IP LAWS FOR DJS:

 Copyright - the book text

 Patent - the special machine design that prints the book
 Trademark - the publisher name and logo
 So these are intangible property meaning you can’t touch them.
Tangible property is movable and immovable.
 Universal Declaration of Human Rights Article 27 - Everyone has
the right to the protection of the moral and material interests resulting
from any scientific, literary or artistic production of which he is the
author.

Convention Establishing the World Intellectual Property Organization

(as amended on September 28, 1979 and signed at Stockholm on July
14, 1967)
Article 2: Definitions
(viii) “intellectual property” shall include the rights relating to:

1. literary, artistic and scientific works,

2. performances of performing artists, phonograms, and broadcasts,

3. inventions in all fields of human endeavor,

4. scientific discoveries,

5. industrial designs,

6. trademarks, service marks, and commercial names and designations,

7. protection against unfair competition,

and all other rights resulting from intellectual activity in the industrial,
scientific, literary or artistic fields.

 Last clause makes it a wide definition

 Phonograms - words used to represent a sound for example
“aahhh” for the sound.

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Need for IPR:

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COPYRIGHT

What is Copyright?
 Copyright is a form of intellectual property protection granted
under Indian law to the creators of original works of authorship such
as literary works (including computer programs, tables and
compilations including computer databases which may be
expressed in words, codes, schemes or in any other form,
including a machine readable medium), dramatic, musical and
artistic works, cinematographic films and sound recordings.

 Copyright law protects expressions of ideas rather than the ideas

themselves. Under section 13 of the Copyright Act 1957, copyright
protection is conferred on literary works, dramatic works, musical
works, artistic works, cinematograph films and sound recording.
For example, books, computer programs are protected under the
Act as literary works.

 Copyright refers to a bundle of exclusive rights vested in the

owner of copyright by virtue of Section 14 of the Act. These rights
can be exercised only by the owner of copyright or by any other person
who is duly licensed in this regard by the owner of copyright. These
rights include the right of adaptation, right of reproduction, right
of publication, right to make translations, communication to
public etc.

 Copyright protection is conferred on all Original literary, artistic,

musical or dramatic, cinematograph and sound recording works.
Original means, that the work has not been copied from any other
source. Copyright protection commences the moment a work is
created, and its registration is optional. However it is always
advisable to obtain a registration for a better protection.
Copyright registration does not confer any rights and is merely a
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 prima facie proof of an entry in respect of the work in the Copyright
Register maintained by the Registrar of Copyrights.

 As per Section 17 of the Act, the author or creator of the work is

the first owner of copyright. An exception to this rule is that, the
employer becomes the owner of copyright in circumstances where the
employee creates a work in the course of and scope of employment.

Important sections:

 Section 51. When copyright infringed.

Copyright in a work shall be deemed to be infringed--
(a) when any person, without a licence granted by the owner of
the copyright or the Registrar of Copyrights under this Act or in
contravention of the conditions of a licence so granted or of any
condition imposed by a competent authority under this Act--
(i) does anything, the exclusive right to do which is by this Act
conferred upon the owner of the copyright, or
1[(ii) permits for profit any place to be used for the
communication of the work to the public where such communication
constitutes an infringement of the copyright in the work, unless he was
not aware and had no reasonable ground for believing that such
communication to the public would be an infringement of copyright; or]
(b) when any person--
(i) makes for sale or hire, or sells or lets for hire, or by way of trade
displays or offers for sale or hire, or
(ii) distributes either for the purpose of trade or to such an extent
as to affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports 2*** into India, any infringing copies of the work:
3[Provided that nothing in sub-clause (iv) shall apply to the import of
one copy of any work for the private and domestic use of the importer.]
Explanation.-- For the purposes of this section, the reproduction of a
literary, dramatic, musical or artistic work in the form of a
cinematograph film shall be deemed to be an "infringing copy".

 Section 52 of the Copyright Act, 1957 - Section 52 of the Copyright

Act, 1957, has provisions regarding exceptions to copyright
infringement and limited usage of the already copyrighted work of an
individual without prior permission. The entire Section has provisions
on what constitutes fair use and fair dealings under the Copyright Act.
Certain exceptions to infringement have been stipulated by the
Copyright Act. The object of these exceptions is to enable the
reproduction of the work for certain public purposes, and for

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 encouragement of private study, research and promotion of
education.

The Copyright Act, 1957 provides copyright protection in India. It

confers copyright protection in the following two forms:

Economic rights of the author, and Moral Rights of the author.

(A) Economic Rights:

The copyright subsists in original literary, dramatic, musical and artistic

works; cinematographs films and sound recordings. The authors of
copyright in the aforesaid works enjoy economic rights u/s 14 of the
Act.

(B) Moral Rights - Moral rights are a distinct set of rights that are associated
with copyright and intellectual property law, primarily in civil law jurisdictions.
Unlike economic rights, which focus on the financial interests of creators,
moral rights are concerned with protecting the non-economic interests
and personal reputation of creators. These rights are deeply rooted in
the idea that creators should be recognized and respected for their
creative contributions, beyond the monetary value of their works.

