The legal issues raised in this judgment pertain to the use of a trademark by one party on goods that are

related or accessory to goods or services provided by another party, and whether such use infringes on the
rights of the trademark owner. Here are the key legal issues discussed in the judgment:

1. Use of Trademark in Relation to Goods of Another: The central issue revolves around whether the
plaintiff can use the trademark of the defendant on their products. The plaintiff manufactures spare
parts for automobiles and wishes to indicate that their parts are suitable for use in vehicles
manufactured by the defendant. The defendant contends that such use creates a false impression of a
connection between their goods and the plaintiff's goods.

2. Section 30(2)(d) of the Trade Marks Act: The judgment references Section 30(2)(d) of the Trade Marks
Act, which provides certain limitations on the effect of registered trademarks. It allows for the use of a
registered trademark on goods that are accessory or related to other goods where the trademark has
been used without infringement. The key question is whether the plaintiff's use of the trademark falls
within the scope of this provision.

3. Potential Trade Connection: The judgment discusses whether the use of the defendant's trademark
by the plaintiff gives the impression of a trade connection between the two parties. The court
examines whether the plaintiff's use of the trademark is reasonably necessary to indicate that their
goods are suitable for use with the defendant's goods, and whether it conveys a false connection.

4. Infringement of Trademark: The court delves into whether the plaintiff's use of the defendant's
trademark on their products qualifies as infringement of the trademark. It considers whether the use
is likely to be taken as a trademark use, even if it's accompanied by the plaintiff's own trademark.

5. Quality and Authenticity Implication: The judgment explores whether the plaintiff's use of the
defendant's trademark could be understood by consumers as an indication that the plaintiff's products
are of the same quality as the defendant's products, possibly authorized by the defendant.

6. Requirement to Indicate Lack of Trade Connection: The court suggests that if the plaintiff intends to
use the defendant's trademark, they should do so in conjunction with a statement indicating that they
have no trade connection with the defendant. This requirement aims to clarify to consumers that
there is no affiliation between the two parties.

7. Common Law Rights and Statutory Rights: The court emphasizes that trademarks are both common
law rights and statutory rights. The judgment discusses the exclusivity of trademark use granted by the
Trade Marks Act, and how this relates to common law principles.

8. Interpretation of Sections 28, 29, and 30: The court analyzes the interaction between Sections 28, 29,
and 30 of the Trade Marks Act. Section 29 defines infringement, while Section 30(2)(d) places
limitations on the effect of registered trademarks. The court explores how these provisions should be
interpreted harmoniously.

9. Legal Standards for Determining Infringement: The court evaluates the legal standards for
determining trademark infringement, including the necessity for use as a trademark, the potential for
confusion or false connection, and the limitations outlined in Section 30(2)(d).

Reasoning:

 The court acknowledges that the use of trademarks to indicate product compatibility is a common
trade practice.

 It highlights the importance of protecting the exclusivity of trademark rights granted to owners under
the Act.

 The court discusses the distinction between original equipment manufacturers (OEMs) and other
manufacturers who may not have a direct affiliation with the original brand.
  It emphasizes that the use of the defendant's trademark should not create a misleading impression of
a trade connection.

 The court suggests that if the plaintiff intends to use the defendant's trademark, they should include
an endorsement clarifying the lack of trade connection.

 The judgment aims to balance the plaintiff's right to indicate product compatibility with the need to
prevent consumer confusion and protect the defendant's trademark rights.

Outcome:

 The court rules that the plaintiff can use the defendant's trademark on their spare parts packaging,
provided they include an endorsement clarifying the absence of a trade connection.

 The court suggests that this endorsement can prevent any misleading impression or confusion among
consumers.

 The judgment seeks to harmonize the rights of both parties and prevent the infringement of
trademark rights while allowing legitimate use.

Section 28, as aforesaid, confers on the registered proprietor, right to exclusive use of the trade mark and
right to sue for infringement as defined in Section 29. Section 29(1) prescribes that a trade mark is infringed by
use of registered trade mark by another, provided such use is as a trade mark. Once a defence under Section
30(2)(d) is invoked, it is implicit that use is as a trade mark, inasmuch as if use is not as a trade mark, it does
not amount to infringement and the question of invoking Section 30(2)(d) does not arise. It is thus not open to
take the pleas of use being not as a trade mark as well as of Section 30(2)(d). However, such dilution / limit
placed on effect of registration is subject to conditions.

