INCLUDE THE TERM ACT- TRADEMARKS ACT 1999

2. THAT BUYNOW’S SALE OF COUNTERFEIT PRODUCT AMOUNTS TO

TRADEMARK INFRINGEMENT AND UNAUTHAORIZED USE OF REGISTERED
TRADEMARK OF LIVELONG.

It is humbly submitted before the Hon’ble Court that the use of Petitioner’s marks clearly
constitutes ‘use’ under Section 2(2)(c)1 of the Trademark Act.

The word used in course of trade includes all essential elements with respect to production
and actual positioning of goods in the market.2 It extends to sale of goods to even limited
market.3 Livelong apart from its website, sells the products through an established set of
registered direct sellers under a Direct Selling Contract and products are marked with an
express declaration that they are sold by Livelong’s business owners. 4 BuyNow was not in
the list of Direct Sellers and sold the impugned products on Fastgram without its knowledge
or authorization causing loss to its reputation by selling counterfeit products.

2.1. THAT REGISTERED PROPRIETOR HAS THE EXCLUSIVE RIGHT TO USE THE
TRADEMARK.

S 28(1)5 of the Trademarks Act, 1999 gives the registered proprietor exclusive right to use the
trademark in relation to the goods in respect to which trademark is registered. In the case of
Ramdev Food Products6 the Hon’ble Supreme Court observed that the S. 28 confers
exclusive right to the proprietor who has a right to obtain relief in respect of infringement of
trademark as provided under the Act.7 Such right is, thus, absolute.8 In the present case it is
evident that the Livelong being aware of their Intellectual Property rights, have acquired the
device mark under the appropriate classes under the Act and has is the registered proprietor
of the work “Livelong”9. Hence, it is submitted that Livelong has the exclusive right to use
the Trademark.

1
Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999 § 2(2)(c).
2
Hermes Society Anonymous v. BH Ries Ltd., 477 U.S. 57, 60 (2003).
3
Express Bottlers Services Pvt. Ltd. v. Pepsi Inc., (1988) S.C.C. OnLine Cal. 62.
4
Moot Preposition, ¶3
5
Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999 § 28(1).
6
Ramdev Food Products Pvt. Ltd. v.Arvindbhai Rambhai Patel, (2006) 8 S.C.C. 726.
7
S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 S.C.C. 683.
8
Id. At 2; Para 47 “Section 28 of the 1958 Act confers an exclusive right of using trade mark to a person who
has got the trade mark registered in his name. Such right is, thus, absolute”
9
Moot Preposition, ¶3
2.2. THAT THE EXCLUSIVE RIGHT TO USE THE TRADEMARK HAS BEEN
INFRINGED UNDER SECTION 29(1) AND 29(6) OF TRADE MARKS ACT, 1999

It is humbly submitted before this Hon’ble High Court that Counterfeit trademark goods shall
mean any goods, including packaging, bearing without authorisation a trademark which is
identical to the trademark validly registered in respect of such goods, or which cannot be
distinguished in its essential aspects from such a trademark, and which thereby infringes the
rights of the owner of the trademark in question under the law of the country of importation. 10
It has been clearly laid down in the facts that BuyNow’s counterfeit products bearing the
Registered Trade Mark “Livelong” were sold at about 70% less than the MRP 11. Also, the
absence of safety seals in products 12 in itself establishes that the Products are Counterfeit. In
the present case, it is also well established that BuyNow is selling counterfeit products of
Livelong on Fastgram without Livelong’s authorisation 13 which makes them liable for
infringement.

It is humbly submitted that a trade mark is said to be infringed, when a person who is not the
registered proprietor in the course of trade, uses a mark which is identical to the trademark in
relation to the goods in respect of which trademark is registered as mentioned in S 29(1) 14 of
the Act. In the present case, the use of Livelong’s Trade Mark, by BuyNow, clearly amounts
to infringement as enshrined under S 29(1) and 29 (6)15 of the Act.