Section 57 of the Act defines the two basic 'moral rights of an author. These
are:

 Right of paternity - The right of paternity refers to a right of an author

to claim authorship of work and a right to prevent all others from
claiming authorship of his work.
 Right of integrity - Right of integrity empowers the author to prevent
distortion, mutilation or other alterations of his work, or any other action
in relation to said work, which would be prejudicial to his honour or
reputation.

CASES:

1. Ownership of copyright:

The ownership in copyright may vest in different persons under

different circumstances.

Eastern Book company v Navin J.Desai (2001 DHC)

 The question involved was whether there is any copyright in the

reporting of the judgment of a court. The Delhi High court observed:
It is not denied that under section 2(k) of the Copyright Act, a work
which is made or published under the direction or control of any
Court, tribunal or other judicial authority in India is a Government
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 work. Under section 52(q), the reproduction or publication of any
judgment or order of a court, tribunal or other judicial authority
shall not constitute infringement of copyright of the government
in these works. It is thus clear that it is open to everybody to reproduce
and publish the government work including the judgment/ order of a
court.
 However, in case, a person by extensive reading, careful study and
comparison and with the exercise of taste and judgment has made
certain comments about judgment or has written a commentary
thereon, may be such a comment and commentary is entitled to
protection under the Copyright Act.

Godrej Soaps (P) Ltd v Dora Cosmetics Co (2001) DLT

 Delhi High Court held that where the carton was designed for
valuable consideration by a person in the course of his
employment for and on behalf of the plaintiff and the defendant had
led no evidence in his favour, the plaintiff is the assignee and the
legal owner of copyright in the carton including the logo.

2. Infringement of copyright:

Prakashak Puneet Prashant Prakashan v/s District Judge Bulandshahr

U P (2000, High Court of Judicature at Allahabad)

 Allahabad High Court held that if the petitioner publishes a book by

adding any word before or after the book 'Bal Bharati, he infringes the
copyright of the respondent.

DB Modak vs. Eastern Book Company (2004 SC)

 The SC said that the headnotes or the footnotes edited in the
judgments are a part of the creative mind, whereas the copied
judgment will not be authenticated for as under Copyright
protection. It should be more than a mere copy of the original work
and shall contain the author’s independent work.

Yash Raj Films Pvt. Ltd. V. Sri Sai Ganesh Production & Ors 2019 by
the High Court at New Delhi

 The plaintiff owned the copyright for the film “Band Baja Barat,”
released in 2010. The defendant produced a film titled
“JABARDAST” in 2011 without the plaintiff’s authorization. The
plaintiff alleged that “JABARDAST” was a copy of their film “Band
Baja Barat,” constituting copyright infringement under Section 14(d)(i)

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 of the Copyright Act, 1957. Consequently, the plaintiff filed a lawsuit
seeking an injunction to prevent the release of “JABARDAST.”
 High Court ruled in favor of the plaintiff, Yash Raj Films Pvt. Ltd.,
stating that a comparison between the two films revealed
substantial similarities in their core elements. As a result,
“JABARDAST” was considered a copy of “Band Baja Barat.” In
this case, the court granted an injunction, restraining the defendant
from releasing “JABARDAST.”

3. MORAL RIGHTS:

Smt Mannu Bhandari v. Kala Vikas Pictures Ltd. (1987 Delhi)

 In this case, the plaintiff, a Hindu writer, had assigned the rights
to her novel “Aap ka Bunty” to the defendants for the production
of a movie. The defendants subsequently created a film titled
“Samay ki Dhara” based on the novel. The plaintiff argued that
the movie and the novel had differing storylines, which negatively
affected her reputation as an author. Consequently, she filed a
lawsuit seeking a permanent injunction.
 The court ruled that even though the plaintiff had transferred all
her rights to the defendant, she still retained moral rights over the
work. These moral rights are applicable not only to literary works
but also to films and documentaries. The court recognized that
some modifications may be necessary when adapting a novel into a
movie but emphasized that these changes should not harm the
author’s reputation. Regarding the contractual terms between the
parties, the court stipulated that such agreements should not
contravene Section 57 of the Copyright Act, 1957. Ultimately, the
defendants agreed to remove the plaintiff’s name and the novel’s
title from the film, and the plaintiff relinquished any rights over
the movie.
Amarnath Sehgal v. Union of India (2005) DLT

 In this case, the petitioner had been commissioned by the Ministry

of Works, Housing, and Supplies to create a mural for India’s
inaugural convention center, Vigyan Bhavan. This mural garnered
international acclaim and drew visitors from around the world.
However, when Vigyan Bhavan underwent renovations, the mural
had to be removed. The petitioner, upon learning of this, sought
damages from the government, alleging that the mural’s damage
was a result of the government’s negligence. The lawsuit was filed
under Section 57 of the Copyright Act, 1957.
 The government contended that the petitioner had no grounds to
claim damages, as the copyright and economic rights had been
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 transferred to them, including the right to destroy the work.
However, the court ruled that despite the transfer of copyrights, the
petitioner retained special rights to seek damages. The court
emphasized the importance of safeguarding artistic expression,
even when the artist no longer held economic rights. It affirmed
that only the petitioner had the right to recreate the work and
therefore deserved compensation for the damage to their
reputation, honor, and emotional well-being caused by the
government’s actions.

