AIR 2006 SC 3304

5|Page
 Page |6

using a particular trademark. Two types of remedies available against violators of unregistered
trademarks are passing off Actions and Criminal Proceedings which result in suitable
punishments. Civil proceeding against infringement is available only for registered trademarks.
This provides remedies like restraint orders, injunctions, damages and account of profits.

Most intellectual properties like copyrights and patents enjoy a limited duration of protection,
while trademarks can have virtually an infinite period of protection provided certain conditions
are met. For instance, it is important that the trademark should be in use and renewed from time
to time. It is also vital to take action against infringers whenever spotted. Trademarks were first
registered in Britain in the mid 19th century. It is interesting to note that the earliest registered
trademark (Bass breweries, 1846) is still in force today.

 UNREGISTERED TRADEMARKS

As a first-to-use country, unregistered trademarks with prior use can be protected under common
law in India. The passing off of trademarks is a tort actionable under common law and is mainly
used to protect the goodwill attached to unregistered trademarks. It is founded on the basic tenet
of law that one party should not benefit from the labour of another. Various judicial decisions
have established that a passing-off action is a misrepresentation made by a person in the course
of trade to prospective customers of the manufacturer or the ultimate consumers of the goods or
services that it supplies: which is calculated to injure the business or goodwill of another party;
and which causes actual damage to the business or goodwill of the party which has brought or is
likely to bring the action.

 CASE LAWS

1. Bajaj Electrical Limited, Bombay v. Metals and Allied Products, Bombay8

In this case, the plaintiff, Bajaj Electricals filed a suit for injunction on the ground that their
trademark was similar to the family name used as a trademark by the defendants. It was held by

8
Bajaj Electrical Limited, Bombay V.Metals and Allied Products, Bombay AIR 1988 Bom. 167(169, 170).

6|Page
 Page |7

the Division Bench of Bombay High Court that the word "Bajaj" had quite a good reputation in
the country and abroad and prima facie, it was clear that the defendants had intentionally and
dishonestly tried to pass-off their goods by use of name "Bajaj". Accordingly, an injunction was
granted and defendants were restrained from in any manner using the products mentioned in the
brochure as marked "Bajaj".9

2. Borosil glass Works Ltd. v. O.P.Batra10

The plaintiff was carrying on the business of kitchenware under the trade mark "Borosil". Later
the defendants also started the business of kitchenware under the name "BOROSIL”. It was held
that it was a calculated attempt on the part of the defendants to pass-off their goods. The
defendants were held to be dishonest and were restrained by way of an injunction from using the
said trademark.11

3. Delhi Lakme Ltd. v. Subhas Trading12

In a case where the same range of cosmetic products were manufactured under the trademarks
‘Lakme' and ‘Like-me' which belonged to the plaintiff and the respondent respectively, the Delhi
High Court held that the two trade marks were phonetically similar and the prospective buyers of
the plaintiff's products would be deceived and confused by this similarity of the names. Hence,
an injunction was granted in favour of plaintiffs.

4. Ciba-Geigy Ltd. v. Surinder Singh13

The plaintiffs had registered their trademarks 'Ciba' and ibaca' in various classes and acquired
great reputation and goodwill. Defendant began using the mark Cibaca' in relation to automobile
filters. No explanation was offered for adoption of the mark. Likelihood of confusion and
deception, although the goods were different from plaintiff’s goods, permanent injunction was
granted in this case.14

9
David I Bainbridge, "Case and Materials in Intellectual Property Law", 2nd Ed., p.276.
10
Borosil glass Works Ltd. v. O.P.Batra, 1966, 61 DLT 414.
11
David I Bainbridge, "Case and Materials in Intellectual Property Law", 2nd Ed., p.276.
12
Delhi Lakme Ltd. v. Subhas Trading 1996 PTC(16)567
13
Ciba-Geigy Ltd. v. Surinder Singh, 1998 PTC 545(DEL).
14
P.Narayan, "Law of Trade Marks and passing off", 2004, 6th Ed., Eastern Law House Publication, p.769.

7|Page
 Page |8

5. N.R. Dongre v. Whirlpool Corporation15

It was held by the Supreme Court in this case that even if the trademark was registered, the prior
user of the same or similar trademark could maintain a passing-off action against the registered
owner of it.

6. Maekawa Bearing Manufacturing Co. Ltd v. Onkar Bearing Industries16

It was held by Delhi High Court that the register had discretion to permit the registration of more
than one identical or nearly resembling trademark. The act of the registrar was neither perverse
nor arbitrary, even if he registers the trademark which was already registered or the trademark
was in respect of the same goods or description of goods. It was held that the Registrar could
impose conditions and limitations accordingly.

7. S.V.S Oil Mills represented by its partner S.V Chandrapadian v. S.V.S Rajkumar trading
as Agro goods and S.V.S Oil mills17

Plaintiff has been marketing its oil products under trademarks S.V.S for about 3 decades and
acquired I.S.I status. The defendant is also using the trade name and style with an addition of
letter R' in small font, manufacturing and marketing similar products. The High Court of Madras
granted injunctions in favour of plaintiff, as there is likelihood of consumer being deceived.

 CONCLUSION

Trademark Registration provides an exclusive right to the owner and distinguishes the product
from other similar products from other businesses. Trademark proves as intangible assets for the
owner and protects the brand for a long time. Trademark provides an exclusive right to the owner
to use such words, logos, and slogans. In a market like India it is crucial that a brand is protected
and safe. Hence, not out of compulsion but out of necessity it is important to have a trademark
registration in India.

15
N.R. Dongre v. Whirlpool Corporation, 1996 PTC (16) 583.
16
Maekawa Bearing Manufacturing Co. Ltd v. Onkar Bearing Industries, 1998 PTC (18) 300.
17
S.V.S Oil Mills represented by its partner S.V Chandrapadian v. S.V.S Rajkumar trading as Agro goods and S.V.S
Oil mills, 2002(24)PTC 330(Mad.)

8|Page
 Page |9

Trademark Infringement is the issue of the moment and has attracted with it the laws related not
only to Intellectual Property but also Tech Laws, Media Laws, Sports Laws, Marketing Laws etc.
The Trademark Legal framework has to be a combination of National and International Laws
and shall work in consonance with Trans-border Laws where the Judgments from various
countries being used as citations shall act as a guide towards framing a new legal structure in
India.

9|Page