INTELLECTUAL PROPERTY RIGHT LAW-I 2016 fp O12 (a) Write a note on various types of intellectual property rights as discussed under TRIPs Agreement. (10) ie meaning of ‘well-known trade marks’ under Ans. 1. (a) Trade Related aspects of Intellectual Property Rights (TRIPs) agreement of WTO is the most diverse and effective agreement for intellectual property seven types of intellectual property which are as follows:— (i) Copyright and Related Rights [Articles 9-14]. (ii) Trade Marks, Trade Names and Service Marks [Articles 15-21]. (iii) Geographical Indications [Articles 24-24]. (iv) Industrial Designs [Articles 25-26]. (v) Patents [Articles 27-34]. (vi) Layout Designs of Integrated Circuits [Articles 35-38]. (vii) Undisclosed Information [Articles 39-40]. (i) Copyright and Related Rights Copyrights is right given by the law to creators of literary, dramatic, musical and artistic works and producers of ae aa film$ and sound recordings. In fact, it is a bundle of including, inter alia, rights of reproduction, communication "to the public, adaptation and translation of any work. creatively. Copyris ‘only the form of expressions of ideas, not the ideas themselves. 360 Intellectual Property Right Law-I 361 (ii) Trade Marks, Trade Names and Service Marks A trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise. According to Article 15.1 of the TRIPs Agreement, any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings shall be capable of constituting a ‘trade mark’. Thus, trademark is a distinctive sign or indicator used by an individual, business organization or other legal identity to identify that the products or services available for consumers originate from a unique source. The trademarks are usually used to distinguish the products o services of one entity from other. Geographical Indications Rice, Pashmina Wool etc. % a ‘Geographical indications’ have matured into’an independent IPR combining appellations of origin (characteristic qualities on account of peculiar geographical environment) and indicationoe with it. For eg. Coca- ks. Paris Convention for Protection of Industrial 1e TRIPs Agreement contains any definition of the marks”. a Well-known trademarks under the Indian Trade Marks Act, 1999 Section 2(1)(zg) of the Trade Marks Act, 1999 defines well- known trademarks in the following way: 5 ‘A “well-known trademarks” in relation to any goods or services, means a mark which has become so; (i) to the substantial segment of the public which uses such fe ck ae oe ‘goods or receives such services; which are u: rood nee gsthe= of products, like computers, TV, ee such mark in relation to other goods or watches, etc. (wii) (iit) Beaigiey ow lense acting = a connection in the course of trade or rendering of services; (iv) between those goods or services and a person using the Soe Se Se a isclosed Information (Trade Secrets) Act provides for absolute grounds for and states very categorically that (1) the : : a symbol which for registration it has acquired a distinctive character as aut air ae of the use made of it or is a well-known trademark.364 LLR Solved Papers—Fowrth Semester n ‘The factors for determining whether a trademark is a well- known trademark or not has been provided under section 11(6) of the Trade Marks Act, 1999 as under:— () Knowledge or recognition of the trademark in the relevant section of the public. (ii) Knowledge obtained by the public as a result of promotion of trademark. (ii) The duration, extent and geographical area of any use of the trademark. (iv) The duration, extent and geographical area of any promotion of the trademark. (v) Advertising or publicity and presentation at fairs. (vi) Exhibition of the goods or services, (vii) Duration and geographical area of any registration. Intellectual Property Right Lane-1 65 (viii) Record of successful enforcement of the rights in the trademark. (ix) Recognition of the trademark as a well-known trademark by any Court ot Registrar. The combined effect of section 11(6) and section 11(9) show totality of the circumstances which determines that a mark is well-known mark. In Carrefour v. Subburaman & Ors., 2007 (35) PTC 225, the Court held that on a careful consideration of ‘the rival contentionsLLB. Solved Papers—Fourth Semester (ii) (ii) The word Solio is an invented word, unless it is to be i) regarded as the Italian word Solio, which means a throne, a royal seat. But no reliance can be placed on such ‘meaning in a foreign tongue, because such meaning has no reference to the character or quality of photographic paper in relation to which the word is used as a trademark. The word ‘Solio’ is not ‘Sol’ and ‘Sol’ is not ‘Solio’. By taking the first 3 letters of the word “Sol”, by some circuitous process the word may be said to be descriptive of the character or quality of the goods. But the word ‘sol’ in Latin would equally be connected with boots or agricultural implements, which have reference to the character or quality of goods; So, the word ‘Solio’ may pass the test for an invented word even though it contained in Intellectual Property Right Law-1 369 itself an obscure reference to the great source of light while the goods intended to be used for photographic purpose. i) Section “)(b) Section 9(1)(b) prohibits registration of trademarks “which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services. * Section, 9(1)(b) applies to marks and indications that are both descriptive and non-distinctive in relation to the goods or services for which protection is sought.Intellectual Property Right Law-I ; characteristic in the mark itself so that distinctiveness be expected to result whatever the type and scale of the and thus secure an estimation of the positive quality in BA LLB. Solved Papers—Four of cigarettes with Simla, Therefore, he refused registration. After this company filed an appeal before the sing! Calcutta High Court, who also refused registration, the company filed appeal before the division be Court. The issues before High Court were as follow: mark. : iv) Fi ck is composite (iv) Finally Court held that though the mari 4 the word Simla is the prominent feature of the mark and, inherently capable of distinguishing? distinctiveness is claimed for the word ‘Simla’. Further, (ii) Whether mark “Simla” attained distinctiveness on the date hat the Sniiabal ‘the i of being the product meio of the appellant whose products are of goods standard. The decision Bench of Calcutta High Court held as follows:— Accordingly it could not be said that the word ‘Simla’ by (i) The expression “distinctiveness” has been understood to itself has acquired a secondary meaning to its customers so mean ‘some quality in the trademark which earmarks the as to conjure in their mind the cigarettes belonging to the goods so marked as distinct from those of other producers appellant, if the inscriptions had not been there. A trademark of such goods. like ‘Simla’ for goods to distinguish them from other goods (i) A word is not debarred from registration, because it is geographical. A geographical name not used in geographical sense to denote place of origin, but used in an arbitrary or oo ai fanciful way to indicate origin or ownership regardless of of the use, ‘Simla’ is adapted to distinguish or capable of location, may be sustained as a valid trademark. But there is really nothing fancy in the word ‘Simla’ to suggest that i ee z ue it is not used in a geographical sense. Assuming:that Simla reseed beau pang? Sa aeee e has no agricultural potentialities for growing tobacco and geographical name and a well mown has no factory for manufacturing tobacco is