TRADEMARK:
 Trade Marks Act, 1999
 Visual representation
 Attached to goods
 Purpose is to indicate their brand
 Examples - Nike, apple, Jordan

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Trademark Infringement And Their Defenses In India

Section 29 of the Indian Trade Marks Act, 1999, talks about various
aspect of infringement of registered trademarks.

As per Section 29(1), "a registered trademark 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 is identical with, or deceptively
similar to, the trademark in relation to the goods or services in respect of
which the trademark is registered and in such manner as to render the use
of the mark likely to be taken as being used as a trademark".
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Sub-sections of the Section 29 of the Indian Trade Marks Act, 1999,
describes that in course of the use of the trademark it is said to be infringing
the right of the other company due to use of similar or identical trademark
using for marketing of similar kinds of goods and services or use of identical
or deceptively similar trademark for any kind of goods and services.

Section 29(9) of the Indian Trade Marks Act, 1999, states that the
infringement can also be done by the spoken use of those words as
well as by their visual representation.

Grounds Of Infringement:
According to Section 29 of the Trade Marks Act, 1999, the followings are the
grounds to trademark infringement in India:
1. If the unregistered mark is identical to a mark registered for similar
goods and services.
2. The similarity of an unregistered mark with the infringed mark is likely
to create confusion in the minds of consumers.
3. The unregistered mark is similar to a registered trademark having a
reputation in the market.
4. The registered trademark is used on labelling or packaging without
authorization.
5. The registered trademark is used in advertising, taking unfair
advantage detrimental or against the reputation of trademark.

Defences Against Trademark Infringement:

1. Fair Use - In order to claim this defense, the accused infringer need to
show that he got the consent of the authorized owner or either proves
that he acted without intending to defraud or mislead the
consumers of the goods.
2. Prior use - Prior user of the trademark has more rights than the
subsequent user even if the subsequent user has registered the
trademark. It can be taken up as a defence by the defendant when
he is using the mark for a longer period of time than the registered
user and has established reputation in his business.
3. Non-use of the trademark by the Registered Proprietor - In this
situation, the burden is on the defendant to prove that the Registered
Proprietor is not using the trademark for a long time. Further, he needs
to show that he has a legitimate interest in using that trademark which
the owner of the trademark is not using.
4. Delay and Acquiescence - In situations when there has been a delay
in bringing action of the infringement by the plaintiff, it is stated that the
plaintiff's right have been waived off as the trademark owner and
implicitly or explicitly permitted use of its trademark by the subsequent
user.

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Difference between Infringement and Passing off
 Infringement is a statutory remedy provided under section 28(1)
of The Trademark Act, 1999 for which registration of a trademark is
a pre-requisite, while Passing off is a common law remedy and in
Passing Off claims, registration of a trademark is not required.
 Under infringement, plaintiff is only required to show deceptive
similarity, as there is presumption of confusion. In passing off, apart
from proving deceptive similarity the Plaintiff is also required to
prove confusion in public and likelihood of injury to the plaintiff’s
goodwill.
 The fundamental principle behind the tort of passing off is that "A
man is not to sell his goods under the pretense that they are the
goods of another man" (Perry v Truefitt (1842)).

In the case of Cadbury India Limited and Ors. V. Neeraj Food

Products, the High Court of Delhi explained the difference between passing
off action and an action for trade mark infringement as under: (2007) DLT

 An action for trade mark infringement is a statutory remedy and on

the other hand, an action for passing off is a common law remedy.
 The use of the trade mark of the plaintiff, by the defendant, is also
a prerequisite in the case of an action for infringement while it is not
a necessity of an action for passing off.
 In an action for infringement of the plaintiff's trade mark, it is immaterial
that the outfit, outer covering and other written marks on the goods
originate from a different source than that of a registered proprietor's
trade mark. The liability of the defendant in such a case may be
absolute. However, in case of passing off of trade mark, the
defendant may escape liability if he can show that the material
added by him is sufficient to distinguish his goods from that of
the plaintiff's goods.
 In an action for infringement, the Plaintiff on account of it being a
registered trade mark in dispute claims to have an exclusive right to
use the mark concerning those goods. However, a passing off by a
person of his goods as those of another, in essence, is an action of
deceit.

In a recent case of S. Syed Mohideen vs P. Sulochana Bai, 2015 SC, the

Apex Court of the country stated that passing off right is a wider remedy
than that of infringement. This is because the passing off doctrine
operates on the general principle that no person is entitled to represent
his or her business as the business of another person. The said action
of deceit is maintainable for diverse reasons other than that of registered
rights which are allocated rights under the Act.