M. The first condition as aforesaid is that it should be without infringement. However, once Section 30(2)(d) is
invoked, as aforesaid, infringement within the meaning of Section 29 is implicit.

The only way to harmoniously interpret Sections 28 and 29 on the one hand and Section 30(2)(d) on the other
hand, is to strictly construe the other two conditions provided in Section 30(2)(d). N. Once we look at the
statutory provisions so, the only inference is that if there is even an iota of doubt that use of the trade mark
for indicating that the goods are adapted to form part of or to be accessory to goods with respect to which
trade mark is registered and is being used will have the effect of indicting a trade connection between the
registered proprietor of the trade mark and the person so using the trade mark, either the said use be stopped
and held to be not within the scope of Section 30(2)(d) or to remove such doubt.

O. The practise of trade prevalent is of automobile manufacturers either also manufacturing and marketing
spare parts thereof themselves or of automobile manufacturers not themselves manufacturing each and every
part of automobile and appointing OEMs for such parts and which OEMs are also authorized to sell such parts
as spare parts and which spare parts are treated by the consumers as originals, having trade connection with
automobile maker i.e. having the same quality as of the part fitted in the automobile.

P. Use of the trade mark of the defendants, as wanted by the plaintiffs, is likely to indicate a similar trade
connection between plaintiffs and defendants as between defendants and their OEMs.

Infringement of trademarks as per Section 29 of the Trademarks Act, 1999 is defined as a use of a mark, by an
unauthorised or an authorised person or a person who is not the registered proprietor, which is identical or
deceptively similar to the trademark in relation to the goods or services in respect of which the trademark is
registered. In simple words, it is defined as the violation of exclusive rights that are attached to a registered
trademark without the permission of the registered owner or licensees. The courts have time and again
assumed that similarity of two marks and the kind of goods and services results in causing confusion in the
minds of general public. They may take an undue advantage of enjoying the hard-earned reputation of the
registered trademark. In order to have a successful claim against a person infringement of trademark, what
needs to be proved is that the infringing trademark is deceptively similar or identical to the registered
trademark.

When can a person be considered as infringing a trademark

A registered trademark is said to be infringed in case of the following situation:

1. If the mark in dispute is identical with or deceptively similar to the registered trademark and is in
relation to the same or similar goods or services;

2. If the identical or similar mark can cause confusion in the minds of general public to have an
association with the registered trademark

3. If the registered trademark is used as a part of trade name or business concern for goods and services
in respect of which the trademark is registered

4. If the trademark is advertised and as a result it takes unfair advantage or is contrary to the honest
practices or is detrimental to the distinctive character and reputation of the registered trademark.

5. If the registered trademark is used in the material meant for packaging or labelling of other goods or
as a business paper without due authorization of the registered user.

According to Section 103, a person is said to be applying for a trademark wrongfully in the following conditions:

1. If falsification of trademark has been committed;

2. If any trademark has been falsely applied to goods and services;

3. Makes, possesses or disposes of any instrument with the object and purpose of falsifying a trademark;

4. Falsely indicates name of the country or place where the goods have been made or the name or
address of the person who is responsible for its manufacturing;

5. Alters or tampers with the indication of origin that is applied or required to be applied to a product.

The punishment for infringement of trademarks as a result of falsification 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 alleged offender has not committed such falsification based
on the following grounds:

1. All reasonable precautions were taken against commission of such falsification and that at the time of
commission of the alleged offence there was no genuine reason to suspect the genuineness of the
trademark

2. That he had acted innocently

3. On demand of the prosecutor, such necessary documents of the manner and person from whom the
goods were received.

What kind of legal action and remedies can be taken against infringement of Trademarks

Whenever a trademark is said to be infringed, both civil and criminal action can be brought about. The
complaining party can either file a criminal complaint. The Trademark Act, 1999 recognises infringement of
trademarks as a cognizable offence i.e. a police complaint can be lodged, and the infringers can be prosecuted
directly. Even the courts are empowered with the authority to suo moto conduct raids and seizure operations.
On the other hand, a civil action can also be brought about against such infringements. A suit can be initiated
depending on whether the trademark is registered, pending or unregistered. Since trademark infringement is a
continuing offence, there is no limit on the time period for filing a suit. The court of competent jurisdiction can
give the following remedies[3] if the infringements are successfully proved:
 1. Injunction/stay against the use of trade mark;