not conclusive, The appeal, therefore, was dismissed. because it may have a factory in the future. The appellant's Position of above Case under Trade Marks Act, 1999 of distinctiveness and it cannot be claimed in the present case, that the word Simla has acquired a secondary meaning and that in the course’ of only 3 years, so as to mean by association to be always the tobacco of the appellant without reference to the geographical place Simla. (iti) Further, ‘Simla’ is not an invented word; and tl igh it has no reference to the character or place of origin of the goods sought to be registered, it is not inherently distinctive or adapted to distinguish “as there is no sufficient distinguishingLLB. Solved Papers—Fourth Semester Prohibits the registration of the trade zag ist exclusively of marks 0 to describe the goods of a manufacturer, the less apt it is to distinguish them. Thus words which are descriptive of goods are not considered prima facie distinctive. In this case, to the character or quality of goods in connection with which Intellectual Property Right Law-1 bo it is used, and having no reference to anything else, cannot be an apt or appropriate instrument for distinguishing the goods of the trade from those of another. Finally the Court held that, the word “Rasoi” has not become distinctive of the applicant’s goods and as such it is ineligible for registration on the ground that no trader can have ordinarily a men ee374 LLB. Solved Papers—Fourth Semester given satisfactory performance and it is for this reason that they are in demand in the market. Thus, the word “Janta” does not have direct reference to the character or quality of the goods, and does not come within mischief of section 9(1)(d), therefore, not disqualified for registration under section 9(2) of the Act. (ji) Court further held that by seeking a monopoly to use the word ‘Janta’ in its trade mark, the appellant is attempting. to enclose and to appropriate as private property certain little strips of the great open common ‘of the Hindi Language. As a result of the above discussion, it must be held that although the appellant had led evidence to prove that its torches bearing the name ‘Janta’ have acquired not adapted to distinguish or is in fact not capable istinguishing the appellant's goods. the Court held that éven if the appellant's proposed tisfies the conditions prescribed in section 9 of Decision of the Question The word “Khusboo” written in artistic manner with picture The concept of deceptive similarity is relevant in the registration of trademarks as well as in infringement and passing off actions. Discuss the principles followed by the Courts while deciding such cases. (20) Ans. 3, In simple words, deceptive similarly can be defined as similarity between the trademarks which can likely deceive the Intellectual Property Right Law-I i intellect to believe that the general public of average inte t : question is in some way or the other linked to the registered - a well-known trademark. * similarity has been recognized as one , i 1 plea of trademark infringement as well as passing off can be made and an injunction order can be decreed by the Courts if it so nearly resembles that other mark as to be likely to or cause — confusion.” The Act does mention that what will be the “Deceptively Similar” but do not lay down any particulars to decide it. 2 Over the years, through case law, the Courts have developed principles and factors to be applied to determine the question of deceptive similarity between marks. Section 11(1) provides that, a trade mark shall not be registered it— (@) the mark is identical with an earlier trade mark and goods or services are similar to those of earlier trade mar (b) the mark is similar to an earlier trade mark and the go or services are similar to those of earlier trade mark; () in either of the above cases there is likelihood of c« the mind of customer, and i (a) the confusion includes the likelihood of earlier trade mark. For an objection to arise a number of req satisfied. (i) There must be an earlier trademarkLLB, Soloed Papers—Fourth Semester than that of the trade mark in questi where appropriate, of the priorities clai the trademarks; king account: {in respect of a trade mark which, on the date of the application for registration of the trade mark in question, or “A mark is identical with the trade mark where it reproduces, without any modification or addition, unnoticed by the average consumer. (iii) The goods or services must be the same as of the earlier trade mark. After fulfilling the above three requirements, the following questions should be asked. (a) Is there a similarity of marks? (b) Is there a similarity of goods or services? ‘ere a likelihood of confusion by virtue of the similarity in (a) and (b)? Now we shall discuss these in detail. (a) Are the marks similar? The principles regarding the comparison of marks was discussed in the following cases: Pianotist Co.’s Application (1906) 23 RPC 774 In comparing the two words mark, Justice Parker, evolved the following principle: Intec Property ight Law 7 “You must take the two words. You must judge of them, both the mind of the public which will lead to confusion in the goods ~ then you may refuse the registration, or rather you ‘must refuse the registration in that case.” ‘The principle discussed above have evolved into five basic guidelines that can be applied in respect of all trademarks: (1) The marks should be compared as a whole. (2) Imperfect recall must be taken into account. (9) The idea of the mark is important. ae (4) The look and sound of the mark must be considered, 1. Mark should be Compared ea ateaama ciate RPC 141 at p. 146. 5378 marks in the minds of the average consumers of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer mark as a whole-and does not proceed to ious details, In Sabel B.V. v, Puma AG, (1998) PRC 199. the trade mark second mark, into a belief that he was dealing with goods which before the same mark as that was which he was acquainted. Whether or not two marks convey the same idea is a question of act and each case must be considered on its merit. 4. Look and sound of the mark As stated in Pianotist Co.’s Application, (1906) 23 RPC 774 at. 777, when comparing two marks it is necessary to ‘judge of them to their look and by their sound’. The reason for considering both of these features is that: larks may be quite different phonetically, but nevertheless be confusingly similar due to their visual similarity; or ii) Marks may look quite different but sound confusingly similar. In Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel BV, (1999) ETMR 690 at paragraph 28, 5. Trade Channels of the Goods and Services When considering whether two marks are confusingly similar the following should be taken into account: (i) The nature of the goods and service; and (ii) The purchasers, or the market, for those goods and services. (b) Are the goods or services similar? The degree of similarity between the respective goods or services is also a relevant matter to take into account in assessing, the likelihood of confusion. LLB. Solved Papers—Fourth Semester In Canon Kabushiki Kaisha v. Metro Goldwyn Mayer Inc, is similarity in the goods or services: ce (a) The respective uses of the respective goods or services; (b) The respective users of the respective goods or services; (©) The physical nature of the goods or acts of service; (d) The respective trade channels through which the goods or | services reach the market; (@)_ In the case of Self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves; | research