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S. No. Infringement Passing off
1. Type of The statutory remedy under Common-Law remedy
remedy Section 29(1) of the Trade
mark Act, 1999
2. Registration It is a pre-requisite It is not required
3. Proof Plaintiff is only required to Apart from proving
show deceptive similarity, as deceptive similarity, the
there is a presumption of Plaintiff is also required
confusion to prove confusion in
public and the
likelihood of injury to
the plaintiff's goodwill
4. Jurisdiction The registered proprietor or Section 20 of the Civil
registered user of the trade Procedure Code, 1908
mark can institute the suit would apply
where they actually and
voluntarily resides or carries
his business or personally
work for gain

Legal remedies – Infringement and Passing off of trademark

 If the trademark is registered, section 28(1) of The Trademark Act,
1999 provides a right to get relief against the infringement of trademark
in accordance with the provision of the Act.
 Passing off is not specifically mentioned in the act. An
infringement proceeding cannot be initiated against unregistered
trademark but Section 27(2) says that a passing off proceeding
can take place for an unauthorized use of an unregistered
trademark.

Remedy for infringement and passing off of Trademark

1. Civil remedies
2. Criminal remedies

Civil Remedies

 Suit for infringement/Passing off under section 134:- Suit for

Infringement/Passing off arising out of the use by the defendant of
any trademark which is identical with or deceptively similar to the
plaintiff’s trademark, whether registered or unregistered shall be
instituted in District Court having jurisdiction to try the suit.
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  Relief under Section 135

135. Relief in suits for infringement or for passing off

(1) The relief which a court may grant in any suit for infringement or for
passing off referred to in section 134 includes injunction (subject to such
terms, if any, as the court thinks fit) and at the option of the plaintiff, either
damages or an account of profits, together with or without any order
for the delivery-up of the infringement labels and marks for destruction
or erasure.

(2) The order of injunction under sub-section (1) may include an ex parte
injunction or any interlocutory order for any of the following matters,
namely:-

(a) for discovery of documents;

(b) preserving of infringing goods, documents or other evidence

which are related to the subject-matter of the suit;

(c) restraining the defendant from disposing of or dealing with his

assets in a manner which may adversely affect plaintiff's ability to recover
damages, costs or other pecuniary remedies which may be finally awarded
to the plaintiff.

(3) Notwithstanding anything contained in sub-section (1), the court

shall not grant relief by way of damages (other than nominal damages)
or on account of profits in any case-

(a) where in a suit for infringement of a trade mark, the infringement

complained of is in relation to a certification trade mark or collective mark; or

(b) where in a suit for infringement the defendant satisfies the

court-

(i) that at the time he commenced to use the trade mark

complained of in the suit, he was unaware and had no reasonable
ground for believing that the trade mark of the plaintiff was on the
register or that the plaintiff was a registered user using by way of permitted
use; and

(ii) that when he became aware of the existence and nature of

the plaintiff's right in the trade mark, he forthwith ceased to use the trade
mark in relation to goods or services in respect of which it was registered; or

(c) where in a suit for passing off, the defendant satisfies the court-

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 (i) that at the time he commenced to use the trade mark
complained of in the suit he was unaware and had no reasonable
ground for believing that the trade mark of the plaintiff was in use; and

(ii) that when he became aware of the existence and nature of

the plaintiff's trade mark he forthwith ceased to use the trade mark
complained of.

Procedure under civil law

 In the case of infringement, a suit can be filed under section 134 of

Trade Mark Act, 1999 in district court. Jurisdiction for the same will
be, where the head office of plaintiff is situated or where the cause
of action has arisen. Section 20 of CPC does not apply for the
purpose of suit under 134 of Trademark Act,1999.
 If the court thinks fit it can allow any of the following order:
o An injunction restraining further use of the infringing mark
under Order XXXIX Rules 1 & 2 of CPC ie. temporary
injunction or under Section 36-42 of specific relief act i.e.
permanent injunction
o Damages or an account of profits.
o An order for delivery-up of infringing labels and marks for
destruction or erasure.
 This remedies can be taken in case of infringement as well as in the
case of passing off of trademark.

Criminal remedies

 Any person who uses a particular trademark without permission of

the proprietor and makes that trademark deceptively similar shall
be deemed to falsify a trade mark under section 102 of Trade
Mark Act, 1999. Penalty for the same is given under Section 103
of the same act.
 Penalty under Section 103:- Any person falsifies any trademark or
falsely applies to goods or services any trade mark shall be
punishable with imprisonment for a term which shall not be less
than 6 months but which may extend to 3 years and with fine
which shall not be less than Rs50,000 but which may extend to
Rs2,00,000.
 According to section 104 if any person who helped the accused
by selling, providing or hiring services of the such good,
possessing such goods for sale or any other possible way will be
punished with imprisonment for a term which shall not be less than
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 6 months but which may extend to 6 years and with fine which shall
not be less than Rs 50,000 but which may extend to Rs 2,00,000.

102. Falsifying and falsely applying trade marks.—

(1) A person shall be deemed to falsify a trade mark who, either,—
(a) without the assent of the proprietor of the trade mark makes that trade
mark or a deceptively similar mark; or
(b) falsifies any genuine trade mark, whether by alteration, addition,
effacement or otherwise.
(2) A person shall be deemed to falsely apply to goods or services a trade
mark who, without the assent of the proprietor of the trade mark,—
(a) applies such trade mark or a deceptively similar mark to goods or
services or any package containing goods;
(b) uses any package bearing a mark which is identical with or deceptively
similar to the trade mark of such proprietor, for the purpose of packing, filling
or wrapping therein any goods other than the genuine goods of the proprietor
of the trade mark.
(3) Any trade mark falsified as mentioned in sub-section (1) or falsely applied
as mentioned in sub-section (2), is in this Act referred to as a false trade
mark.
(4) In any prosecution for falsifying a trade mark or falsely applying a trade
mark to goods or services, the burden of proving the assent of the proprietor
shall lie on the accused.