2. Appropriate Damages;

3. Handing over of accounts and profits;

4. Appointment of a local commissioner by the respective court for custody or sealing of infringing
material and accounts. The court can even go up to the extent of granting injunctions and directing
the custom authorities to withhold the infringing material from being shipped or being disposed so
that the proprietary interest of the owner gets protected;

5. An application under Order 39 rule 1 & 2 of CPC for grant of temporary or ad interim ex-parte
injunction. Interim orders are generally ex-parte or after notice.

What does not amount infringement of trademarks in India?

Section 30 of the Trademarks Act, 1999 lays down the certain conditions wherein a trademark cannot be said
to have been infringed. Such conditions can be used by the alleged infringer as defences in suits for
infringement of trademark and hence escape his liability. These conditions include:

1. When any person makes use of a trademark in accordance with honest practices in industrial or
commercial matters;

2. When such use is not in pursuit of taking undue advantage or proves to be detrimental to the
distinctive character or repute of the trademark.

3. Use of a mark for the indication- Whenever any trademark is used in order to indicate the kind,
quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of
rendering of services or any other characteristics of goods or services.

4. Use of mark which is outside the scope of registration- When trademarks are registered, there are
certain cases where they are subjected to certain conditions and limitations. Whenever the alleged
infringement is under the ambit of those limitations, then it does not constitute to be a case of
infringement of trademarks.

5. Implied consent – Whenever the infringed use of a trademark is in the continuance of the permitted
use by the original proprietor who has subsequently not removed or obliterated it, in such cases the
use cannot be said to be an infringement.

6. Use of trademark in relation to parts and accessories

7. Use of trademarks identical or similar to each other

What is Passing Off

Passing is recognised as a common law tort which is used to protect and enforce unregistered trademarks in
India. Like protection of trademarks, Passing off also prevents a person from misrepresenting its goods and
services from that of the other. The concept of passing off has emerged in the recent past. It has extended its
ambit from goods to businesses and services. Today it is even applied to many forms of unfair trading and
competition.

There are three elements of passing off popularly known as the classical trinity. These include Reputation,
Misrepresentation and damage to goodwill. Common law courts have come up with a few basic characteristics
of passing off which include the following:

1. Misrepresentation

2. Made by a person in the course of trade

3. To prospective or ultimate consumers of goods and services

 4. To injure the business or goodwill of the other person

5. It causes actual damage to the person by whom the action is brought about.

Whenever such a case of passing off is brought before a court of law, it generally goes to the extent of deciding
issues such as firstly, nature of mark, secondly, degree of resemblance, thirdly, whether the misrepresentation
has resulted into causing confusion in the minds of people and ultimately causing loss to the plaintiff, fourthly,
nature of goods, fifthly, similarity in the nature, character and performance of the goods of rival mark, sixthly,
class of purchasers, their education and intelligence level, seventhly, mode of purchasing and surrounding
circumstances.

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.

As a settled proposition of law, ex-parte injunctions are granted by the court only in exceptional cases. In IPR
matters, specifically in cases of trademark infringement, the plaintiff, out of several remedies, has the option of
asking for an ex-parte injunction. While observing the principles on which the court may grant an ex-
parte injunction in cases of trademark infringement, the court enumerated that in such matters it would grant
an ex-parte injunction when non – grant of the same would leave the relief prayed for in the suit, infructuous
and where the trademark used by the defendants is identical or nearly identical to the plaintiff’s trademark.[1]

In the present case of Samit Pramod Gupta & Ors. v. Neeraj Sharma & Ors [CS (COMM) 896/2022], the
plaintiff, is the registered proprietor of multiple “NEULIFE” trademarks, alleged that the defendant No.1 & 2
have infringed their NEULIFE trademarks by adopting and using a trademark identical to “NEULIFE”. For seeking
a remedy against the alleged infringement of the trademark, the plaintiffs filed an application, praying for grant
of ex-parte injunction.