companies, who of course act for industry, the goods or services in the same or different sectors. (2) Comparison of Services 4 In deciding whether the services are similar, the factors will be considered: * the nature and characteristics of the services; * the origin of the services; * the purpose of the services; : * whether the services are usually provided | same business or person;LLB. Solved Papers—Fourth Semesta In Sabel BV. v. Puma A. Court of Justice (ECJ) held that be appreciated globally, taking the circumstances of the case. () The degree of similarity in the marks In assessing the degree of similarity between marks, one must determine the degree of visual, aural or conceptual similarity between them and evaluate the importance to be attached to those different elements taking into account the category of goods or services in question and circumstances in which they are marketed. For example, in clothes, the visual impact is more important than aural similarity as such goods are not normally purchased on verbal request but carefully selected and inspected from a rack in a shop. (2) The degree of similarity in the goods or services Where either the respective marks or goods or services are identical, a finding of similarity under the other heading will probably result in a finding that there is a likelihood of confusion. (3) Interdependence of the relevant factors A global assessment of the likelihood of confusion requires the Registrar to be conscious of the interdependence between the degree of similarity between marks and the degree of similarity Intellectual Property Right Lrw-1 . 38 between the goods or services. A greater degree of similarity between the marks may offset a lesser degree of similarity between goods or services. Similarly, registration of a mark may be refused despite a low degree of similarity between the goods + normally perceives a mark as a whole and does not proceed to analyse its various details. + rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect ‘ecollection of them he has kept in his mind. * ‘level of attention likely to vary according to the category of goods or services in question and cost of the goods. * perception will vary according to the methods by which _ the goods are normally purchased. ‘ (5) The degree of distinctiveness of the earlier mark which may the result of inherent character or reputation through usetake into account the carelessness or indifference of of a mark does not give grounds for of confusion in the strict sense, Marca G. But if the association between the marks ve that the respective goods linked undertakings, there the meaning of the section, in idwyn Meyer Inc. Thread Co. Ltd. v. James Chadwick and Bros. deciding whether a particular trade mark is likely to or cause confusion that duty is not discharged by at the result by merely comparing it with the trade k which is already registered and whose proprietor fering opposition to the registration of the mark. The question to decide in such cases is to see as to how 9 Purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what tespect he would connect the trade mark with the goods which he would be purchasing,” Q.4 Write a detailed note on the disparagement of trademark with the help of case law. (20) Ans. 4, The term ‘disparagement’ has not been defined in any statute, According to Black's Law Dictionary the word ‘disparage’ means to connect unequally; or to dishonor (something or someone) ,ment that discredits or detracts ‘on of another's property, product or business: para; or detracts product or business. ; ‘Comparative advertising’ is the term ae to eg advertisements where the goods or services ee : compared with the goods and services of another trader. as Comparative Advertising (CA) is a marketing strategy a por marketer shows how his goods or services are supeniog ee his competitors by comparing the benefits costs within advertisement itself. %, : Comparative advertising benefits the consumer as it usually compares the price, value, quality or other mens of different products, thereby enhancing the awareness of a Gee However there is an important proviso attached to this: ” is a false and injurious statement Soni the reputation of another's i tive terests. Thereby legally speaking, compara advertising is allowed to the extent: A trader is entitled to compare his Product disparagement is not limited to advertising. Even an act on the part of a third constitute product disparagement eg., a criticizes a particular good and in the process: Trademark Law and Comparative AdvertisingLLB, Solved Papers—Fourth Semest and will not constitute infringement. The phrase ‘detrimental to its distinctive character’ as. given under the aforementioned sections, could be perceived asa situation where a registered trademark is being used by a competitor for the purpose of indicating the origin of the goods as being his, and thereby causing confusion about its origin. However, this is generally not the concern of product disparagement (but may give rise to issues related to comparative advertising). The advertiser, while using a competitor's trademark, may or may not make a reference to the source or origin of the competing goods, but would certainly not relate such goods, which he is disparaging or disapproving, to himself. Thus, the issues to be addressed from the viewpoint of product disparagement under the aforementioned sections are, ‘in accordance with honest practices’ and ‘is not such as to detrimental to repute of the trademark.’ : F Thus, non-honest practices or the use of trademark that is detrimental to the reputation or distinctiveness of the mark is the only grounds of infringement. The term “honest practice” is nowhere defined. By its very nature, the concept must allow — of a certain amount of flexibility. Its detailed contours may vary from time to time and according to circumstances as well as the ter | Intellectual Property Right Law-1 a representation is ‘literally false’ will not render the advertisement dishonest.388 Intellectual Property Right Law-1 389 told is the truth. It can be false, . i) the existence of plaintiff's goodwill, Therefore, there should be regulati t fi es SPs misleading and disparaging advert lead Ct) 8 solsrepresantationy And the public. (iii) damage (or likely damage) to the plaintiff's goodwill or reputation. Q5. In Harrodas v. Harrodian School, (1996) RPC 698 at 713, it was What are the features of a passing off action? Differentiate held that there are three elements of the tort for passing off which between an infringement action and passing tion, (20) oraine Solldwns (1) Reputation, Ans. 5. (2) Deception, An action for passing off is based on common law of tort and (3) Damage. is founded on the principle that “no man is entitled to represent ‘These te’ Sleo"@illed Ge "RSS : his as being the goods of another man. The Trade Marks roa wa Act, does not define the term “passing off” however certain Position of Passing Off in India references have been given in the Act in sections 27(2), 134()(c) rrven Warnink Besloten Vennootscap v. J. Ltd, 1979 AC 731 at p. 742 held the following minimum requirements for a successful action in si pective customers of his or ultimate customers of his goods or services supplied by him, (iv) which is calculated to injure the business, or goodwill, of another trade and, i (v) which causes actual damage to the business of the trader. by whom the action is brought or (in a quia timet action) will probably do so. er These five requirements were reduced to three in Reckitt & = | Caleman Profucts Li. v, Borden In, (1990) 1 