103. Penalty for applying false trade marks, trade descriptions, etc.—
Any person who—
(a) falsifies any trade mark; or
(b) falsely applies to goods or services any trade mark; or
(c) makes, disposes of, or has in his possession, any die, block, machine,
plate or other instrument for the purpose of falsifying or of being used for
falsifying, a trade mark; or
(d) applies any false trade description to goods or services; or
(e) applies to any goods to which an indication of the country or place in
which they were made or produced or the name and address of the
manufacturer or person for whom the goods are manufactured is required to
be applied under section 139, a false indication of such country, place, name
or address; or
(f) tampers with, alters or effaces an indication of origin which has been
applied to any goods to which it is required to be applied under section 139;
or
(g) causes any of the things above-mentioned in this section to be done,
shall, unless he proves that he acted, without intent to defraud, be
punishable with imprisonment for a term which shall not be less than six
months but which may extend to three years and with fine which shall not be
15
less than fifty thousand rupees but which may extend to two lakh rupees:
Provided that the court may, for adequate and special reasons to be
mentioned in the judgment, impose a sentence of imprisonment for a term of
less than six months or a fine of less than fifty thousand rupees.

104. Penalty for selling goods or providing services to which false trade
mark or false trade description is applied.—Any person who sells, lets
for hire or exposes for sale, or hires or has in his possession for sale,
goods or things, or provides or hires services, to which any false trade
mark or false trade description is applied or which, being required under
section 139 to have applied to them an indication of the country or place in
which they were made or produced or the name and address of the
manufacturer, or person for whom the goods are manufactured or services
provided, as the case may be, are without the indications so required, shall,
unless he proves,—
(a) that, having taken all reasonable precautions against committing an
offence against this section, he had at the time of commission of the alleged
offence no reason to suspect the genuineness of the trade mark or trade
description or that any offence had been committed in respect of the goods
or services; or
(b) that, on demand by or on behalf of the prosecutor, he gave all the
information in his power with respect to the person from whom he obtained
such goods or things or services; or
(c) that otherwise he had acted innocently, be punishable with imprisonment
for a term which shall not be less than six months but which may extend to
three years and with fine which shall not be less than fifty thousand rupees
but which may extend to two lakh rupees: Provided that the court may, for
adequate and special reasons to be mentioned in the judgment, impose a
sentence of imprisonment for a term of less than six months or a fine of less
than fifty thousand rupees.

Except in the case where that person can prove that

1. He had taken all necessary precautions at the time of alleged

offence.
2. He gave all the information in his power, to the prosecutor with
respect to the person from whom he obtained such goods or things
or services.
3. He had acted innocently

Procedure under Criminal law

Prosecution can be obtained by following two procedures-

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  Complaint before Magistrate- In order to initiate prosecution under
the Penal provisions of the Trade Marks Act, the right holder may file
a complaint before the Magistrate seeking orders for investigations
under section 156 (3) Cr. P.C. and may also move an application under
section 93/94 of the Cr.P.C. for issuance of General Search Warrants
for affecting general search and seizure.
 Direct complaint before the Police- The procedure for filing a direct
complaint before the Police for infringement of Trademarks is
contained in section 115(4) of the Trademarks Act. The minimum level
Police Officer empowered under the Act is Deputy Superintendent of
Police (DSP)/Assistant Commissioner of Police (ACP). The concerned
DSP/ACP is required to then seek an opinion from the Registrar of
Trademark and can only then initiate an action.
 Section 115(3) make offence under Section 103 cognizable and
under Sub-Section 4 of Section 115, any police officer not below the
Rank of DSP and equivalent may, if he is satisfied that any of the
offences referred to in sub-section (3) of Section 115 has been, is
being, or is likely to be, committed, search and seize without warrant
the goods or things involved in committing the offence, wherever
found, and all the articles so seized shall, be produced before a Judicial
Magistrate of the first class or equivalent. Provided that the police
officer, before making any search and seizure, shall obtain the opinion
of the Registrar on facts involved in the offence relating to trademark
and shall abide by the opinion so obtained.
 A case filed under 103 is cognizable so FIR can be filed under
section 154 CrPC if the police officer refuses to register a FIR the
person can file complain before the magistrate under section
156(3) CrPC in accordance with the provision procedure laid
down in Section 190 CrPC.
 Upon registering the FIR or on the order of magistrate (as the case
may be) the investigation will be initiated and conducted by the
police officer which include search and seizure of the good with
infringed trademark.
 Benefit of criminal remedy in case of infringement is that victim
can initiate proceeding even against unknown persons.
Sometimes it happens that the identity of the manufactures and the
distributors of the infringing material is not known to the complainant
and the same operates as an obstacle in initiation of criminal action,
but under Section 93 and 94 of CrPC under which one can
request for initiation of a search and seizure proceedings
against known and unknown persons.