The case of Hoffman La Roche16 has stated that the test to determine trademark infringement
is, whether the totality of the proposed trademark is such that it is likely to cause deception
with respect to the source and if targeted audience is common. Moreover, in the case of
Cadila Health Care17 the Hon’ble Supreme Court held that the class of purchasers is a
relevant factor to be considered and the mode of purchasing the goods or placing orders for
the goods. In the present case, since BuyNow sells to targeted audience through online
medium of Fastgram, it is likely to cause confusion and deception among its viewers, both as
to whether the product is legitimate and if it is being sold by Livelong itself. Furthermore,

10
World Trade Organization Agreement on Trade-related Aspects of Intellectual Property Rights (“the TRIPs
Agreement”), Article 51, TRIPS Agreement - http://www.cptech.org/ip/texts/trips/51.html
11
Moot Preposition, ¶7
12
Moot Preposition, ¶8
13
Moot Preposition, ¶3
14
Hearst Corporation v. Dalal Street Communication Ltd., (1995) S.C.C. OnLine Cal. 231.
15
Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999 § 29(6).
16
Hoffman La Roche v. Geofferey Manner, (1969) 2 S.C.C. 716.; Lifestyle Equities C.V. and Others v. Royal
County of Berkshire Polo Club Ltd. and Others, 2019 SCC OnLine Del 8468 : (2019) 79 PTC 591
17
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 2 S.C.R. 743.
selling of counterfeit goods at a heavily discounted price 18 is in itself a prima facie evidence
of selling tempered goods having Livelong’s trademark and thus causes loss to Livelong’s
reputation19. Therefore, Livelong’s right to trade and carry on business is being jeopardized
due to its trademark infringement.

2.2.1 That the failure of Fastgram to take action to the notice issued amounts to
infringment

It is humbly submitted that it has been established in the case of MySpace Inc20. that it is the
duty of the intermediary to ensure that it does not host any infringed intellectual property,
when it receives a knowledge about such infringement21. In this instance the intermediary has
the duty to rectify such unlawful activity 22. In the present instance, Fastgram refused to
restrain Buynow from selling the impugned products despite serving a Legal Notice 23 paving
the way for the registered trademark of the Petitioner to be infringed. Hence, the Conduct of
Fastgram can be brought under Sec. 29(8)24 as any advertising of that trade mark which is
detrimental to its distinctive character; or is against the reputation of the trade mark
constitutes infringement

2.3. IMMUNITY UNDER THE DOCTRINE OF EXHAUSTION CANNOT BE APPLIED

It is humbly submitted before the Hon’ble Bench that BuyNow’s sale of tampered and altered
goods results in trademark infringement and thus it can not avail defence under Section 30(3)
of Trade Marks Act (Doctrine of First Sale/Exhaustion).
Sec. 30(3)25 of the Act lays down that where the goods bearing a registered trade mark are
unlawfully acquired by a person, it shall constitute infringement. Sec. 30(3) would not come
to the aid of BuyNow when there are changes in warranties, refund or return policies,

18
Moot Proposition, ¶7
19
Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999 § 29(4).- “(4) 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—
(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.”
20
MySpace Inc. v. Super Cassettes Industries Ltd. 236 (2017) DLT 47,
21
Ibid., ¶ 57.
22
Ibid
23
Moot Preposition, ¶ 9
24
The Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999, § 29(8).
25
The Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999, § 30(3).
changes in packaging, removal of codes of the products, and other conduct which has caused
damage to the reputation of ‘Livelong’ product.

2.3.1. Selling of Goods without the Consent of Registered Proprietor to Constitute

Infringement
It can be observed that the products by livelong are sold on a principal-to-principal basis
under a Direct Selling Contract. The Contract contains the terms and conditions and the direct
sellers are bound by a Code of Ethics 26. However, Buynow has been selling the products
outside the network which triggers Sec. 30(4),27 thereby making exhaustion not a defence28.
Infact, an unauthorized importation may well turn an otherwise “genuine” product into a
“counterfeit”.
When there is a change or impairment in the product,29 the immunity under the Exhaustion
cannot be claimed. Therefore, it can be concluded that Livelong can oppose, the action of
counterfeiting, the resale of its products by parties outside its network of selective
distribution, though the same parties purchased the articles from licensers or authorized
dealers.
The sale on e-commerce platforms of the Petitioner’s products would be infringement of the
Petitioner’s trademark rights as the Defendants are using the Petitioner’s trademarks, their
trade names for promotion of the products, sale of products, display of products, and
advertising of the products in a manner that is detrimental to the distinctive character and
reputation of the Petitioner’s marks. 