AUER 873, by Lord | Oliver as: : E “‘dom have two marks the purchase. The eye is detail and that marks are impression or by significant detail ic recollection of the whole”, 6 overruled in M/s. S.M. Ltd,, AIR 2000 SC 2114, In as follows:— essential features in devices and composite ortant than some similarity in the two Court examined the difference in the two “PIKNIK” and “PICNIC”, The Court here looked into the manner in which the two competing words PIKNIK and PICNIC were written. The Court came to the conclusion that the “dissimilarity betweeri the two competing marks “PIKNIK” and “PICNIC” in the manner in which they are written is to be more importance than the phonetic similarity or otherwise ity between them. case of passing off. Court upheld the test laid down by is Court >harmacy v. Satya Deo, AIR 1963 SC 449, follows:— marks are included in the rival trademarks, dissimilarity in essential features in devices and composite marks are more important than some similarity is not proper. The decision of English Courts would be relevant in a country where literacy is high and the marks used are in the language which Intellectual Property Right Linw-l situation between England and India, ‘The Courts in India have to bear in mind the differ situation between England and India. A purchaser) in India cannot be equated with that in England. \guishing characteristics of the plaintiff's go seems to overlook the ground realities in India, ‘ourt held that in an action for passing off on the ba o unregistered trademark for deciding the question of deceptive similarity the following factors to be considered:— )) The nature of the goods in respect of which they as trademarks, : (iv) The similarity in the nature, character and per the goods of the rival traders.32 LLB. Solved Court further held that weightage to be gi aforesaid factors depending upon ts of each case and the same by the Delhi High ed and Ors. v. Neeraj Food common law remedy whereas a statutory remedy. being registered proprietor o to have an exclusive right to use the mark in relation to those goods, The use by the defendant of the trademark of the plaintiff may be prerequisite in the case of an action for infringement while it is not an essential feature of an action for passing o If the essential features of the trademark of the pl: have been adopted by the defendant, the fact that the getup, packing and other writing or marks on the goods or on the packets in which the defendant offers his goods for sale show ifferences or indicate clearly a trade origin different a registered proprietor of the mark, would be the case of infringement of the trademark. ty of the defendant for such infringement may be In the case of passing off, the defendant may escape hhe can show that the added material is sufficient \guish his goods from those of the plaintiff. The distinction between passing off and infringement was examined by Judge Clauson in the case of Listen Ltd. v. Harley (36), wherein he opined that if you are restraining the infringement of a registered mark, you can restrain the man from using the mark; im from selling the articles under the label containing ting his goods from the goods of is quite a different thing. Intellectual Property Right Law-1 398 The Supreme Court in a recent case of S. Syed Mohideen v. i (37), stated that passing off right is a broader f infringement. This is due to the reason that loctrine operates on the general principle that no to represent his or her business as business of other person. The said action in deceit is maintainable for diverse reasons other than that of registered rights which are allocated rights under the Act. Q. 6. remedy than the passin; in piracy provisions in respect of registered designs under wns Act, 2000. Can a defendant in an infringement suit plead that the registration of the design is liable to be cancelled and therefore no action can be taken against him? Comment. 20) Ans. 6. Infringement of a copyright in design is termed as “Piracy of 1 registered design”. The proprietor of the design gets exclusive right to apply the design to the article in a class in which the design is registered. During the existence of copyright over any design, other infringement of registered design is same or es Section 2205 a eae is as “piracy of registered design” following acts amounts in infringement. (i) to publish or to have it article of the class ina to which the design or a fraudulent or obvious imitation thereof has been applied. n thereof to any article covered by the registration for of trade or import of such articles for sale unauthorisedly rights which to be exercised order to prove the piracy of tors should be kept in mind:— re design ora fraudulent or an obvious i hhas been applied by somebody to the article alleged fated one, 'e design or its imitation has been applied without the license or written consent of the registered proprietor, we article to which the design has been applied comes ithin the scope of description of goods covered by the stration, w application of the design has been made for the itpose of sale of the article, and icy by the defendant. Defences in Action for Infringement of a Design action for infringement of a registered design the ing defences can be taken by defendant: Denial of infringement; (ii) Invalidity of registration. The invalidity may be based on the grounds: (i) that the registered design does not satisfy the definition of design mentioned in the Act, (ii) that it is neither new or original, roperty Right Law-I not entitled to sue or he is not the regi (iv) that the application has been filed after the period (ie., acquiescence and laches). | remedies is available and no criminal ren against infringement of copyright in design. available are: damages or compensation, and delivery up of infringing articles. ( Interlocutory Injunction (a) that a prima facie case is present and the balance of venience is in his favour, he has not been monetarily compensated, is absence of substantial ground for attacking the ry of the registration, (d) that defendant has not given any undertaking regarding relief, and. . no delay in seeking relief by the plaintiff in v. Swami & Co., AIR 1939 Bom 103. (ii) Damages or Compens. Under section 22(2) of the Act, the registered p design claim the following reliefs: (a) Recovery of a sum not exceeding Rs. 25,000 ; debt from the person who has pirated the (©) If proprietor chooses to file the suit damages and for injunction, then suct be awarded and restrained by But proviso to section 22(2) says t respect of anyone design should not. eee ARppsrs LLB. Solved Papers—Fourth Semester Proviso further says that suit shall be instituted in only District d High Court. jvery up of Infringing Articles should be granted to the proprietor of a registered design should be in respect of goods for the purpose of sale. ‘Qu and Protection) Act, 1999. Also di of registration of certain geograpl section 9 of the Act. Ans. 7. indications as laid down in 20) Section 8 provides that a geographical indication can be registered in respect of any or all the goods comprised in a prescribed class of goods and in respect of a definite territory of a country or a region or a locality. Section 9 which contains the grounds for prohibition of registration of Geographical Indications actually mentions the essential ingredients required for a Geographical Indication (GI) to be registered. In order to be registrable a Geographical Indication (GI) should not:— i) deceive or cause confusion, be contrary to any law for the time being in force, comprises of contains scandalous