ALSO ADMINISTRATIVE REMEDIES- The registration of a deceptively

similar trademark can also be stopped by filing the opposition within
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four months from date of publication. One can also apply for rectification
of Register by applying for removal of deceptively similar trademark in case
if it is registered.

For passing off - Section 20 CPC:

Section 20 CPC: Other suits to be instituted where defendants reside
or cause of action arises.
Subject to the limitations aforesaid, every suit shall be instituted in a Court
within the local limits of whose jurisdiction
(a) the defendant, or each of the defendants where there are more than one,
at the time of the commencement of the suit, actually and voluntarily resides,
or carries on business, or personally works for gain; or
(b) any of the defendants, where there are more than one, at the time of the
commencement of the suit, actually and voluntarily resides, or carries on
business, or personally works for gain, provided that in such case either the
leave of the Court is given, or the defendants who do not reside, or carry on
business, or personally works for gain, as aforesaid, acquiesce in such
institution; or
(c)The cause of action, wholly or in part, arises.
1**** *
2[Explanation].-- A corporation shall be deemed to carry on business at its
sole or principal office in 3 [India] or, in respect of any cause of action arising
at any place where it has also a subordinate office, at such place.
Illustrations
(a) A is a tradesman in Calcutta, B carries on business in Delhi. B, by his
agent in Calcutta, buys goods of A and requests A to deliver them to the East
Indian Railway Company. A delivers the goods accordingly in Calcutta. A
may sue B for the price of the goods either in Calcutta, where the cause of
action has arisen, or in Delhi, where B carries on busines.
(b) A resides at Simla, B at Calcutta and C at Delhi. A, B and C being together
at Benaras, B and C make a joint promissory note payable on demand, and
deliver it to A. A may sue B and C at Benaras, where the cause of action
arose. He may also sue them at Calcutta, where B resides, or at Delhi, where
C resides; but in each of these cases, if the non-resident defendant objects,
the suit cannot proceed without the leave of the Court.

The plaintiff can apply for:

1. Apply for an injunction prohibiting the business from using

your trademark or goodwill

 Anton Piller Order: These are prior partial orders to inspect the
defendant’s premises. The court may order the plaintiff where the
defendant is likely to destroy or dispose of materials which contain
the trademark of the plaintiff

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  Mareva injunction: In such an order, the court has the power to
freeze the assets of the defendant where the property is likely to
be dissolved or cancelled, so granting judgement against him will
not be enforced.
 Interlocutory Injunction: It is one of the most commonly used
forms of an injunction. It acts to take action against the defendant
based on the former violation. Interlocutor prohibition is an order
to prevent the defendant from continuing usage of the
trademark, which is leading to infringement of the unregistered
trademark. It has the objective of preventing further infringement.
 Perpetual injunction: It is an injunction that prevents the defendant
completely, for all time, from performing any act that violates the
rights of the owner of the trademark. A perpetual injunction is usually
granted when the case is finally settled.
 Infringing goods to be destroyed: A search and seizure order
from the court prohibits the defendant from delivering all goods or
products that are labelled with the brand name. Here, the court can
direct the return of related material accounts and destroy all such
goods.
 Sue for damages or seek to account for lost profits: Damages
are compensation for the loss that can be recovered by the real
owner of the trademark from the defendant. The monetary value of
financial loss or loss for the reputation of the brand is recovered
under damage. The amount of the damage and the account of lost
profits will be awarded by the court after taking into consideration
the actual and certain loss of the owner because of the passing off.

Case Laws On Trademark Infringement:

Coca Cola Vs. Bisleri International Pvt Limited & Others: [2009] 164 DLT
59
 The defendant (Bisleri International Pvt Ltd) by agreement
transferred trademark rights of MAAZA to the plaintiff (Coca-Cola
Company) and also gave away the formulation rights, IPR, and know-
how along with the goodwill for India for bottling and selling a mango
fruit drink � MAAZA to Coca Cola.
 In 2008, the defendant subsequently filed an application to
register trademark "MAAZA" in Turkey and begin exporting the
same fruit drink under name "MAAZA". Coca Cola claimed a
permanent injunction and infringement damages for passing off and
trademark since it was given to them by Bisleri.
 The Hon'ble Delhi High Court in this case upheld the injunction against
defendant "Bisleri" for using trademark "MAAZA" and passed an
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 interim order of permanent injunction to prevent the plaintiff from
irreparable loss and injury.

Industria De Diseno Textil Sa Vs Oriental Cuisines Pvt Ltd And Ors,

Popularly Known As Zara Fashion Vs. Zara Food: 2015 HIGH COURT
OF DELHI
 In this case, renowned fashion brand ZARA filed a suit for
infringement and passing of their well- known brand ZARA
against a restaurant "ZARA TAPAS BAR". The Delhi High Court
ruled out in favour of the renowned fashion brand ZARA, ordered
the restaurant to change its name.

Nirma Limited v. Nimma International and Anr. (2010)

 The plaintiff (Nirma Limited) was the owner of the trademarks’

Nirma ‘and Nima’, registered in 1979 and 1982, respectively, for
dealing with detergent powder, toilet soap, etc.