Thereby, lawful acquisition of the goods is not established at the prima facie stage.

2.3.2. That Selling of Tampered Goods Does Not Constitute an exception under Section 30

It is to be duly noted that Sub-section (3) to Sec.30 states that it shall not apply where there
exist legitimate reasons for the proprietor to oppose further dealings in the goods, where the
condition of the goods has been changed or impaired after they have been put on the market.
The same was enunciated in Kapil Wadhwa & Ors. v. Samsung Electronics Co. Ltd. & Anr.30
holding that the registered proprietor of a trade mark would have the right to oppose further

26
Moot Proposition, ¶3.
27
The Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999, § 30(4).
28
De Jetley v. Marks, (1936) All. E.R 863.
29
Xerox Corporation v. Puneet Suri, CS (OS) No. 2285/2006.
30
Kapil Wadhwa & Ors. v. Samsung Electronics Co. Ltd. & Anr, 2012 SCC OnLine Del 5172.
dealing, if physical condition of goods is changed as it would no longer be the same goods.
This Court cannot condone the Respondents to misuse and tarnish a reputed mark.
Thus, it can be observed that use of the mark by Respondents is violative of the Petitioner’s
trademark rights. Livelong, over six years has garnered goodwill in the wellness industry and
if any sale affects the reputation of the products, the same can be stopped. A 70% discounted
price constitutes impairment of the products31. The spurious act of the Respondent’s not only
will result in consumer confusion but will also lead to the dilution of trade mark,
dissatisfaction of consumers and disruption of authorized distribution channels.
In the present case principles of exhaustion in terms of Sec. 30(3) cannot exempt the
Respondents from liability thereunder and manner of sale of Livelong’s products constituted
dilution or tarnishing of the product and trademark infringement. Changes in packaging, and
any other conduct that causes damage to the reputation of the mark is likely to undermine the
quality of the mark. After receiving unsatisfactory products, customers form a bad impression
of the Petitioner and it thus causing possible damage to the reputation of the Livelong.

2.3.3. That Selling Tampered Goods Affects Rights of Genuine Customers.

It is submitted that Sec. 10332 is attracted in case of tempering an indication of origin of
goods or falsifying trademark. Resultantly, rights of genuine consumers are being affected, as
is evident in the present case. Permitting BuyNow to sell Livelong’s products would amount
to encouraging to fraud on the consumers. BuyNow wants to ride on the reputation of the
Company. In such a situation, it is the duty and obligation of the Court not only to protect the
goodwill and reputation of Livelong but also to protect the interest of the consumers.
In the present case, the Petitioner’s products are plant-based, organic and prepared in
accordance with Ayurvedic recipes under the proper guidance of practising Ayurvedic
specialists and health counsellors.33 The Petitioner also provides a platform for a one-on-one
health counselling session with a registered Nutritionist available on its mobile application. 34
It is contended that the consumer confidence is highly dependent on the rigours of making a
Livelong product, which stands completely defeated in the light of its products being sold
without safety seals or broken safety seals.
It also raises severe apprehensions on the authenticity of the product and possible side effects
to the consumer base of such products who are buying it under the belief that it is original.
31
Moot Proposition, ¶13.
32
The Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999, § 103.
33
Moot Proposition, ¶1.
34
Moot Proposition, ¶2.
Hence, it is humbly submitted that relief in a suit for infringement under Sec. 135 35 of
Trademark Act be granted.
Hence it is submitted that Buynow’s sale of counterfeit product amounts to trademark
infringement and unauthaorized use of registered trademark of Livelong.

35
The Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999, § 135.