or obscene matters, or (iv) comprises of any matter likely to hurt the religious feelings of any class or section of the citizens of India. (¥) be disentitled to protection in Court, or (vi) be generic names or indications of goods and are therefore, not ceased to be protected in the country of origin or which have fallen into disuse in that country, or Intellectual Property Right Law-1 oa falsely represent to the persons that the goods originate another territory, region or locality. Procedure for Registration of Geographical Indication According to section 11 of the Act, (1) any association of persons or producers or any organization ‘or authority established by or under any law for time being in force, (2) representing the interest of the producers of the concerned goods, (3) are desirous of registering a geographical indication in relation to such goods can apply in writing to the Registrar for the registration of Geographical Indication. The application shall be given in writing to the Registrar in such form and in such manner and accompanied by such fees as may be prescribed for the registration of the geographical indication. ‘The application should contain the following —honesty of the concurrent user, existence of actual confusion, degree of likely confusion, and (viii) the impact that registration would have on the public, Ans, 8. (b) Parallel importation refers to the act of purchasing genuine goods sold legally in one country, and exporting the same to another country for re-sale, usually for a price lower than what is prevalent in the importing country. Intellectual Property Right Law-1 od different taxation regime(s), subsidies, market trends, “For easier understanding, a product which may be pricedLLB. Solved Papers—Fourth Semester ‘Thus, the Division Bench held that the Trade Marks Act” embodies the principle of International Exhaustion and the term “market” section 29 and 30 of the Act refers to international market and not the domestic market. The only condition imposed by the Court on parallel import, in relation to trademark, is that the imported goods should state they have been imported and that after sales service and warranty is not provided by the right- exhaustion doctrine followed in the particular country. Ans. 8. (c) ‘Trademark dilution is a trademark law concept giving the owner of a famous or well-known trademark power to forbid others from using the mark in a way that would lessen its ‘uniqueness. To confuse the people, an unauthorized user makes similar marks of the famous trademarks. To stop this, Trademark give power to the owner of a well-known trademark to prevent others from using their mark on the ground that it kills their Inlet Property ight Lt ae uniqueness or lessen their reputation. Practically Speaking, No one bas the right to copy a welbknown trademark or to minuse infringement in the form of dilution will occur only when the person uses the mark which is: 1. Identical or similar to the registered trademark which already has a reputation in India and 2. Use is on different goods or services than those covered action filed by ITC was based on the registration and use of its “W”—Namaste logo. i ‘The Delhi High Court refused temporary injunctionLL.B. Solved Pape The us the reason The Court observed that ITC never used the mark on the cigarettes and that the fai the ITC mark could not be extended to mid to high priced cigarettes; therefore the trademark dilution cause of action cannot survive. Ret are given in sections 91), requisites for registration. from the presence of words... capable of Q1 Subs Ans, 1. INTELLECTUAL PROPERTY RIGHT LAWL 2017 Discuss whether the following trademarks can be stantiate your answer with the help of case law. as (a) Word “Swiss” with the image of snow clad hills for Ice creams. i 3 (©) World '“Garma-Garam” written in artistic manner for Microwaves, 20) es for Registration cae Absolute grounds for refusal of registration (2) and (3) which conversely The first requisite is that it should be a mark within the Trade Marks Act, 1999. [Section 2(1)(m)]._ The next pre-requisite is distinctive character 407applies to marks and indications that are both -distinctive in relation to the goods or Services for which protection is sought. ‘iptive mark tells something about the product or under a mark by describing some characteristic, ingredient, function, feature, purpose, or use of the or service. Tobacco Company v. Registrar of Trdde Marks, AIR the Imperial Tobacco Company filed an application (i) Whether mark “Simla” attained distinctiveness on (i) Whether mark “Simla” is inherently inherently capable of distinguishing? of application. : The decision Bench of Calcutta High CourtIntellectual Property Right Law “9 grammatical significance, but as it would represent itself to the public at large. In this case mark sought to be registered is “Rasoi” for hydrogenated oil. To the general public the word “Rasoi” means cooking and the normal use quality of the goods and is not eligible for registration. o rohibits the registration of the trade marks 3 fesively of marks or indications which havea6 LLB. Solved Papers—Fourth Semester though INTEX is unable to establish before the Registrar that it is a well-known trademark under section 11. 20) is in some way or the other linked to the registered or wn trademark. Under various trademark regimes across the world, deceptive similarity has been recognized as one of the grounds on which a plea of trademark infringement as well as passing off can be made and an injunction order can be decreed by the Courts for the same. Section 2(h) of the Trade Mark Act, 199 define Deceptively Similarity in the following way:-— é “A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to or cause confusion.” The Act does mention that what will be the “Deceptively Similar” but do not lay down any particulars to decide it. Over the years, through case law, the Courts have developed principles and factors to be applied to determine the question of rity between marks. provides that, a trade mark shall not be registered (a) the mark is identical with an earlier trade mark and the goods or services are similar to those of earlier trade mark; (b) the mark is similar to an earlier trade mark and the goods or services are similar to those of earlier trade mark; and (c) in either of the above cases there is likelihood of confusion in the mind of customer, and (d) the confusion includes the likelihood of association with . earlier trade mark. For an objection to arise a number of requirements must be satisfied. Intellectual Property Right Law-1 (i) There must be an earlier trademark ‘This is explained by the Explanation to section in the following words: ” Pe eee An earlier trade mark means: (a) a registered trade mark or convention application referred to in section 154 which has a date of application earlier than that of the trade mark in question taking ‘ account where appropriate, of the priorities claimed in the trademarks; cee a7 ‘Thus it will include an earlier registered mark and a prior pending application. ‘ i) The mark must be identical to the earlier trademark Meaning of “identical mark”? 7 The Act does not define what is an “identical In LT] Difusion SA v. Sadas Vestbaudet SA,a8 LLB. Solved Papers—Fourth Semester (a) Are the marks similar? : The principles regarding the comparison of marks was discussed in the following cases: Pianotist Co.'s Application (1906) 23 RPC 774 In comparing the two words mark, Justice Parker, evolved the following principle: "X guidelines tha be applied in respect of all trademarks: (1) The marks should be compared as a whole. (2) Imperfect recall must be taken into account. (3) The idea of the mark is important. (4) The look and sound of the mark must be considered. (5) The trade channels of the respective goods and /or services must be taken into account. 