 The plaintiff was facing infringement of his trademark by ‘Defendants’

(Nimma International and Anr.), The use of the marks’ Nimma
International’ and ‘Nimson’s Nima Care’ for its cosmetic
products.

 The plaintiff sued for a permanent injunction against the defendants,

who wanted to prevent the use of the aforesaid mark, as an amount
for the plaintiff’s trademark infringement as well as the passing off. The
court held that the two marks’ Nimson’ and ‘Nirma’ are phonetically as
well as semantically different, and the trade channels and classes of
purchasers of goods sold under these marks also differ. Hence,
‘Nimson’ is not deceptively similar to ‘Nirma’.

 But in the case of ‘Nimma International’, it is different. Ownership

of any registered trademark in the matter of ‘Nimma’ is not proved
through the defendants’ documents, while the plaintiff’s registration in
the matter of its mark ‘Nirma’ was strong and had a reputation in three
decades. The use of ‘Nimma’ will create confusion in the minds of
the public to believe that the goods and services belong to the
plaintiff. Therefore, the defendants were permitted to use
‘Nimson’ but were restrained from using ‘Nimma’ or any other
mark, including ‘Nima’.

Glaxo Smith Kline Pharmaceuticals Ltd. v. Unitech Pharmaceuticals

Pvt. Ltd. (2005) DLT

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  The plaintiff claimed that defendants are selling products under
the trademark FEXIM that is deceptively similar to the plaintiff’s
mark PHEXIN, which is used for pharmaceutical preparations. The
defendants are selling anti-biotic tablets with the trademark `FEXIM'
with the packing material deceptively similarly to that of the plaintiff,
whereby intending to not only to infringe the trademark but also to pass
off the goods as that of the plaintiff as the two marks are also
phonetically similar. The Court restrained the defendant from using
the trademark `FEXIM' or any trademark deceptively similar to the
trademark of the plaintiff `PHEXIN', any label/packaging material
deceptively similar and containing the same pattern as that of the
plaintiff.

M/s Bikanervala v. M/s Aggarwal Bikanerwala (2005) DLT 255

 If a party using the deceptively similar name only for a single shop
and not spreading its business by use of that particular name then
also that party could be stopped from using the tradename of
other company.

Dhariwal Industries Ltd. and Anr. v. M.S.S. Food Products (2005) SCC
 If the trademark is not registered by any party but one party
started using it before the other then first one would have the
legal authority on that particular mark
 Where appellants were using the brand name MALIKCHAND for their
product and the respondents were using the name MANIKCHAND
which is similar to the previous one and both parties have not
registered their trademarks. Court held in this matter that even
though plaintiff have not registered their trademark they are using
it from long time back and hence court granted perpetual
injunction against the respondents.

N.R. Dongare v. Whirlpool Corp. Ltd. 1996 SC

 Even if a company is not doing business in country, but it is a well
known company or well known goods, then also it would be entitled to
get authority over its trademark.
 Where the defendants have failed to renew their trademark
‘WHIRLPOOL’ and in the mean time the plaintiffs have got
registration of the same. In this case court said that though there was
no sale in India, the reputation of the plaintiff company was travelling
trans border to India as well through commercial publicity made in
magazines which are available in or brought in India.
 The “WHIRLPOOL” has acquired reputation and goodwill in this
country and the same has become associated in the minds of the
public. Even advertisement of trade mark without existence of goods
in the mark is also to be considered as use of the trade mark. The
magazines which contain the advertisement do have a circulation in
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 the higher and upper middle income strata of Indian society.
Therefore, the plaintiff acquired trans-border reputation in
respect of the trade mark “WHIRLPOOL” and has a right to
protect the invasion thereof.

Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors (2002) DLT
 Defendant Company was using the trade name HONDA for
‘Pressure Cookers’ which they are manufacturing in India and even
when their application for registration of this trademark had been
rejected by the registrar they continued using it and again applied
for registration and hence plaintiff has brought this plaint.
 Plaintiff is the well-known company having presence all over the
world in the field of Motor Cars, Motorcycles, Generators and other
electronic appliances. They are doing business in India in association
with the Siddharth Shriram Group with the name Honda Siel Cars India
Ltd. Plaintiff has established that his business or goods has acquired
the reputation and his trade name has become distinctive of his goods
and the purchasing public at large associates the plaintiff's name with
them.
 The use of trademark HONDA by respondents is creating
deception or confusion in the minds of the public at large and
such confusion is causing damage or injury to the business,
reputation, goodwill and fair name of the plaintiff. Hence court has
restricted the defendants from using the trademark HONDA in
respect of pressure cookers or any goods or any other trade
mark/marks, which are identical with and deceptively similar to the
trade mark HONDA of the plaintiff and to do anything which amounts
to passing off to the goods of the plaintiff.

Smithkline Beecham v. V.R. Bumtaria DHC 2005

 The plaintiff applied for permanent injunction to restrain the defendant
from infringing the trademark, passing off, damages, delivery etc. of its
registered trademark ARIFLO, used in respect of the
pharmaceutical preparations. Defendants were using the similar
name ACIFLO for their product of the same drug in India.
 Plaintiffs were not doing business in India for the particular
product and argued that since their advertisements are been
published in medical journals hence they have a trans-border
reputation and defendants should be stopped to use the similar
trademark which creating deception in customers.
 Court said that mere publication of an advertisement in a journal
cannot establish a trans-border reputation.
 Such reputation if any is confined to a particular class of people,
i.e., the person subscribing to the said specialized journals and
the same can’t be said to be extended to the general consumers.