1, Mark should be compared as a whole The principle was clearly stated in Clarke v. Sharp, (1898) 15 RPC 141 at p. 146.LB, Solved Papers—Fourth Semester Act, 1999 and also the relev: iafor 48 a well-known inder a0) ‘el importation under Trademarks Act, ing the concept of Principle of Exhaustion. (10) ‘nown trademark is a mark, logo or a symbol which with respect to the goods or mark become’ a well-known mark ss et,, are popular brands which ks. Convention for Protection of Industrial 'RIPs Agreement contains any definition of the marks”. under the Indian Trade Marks Act, 1999 the Trade Marks Act, 1999 defines well- the following way: known trademarks” in relation to any goods or , ins a mark which has become so; (i) to the substantial segment of the public which uses such goods or receives such services; (ii) that the use of such mark in relation to other goods or services; . ” = (iii) would be Ukely to be taken al indlcating 'a\connection the course of trade or rendering of services; as (iv) between those goods or services and a person using rari in rela 6 Ec eiaere ester initions of well-known trademark stated above is to be reed with te prorat Beet sete TIO EE) (11) of the Act. servi Intellectual Property Right Law-1 a or is a well-known trademark. \us, a well-known trademark under section 9 of the Trade 1999, can seck registration as a matter of right.LLB. Solved Papers—Fourth nest Intellectual Property Right Law-1 (ii) The duration, extent and geographical area of any use of the trademark. Gv) The duration, extent and geogr Promotion of the trademark, ¥) Advertising or publicity and presei (vi) Exhibition of the goods or servi ( Duration and geographical area of any registration, Record of successful ‘ent of the rights in the trademark. Recognition of the trademark as a well-known trademark Registrar. ‘Ourt observed: that ‘insofar as the definition of the term “ well-known trade mark” under section 2(1)(zg) is concerned, it is seen that the concept incorporated in the new only a mark which hag substantial segment of the public which uses the first mentioned goods or services is likely to be mislead to believe that there is a connection in the course of trade between the second mentioned goods and the proprietor of the trade mark in relation to the first mentioned goods or services.LLB, Solved Papers—Fourth Semester the goods after first sale. types of exhaustion printiples are followed by tional and (2) International. In’ case of national ‘try of first sale and further re-distribution by imports of ‘oods from other countries is illegal. In case of International tion Principle (followed in India), after the first sale, the der exhausts all the rights over that unit of product ly and such product can be legally imported/ ed further anywhere in the world. legislations provides for parallel imports diBeren oA * For the purpose of this question we will examine the Provisions of the Trade Marks Act, 1999. — Intellectual Property Right Lawl 29 a ‘© the registered trademark having been assigned by the registered proprietor to some other person, after the acquisition of those ‘goods; or «+ the goods having been put on the market under the registered trademark by the proprietor or with his consent. ‘Thus, section 30(3) of the Trade Marks Act, 1999 provides that the right of intellectual property owner become exhausted ‘once his goods have been put on the market anywhere in the world with his consent. f (4) Sub-section (3) shall not apply where the three exists legitimatesad LLB, Soloed Papere—Fourth Semesto T eaectual Property Right Lew! or apply and if it refers to the international or global market, then sale and purchase of goods. It is to control the use of registered —— the doctrine of international exhaustion would apply. trademarks. The term “market” used in this section was interpreted by a ‘Thus, the Division Bench held that the Trade Marks Act Division Bench of the Delhi High Court to mean “global market”, ‘embodies the principle of International Exhaustion and the term in the case of Kapil Wadhwa v. Samsung Electronics Ltd., 194 (2012) “market” section 29 and 30 of the Act refers to international ie market and not the domestic market. The only condition imposed, In this case, the main issue was whether the Indian Trade by the Court on parallel import, in relation to trademark, Marks Act, 1999, embodies the International Exhaustion Principl the imported goods should state they have been imported and or National Exhaustion Principle when the Registered Proprietor that after sales service and warranty is not provided by the right- of Trade Mark places the goods in the market under Registered holder but rather by the importer. ’ _ Heart as ‘Thus, it can be said that parallel importation has both legal A Division Bench of the Delhi High Court, in this case, re- and economic ramifications. Economically, it promotes the considered the question of whether the Trade Marks Act, 1999 availability of trademarked goods at different prices, which embodies the International Exhaustion Principle or the National prevents the establishment of a trade monopoly i. it prevent Exhaustion Principle when the registered proprietor of a Trad. ademark owners from exercising their exclusive right to divide. Mark places the goods in the market under the registered markets and thus, actually promote free trade, subject to jemark. The Court held that the earlier finding ~ that there was ‘exhaustion doctrine followed in the particular country. legi intent to put barriers on importation — was premature id went on to interpret section 30(3) as follow: Q4. “(1) Where goods bearing a registered trademark are lawfull (a) Write a note on exception to infringement with special (1) Where goods bearing a registered trademark are lawfully aa ntieta =LLB. Solved Papers—Fourth Semester | Intellectual Property Right Law-1 3 trademarks of relatable goods, such reference would {ira of Pressure cooker. Court observe that all pressure cookers infringemen f a particular Slimension have standard lids; the only variation i saan it of the trademarks under which eae different cookers bag anhof a reputed tra distinctive character. So, this section postulates that, a registered trademark is infringed by mark which:— a identical or similar to the registered trademark, and used in relation to goods or services which are not similar to those for which the trademark is registered, and (©) the registered trademark has a reputation in India, and the use of the mark without due cause, takes unfair advantage or is detrimental to, the distinctive character or repute of the registered trademark. Section 29(5) of the Trademarks Act, 1999, explicitly prohibits the adoption of a registered trademark by another person as trade the name of an enterprise. So, the following things must rder to bring into action this section:— jaintiff’s mark is’a registered mark, defendant is using the plaintiff's registered trademark as his trade name or part of his trade name or name of his business establishment or part of such name, (©) the defendant's business is in respect of goods or services in respect of which the trademark is registered. Section 29(6) of the Trademarks Act, 1999 lays down the circumstances when a person is considered to be using a registered trademark, if in particular, he:-— (a) affixes the