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  Thus any adverse effect on the firm in such a case can’t be
amounted to the offence of “passing off”.

Colgate Palmolive Company and Anr. v. Anchor Health and Beauty

Care Pvt. Ltd 2003 DHC
 Where the plaintiffs have filed the case for the ‘passing off’ of
trademark and the dispute was on the colour scheme and combination
of colours in a significant manner.
 Colgate Company was the plaintiff and questioning the use of a
mark on dental product which is the combination of ‘red’ and
‘white’ in proportion of 1/3:2/3 respectively and the way of writing the
name of product was also in dispute. Plaintiffs were using the mark of
particular fashion from 1951 and the respondents started using it in
1996. Plaintiffs have filed the application to stop the respondents from
using the particular mark.
 The plaintiffs showed to the court that the look of trade dress of
the two articles, one manufactured by the plaintiff and another by
the defendant from the point of view of not only unwary, illiterate
customer/servants of the household but semi-literate also as the
trademarks "Colgate" and "Anchor" are written in English
language cannot be distinguished by ordinary customer.
 There is every likelihood of confusion as to the source on account
of the similarity of substantial portion of the container having particular
colour combination and also shape of the container. Such an action on
the part of infringing party also has an element of unfair competition.
 Court said in this matter that may be, no party can have monopoly
over a particular colour but if there is substantial reproduction of
the colour combination in the similar order either on the container or
packing which over a period has been imprinted upon the minds of
customers it certainly is liable to cause not only confusion but also
dilution of distinctiveness of colour combination.
 Colour combination, get up, lay out and size of container is sort of trade
dress which involves overall image of the product's features. There is
a wide protection against imitation or deceptive similarities of
trade dress as trade dress is the soul for identification of the
goods as to its source and origin and as such is liable to cause
confusion in the minds of unwary customers particularly those who
have been using the product over a long period.
 If a product having distinctive colour combination, style, shape and
texture has been in the market for decades it got attached with the
reputation and goodwill of the company which could be earned at huge
cost.
 In the present dispute if an illiterate servant or village folk goes to the
shop with the instruction to bring Colgate Tooth Power having a
container of particular shop with trade dress of colour combination of
Red and White in 1/3 and 2/3 proportion he will not be in position to
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 distinguish if he is handed over "Anchor" Tooth Powder contained in a
container having the identical trade dress and colour combination of
"Red and White” in that order and proportion. Confusion is much
large as to source and origin as the difference in name will not
make any difference to such a customer and the goods of the
defendant can easily be passed off as goods of the plaintiff.
 Court said that significance of trade dress and colour combination is
so immense that in some cases even single colour has been taken to
be a trademark to be protected from passing off action. Except where
the colour cannot be protected as the blue colour is for the Ink and red
colour is for the lipstick or similar cases. Court said that it is been
established that the defendants are using the trade dress of
plaintiffs for their containers and hence Court had allowed the
application of plaintiffs and restrained defendants from using the
colour combination of red and white in the disputed order on the
container/packaging of its goods.

Beecham Group PLC. vs. S.R.K. Pharmaceuticals 2004 Intellectual

Property Appellate Board (IPAB)
 The appellant was using the mark ‘AMOXIL’ in India since 1990.
This mark was registered in India in 1972 in Class 5 in respect of
Pharmaceutical goods. The respondent started using the mark
‘LYMOXYL’ in India from 1985. The respondent filed the application
for registration of the mark in 1987 in India in the same class with
respect to similar goods.
 The appellant brought an action against the respondent stating that the
mark is deceptively similar. The only difference between the two marks
is in the prefix ‘LY’ and ‘M’. The rival marks are phonetically and
deceptively similar and the goods are pharmaceutical goods under
Sec. 12(1) of the Act.
 The Intellectual Property Appellate Board (IPAB) held that the
respondent dishonestly adopted the mark by copying it from the
appellant who had got the mark registered long ago. Hence the
respondent cannot claim honest concurrent use, by virtue of earlier
use. The Appellate Board delivered a judgment prohibiting
registration of the Trade Mark ‘LYMOXYL’.

B. Ranbaxy Laboratories Limited vs. Anand Prasad & 4 Others 2004

(28) PTC 438 (IPAB)
 The appellant was the registered proprietor of the mark
‘FORTWIN’ and had been using the mark since 1975. The
respondent applied for registration of the mark ‘OSTWIN’. Both
the marks related to pharmaceutical compositions in respect of
treatment of bones.
 The appellant brought an action against the respondent stating that the
mark is deceptively similar. The IPAB held that the prefixes are ‘FORT’
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and ‘OST’ while both the marks end with the suffix ‘WIN’. It was further
held that since the rival goods are also pharmaceutical goods it
might lead to serious consequences due to deception or
confusion in the minds of the public. Hence on the possibility of
harm being caused to common person the appeal was allowed.

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