registered trademark to goods or packaging thereof; (b) offers or exposes goods for sale, puts them on the market, or stocks them for the purposes under the registered trademark, or offers or supplies services under the registered trademark; tual Property Right Law-I es (©) imports or exports goods under the mark; or (d) uses the registered trademark on business papers or in advertising. Section 29(7) of the Trademarks Act, 1999, provides that a registered trademark is also considered to be infringed where a person applies a registered trademark to a material to be used for labeling or packing goods, as a business paper or for advertising goods or services knowing that the application of the mark was not duly — authorized by the proprietor or a licensee. Section 29(8) of Trademarks Act, 1999, provides that a registered trademark is infringed by any advertising of that trademark if such advertising:-— oa (@) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or (b) is detrimental to its distinctive character; or (©) is against the reputation of the trademark. : Section 29(9) of the Trademarks Act, 1999, further provides that where the distinctive elements of a registered trademark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly. PTC 295 (Bom), the plaintiff's trademark consisted of The mark Nandus was registered in respect of processed and — frozen meat products. The defendant applied for registration of the “service mark” “Nandos”. A suit was filed by plaintiff for _grant of permanent injunction for restraining the defendants from using the trademark “Nandos” or any other deceptively similar trademark in relation to any eatable goods or restaurant or (i) Section 29(2) of the 1999 Act read as follows, “ trademark” is infringed by a personrefused temporary injunction against ip Morris in relation to its Marlboro brand 1. The impugned mark is identical or similar to the well- known mark, 2. The well-known or the injured mark has a reputation in India, 3, The use of the impugned mark is without due cause, 4, The use of the impugned mark amounts to taking unfair advantage of or is detrimental to the distinctive character or reputation of the registered trademark. Q6. P Explain the meaning of ‘design’. Discuss the designs which are not registrable under the Designs Act. Also explain ay provisions in respect of registered designs. Ans. 6. eles a a Section 2(d) of the Designs Act, 2000 defines ‘design’ in the following way:— lege. * only the features of shape, configuration, pattern, ornament ‘or composition of lines or colours applied to any article; * whether in two-dimensional form or three dimensional or in both forms; * by any industrial process or means, whether manual,ULB. Solved Papers—Fourth Semester ( Must be new and original; (i) ome not be previously published in India or anywhere in the wor (il) Must be significantly distinguishable from known designs of known design in scandalous or obscene matter, Pattern, shape, configuration article. ign in India, the law makes it either of the criteria of novelty to be applied in an To be registered as a des mandatory to’ possess both or and origina Piracy of Registered Design Infringement of a copyright in design is termed as “Piracy of a irBistered design”. The proprietor of the design gets exclusive right to apply the design to the article in a class in which ihe design is registered. During the existence of copyright over any design, other Persons are prohibited from usi i the permission of the proprietor, ‘his licensee or assignee. If any person uses the registered design without the permission ee Intellectual Property Right Law-t of the proprietor, his licensee or assignee, then he infringes the copyright in design. The expression piracy of registered design op infringement of registered design is same or synonymous, m 22 of the Act deals with the piracy provision. Section as “piracy of registered design” provides that the acts amounts in infringement to a design: (i to publish or to have it published or expose for sale any article of the class in question on which either the design or any fraudulent or obvious imitation has been applied, _ (ii) that is registered to apply the design for any class of, covered by the registration, or any imitation thereof and, (ii) to import for the purpose of sale any article belonging to the class in which the design has been registered, and to which the design or a fraudulent or obvious imitation thereof has been applied. ‘ 1. Petson applies registered design or a fraudulent or obvious | imitation thereof to any article covered by the registration for _ purpose of trade or import of such articles for sale unauthorisedly then he commits piracy or infringement in the design. Further, Facts Necessary to Prove Piracy of Registered Design In Calico Printers Association Ltd. v. DN. Mukherjee, 1936 Cal 493, it was held that, in order to prove the tered design following factors should be kept in (® that the copyright in the design exists, (ii) that the design or a fraudulent or an obvious tic has been applied by somebody to the article alleged pirated one, sine * lil) that the design or its imitation has been app the license or written consent of the regi (iv) that the article to which the design has been | | within the scope of description of .goods Place in such territory, region or locality, as the case may be. Who can obtain Registration of a Geographical Indication According to section 11 of the Act, (2) any association of persons or or authority established being in force, Producers or any organization by or under any law for time (2) representing the interest of the producers of the coricemned goods, () are desirous of registering a geographical indication in relation to such goods can apply in writing to the Registrar for the registration of Geographical Indication. Registration of Geographical Indication Section 8 provides that a geographical indication can be registered in respect of any or all the goods comprised in a Prescribed class of goods and in respect of a definite territory of or a region or a locality. ) be contrary to any law for the time being in force, (il) comprises of contains scandalous or obscene matters, or iny matter likely to hurt the religious feg i section of the citizens of India, to protection in Court, or (vi) be generic names or indications of goods and are not ceased to be protected in the country of which have fallen into disuse in that country, or represent to the persons that the goods in another territory, region or locality. Registration of Geographical Indication ‘The application for registration of a geographical shall be given in writing to the Registrar in such form and in manner and accompanied by such fees as may be prescribed the registration of the geographical indication. ‘The application should contain the ‘or locality, > (b) The class of goods to which the geographical indication | shall apply, (©) The geographical map of the territory of the cqunt region or locality in which the goods originate or bei manufactured, forLLB. Solved Papers—Fourth Semester will reduce paper work and expedite processi jit yf payable therefor shall be in ape Ofech is refused or accepted with conditions, 1rd in writing the reasons thereof and the Opposition to Registration [Section 14] irding to section 14 of the Act, any person may, within 3 months from the date of advertisement or re-advertisement of an application for registration give notice in writing in prescribed manner to the Registrar, of opposition to the registration. After sending the copies of the notice of opposition and counter statement to the parties and after hearing the parties, Intellectual Property Right Law-T “eo the Registrar may decide as to the extent to which registration can be permitted. registration. The Registrar shall issue to each of the applicants and the authorized user a certificate with the seal of the Geographical Indications Registry. Section 18 provides that the registration of a geographical indication shall be for a period of 10 years. Q8. to Sa Write short notes on any two of the following: * (a) Conflict of geographical indications with trademarks. — (b) Protection of domain names. : {c) Cancellation of designs.is location for . In conte trademark is a sign which distinguishes the products of ide from those of its competitors. Thus it is not likely to be descriptive and it cannot be gene ‘The right to protect a geographical indication from wrongful appropriation Unlike Trademark, Geographical Indication Mark is also permanent and will not fade away as time goes by. It will not become invalid even if some manufactures stop using it, so it has lasting value. Section 26 provides that the Geographical Indications Act protects a trade mark which contains or consists of a geographical indication which has been applied for or registered in God faith under the trademarks law or where such trademarks have been used in good faith before the commencement of the Act or before the date of filing of an application for registration of a geographical indication. This Act shall not apply to geographical indication with respect to goods or class or classes of goods which have become the common name of such goods in India on or before Ist January, 1995. This Act protects the right of any, person to use his name or the name of his predecessor in business exceptProperty Right Law-1 487 designate the kind, quality, quantity, intended purpose, geographical origin or the time of production of the goods lering of the service or other characteristics of the goods services. Section 9(1)(b) applies to marks and indications that are both descriptive and non-distinctive in relation to the goods or services for which protection is sought. A descriptive mark tells something about the product or service offered under a mark by describing some characteristic, quality, ingredient, function, feature, purpose, or use of the nc racter or quality of the goods, rshel observed: as follows: invented word is allowed to be registered as a Trade ark, not as a reward of merit, but because its registration no member of the community of the right ‘ “which ohibits registration of trademarks “whic! Pe marks of indications which may serve ini co 458 LLB. Solved Papers—Fourth Semeste | jelectual Property Right Law-1 oi a4 distinctiveness is claimed for the word ‘Simla’. Further, affidavits filed by the consumer, dealers and shopkeepers said that the Simla label bears the inscription of being the product of the appellant whose products are of goods standard. Accordingly it could not be said that the ‘Simla’ by so marked as distinct from those’ of other producers ae as claimed must be the trademark on its own without any — geographical. A geographical name not used in geographical of the appellant. So it is not possible to say that by reason sensi jote place of origin, but used in an arbitrary or of the use, ‘Simla’ is adapted to distinguish or capable of y to indicate origin or ownership regardless of i ties for growing tobacco and y for manufacturing tobacco is not conclusive, ry have a factory in the future. The appellant's goods did not meant from Simla but an ordinary smoker without special knowledge may associate the place with the ood and can be deceived. A secondary ining for a: geographical name in its ordinary signification can only come in on the ground of distinctiveness and it cannot be claimed in the present case, that the word Simla has acquired a secondary meaning and that in the course of only 3 years, so as to mean by association to be'always the tobacco of the appellant without reference to the geographical place Simla. (iii) Further, ‘Simla’ is not an invented word; and though it has no reference to the character or place of origin of the goods sought to be registered, it is not inherently distinctive or adapted to distinguish “as there is no sufficient distinguishing characteristic in the mark itself so that distinctiveness might be expected to result whatever the type and scale of the user and thus secure an estimation of the positive quality in the mark, (iv) Finally Court held that though the mark is composite, the word Simla is the prominent feature of the mark andFingerlickin’ written in an artistic manner with autiful girl putting her index finger in mouth can Comment with the help of case law. Ans. 2. In simple words, deceptive similarly can be defined as similarity between the trademarks which can likely deceive the general public of average intellect to believe that the mark in question is in some way or the other linked to the registered or a well-known trademark. Under various trademark regimes across the world, deceptive similarity has been recognized as one of the grounds on which a plea of trademark infringement as well as passing off can be « an injunction order can be decreed by the Courts for 2h) of he ‘Trade Mark Act, 1999 define Deceptively ing way:— be deemed to be deceptively similar to another mark joes mention that what will be the “Deceptively wut do not lay down any particulars to decide it. : , through case law, the Courts have developed tors to be applied to determine the question of Section 11(1) provides that, a trade mark shall not be registered if (a) the mark is identical with an earlier trade mark and the goods or services are similar to those of earlier trade mark; (©) the mark is similar to an earlier trade mark and the goods or services are similar to those of earlier trade mark; and (©) in either of the above cases there is likelihood of confusion in the mind of customer, and (@) the confusion includes the likelihood of association with earlier trade mark. For an objection to arise a number of requirements must be satisfied. (@ There must be an earlier trademark resembles that other mark as to be likely to or cause —ULB. Solved Papers—Fourth Semester Which includes the likelihood of association, with the earlier trade mark, Further under section 11(2) of the (Indian) Trade Marks Act, 999, “mark shall not be registered if the ear! acter OF repute of the earlier well-known trademark, Factors for determining well-known trademarks [Section 11(6) to section 11(9)] a trademark is a well- Cf te Tene ae et fas Been provided inder seco ely of the Trade Marks Act, 1999 as under @ Knowledge or ition of the trademark in the relevant section of the public. w Br eeaette Sbsined by the public asa result of promotion of trademark. (ai The duration, extent and geographical area of any use of the trademark. @w) The “duration, extent and geographical area of any Promotion of the trademark, () Advertising or publicit ‘ity and presentation at fairs, wi) Exhibition of the goods or services, (vii) Duration and geographical area of any registration. (Cit) Record of successful enforcement of the rights in the trademark. (x) pecosnition of the trademark as a well-known trademark by any Court or Registrar. Tis comblned eifect of section 11(6) and section 1869) shams that no single factor can be laid down a Crisis for determining the status of wellknown markt Inte the ther, under section 11(10) of the (Indian) Trade Marks Act, 1995 a duty ha ben cated pe ga Tne Mar A known trademark against the identical or similar kedceenin a