Decision of the Hon’ble Court-

After taking into account the submissions made by the plaintiffs, the court found that the arguments presented
by the Plaintiffs and the documents filed in support of those arguments, sufficiently demonstrates that:

1. The Plaintiffs have made a prima facie case of infringement of trademark in their favor;

2. If no ex parte injunction is granted in favor of the Plaintiffs then he will suffer an irreparable loss;

3. Balance of convenience also lies in the favor of the Plaintiffs.

Based on the above observations the court granted an ex parte injunction in favor of Plaintiffs and restrained
the Defendant No.1 & 2’s directors, employees, officers, servants, agents and all others, acting for and on
behalf of the Defendant no 2 (i.e. Sia Ram Industries) from manufacturing, using, selling, distributing,
advertising, exporting, offering for sale, and dealing in any other manner, directly or indirectly, any product
bearing the infringing mark “NEULIFE” or any other mark deceptively similar to the plaintiff’s mark.

Further while deciding the application for appointment of local commissioner, the court while allowing the
same appointed a local commissioner and issued certain direction to her which are as follows:

1. To enter upon the premises of the defendant and seize any material using the mark “NEULIFE” or any
other mark deceptively similar to the same.

2. To make copies of books of accounts, ledger etc.

3. To file the report within two weeks from the execution of the commission.

Arguments advanced by Plaintiffs:

The arguments presented by the plaintiff are as follows:

1. The defendant is selling his goods under the trademark “NEULIFE” on e-commerce websites such
as Amazon India, Flipkart. Plaintiff argued that such use of the trademark by the defendant would
create confusion in the minds of the public. The plaintiff substantiated his arguments by
producing the screenshots from Amazon India’s website wherein the defendant has been selling
his products under the trademark “NEULIFE”.
2. By relying upon those screenshots the plaintiff pointed out that the defendants products are
listed alongside plaintiffs’ products on the website of Amazon India under the store name
“NEULIFE STORE”, which is likely to confuse users on amazon, making them believe that the
“Neulife Store” is that of the Plaintiffs. Based on this fact, the plaintiffs argued that such
placement of Defendant Nos.1-2’s products is bound to create an impression to customers that
plaintiff has expanded its operations into the field of allied products of training weights.
3. The Plaintiffs also contended that he has registered his trademark under Class 35 and Defendant
No.1 & 2’s act of running an outlet/store (even though online) under the trademark “NEULIFE”,
would amount to infringement would amount to infringement under section 29(1) of
the trademarks act, 1999.
4. Conclusively, the Plaintiffs contended that the Defendant No.1-2 are taking unfair advantage of
the well known and reputed image of the Plaintiffs’ well known marks which is garnered by him
over the years.
5. The Plaintiff salso pointed out that they had first entered into a settlement with the Defendant
No.1 wherein the latter has promised to refrain from using the trademark “NEULIFE”. But the
Defendant No.1 failed to keep his promise and the Plaintiffs, therefore has no option left other
than filing an application for ex parte interim injunction.
 6. Lastly, for making a request for appointment of a Local Commissioner, the Plaintiffs put forth the
contention that the defendants even after having a complete knowledge about the existing
trademark of the plaintiff has adopted and promoted his goods under the trademark “NEULIFE”
with the intention to ride upon plaintiff’s goodwill and reputation.

Requirements of a Suit

1. Cause of Action- under one cause of action- one suit can only be filed
2. Jurisdiction- whether the court can try the suit
a. Section 20 CPC
b. Section 134 TMA
3. Prayer/relief- usually injunction
4. Section 134 TMA
a. Section 20 of CPC: the suit can be filed where the plaintiff resides or carries his
business
b.

. EXHAUSTION OF TRADEMARK RIGHTS IN INDIA

The Division Bench of the High Court of Delhi says it is, in the wake of having decided for
"International Exhaustion" in case of Kapil Wadhwa versus Samsung Electronics Ltd. 1 , recent case
accessible on the Doctrine of Exhaustion in India. So the heap of exclusive rights allowed to a
trademark holder does not appear to incorporate the way that they can't limit parallel importer of
those products who abuse this doctrine to benefit themselves. Parallel imports, as one may know, is
genuine marked goods (yes, they are not fake products), that are not expected for a specific Country
according to the desires of the trademark proprietor, are at any rate imported into that Country by
unauthorized dealers at less rates and are sold in the Country keeping pace with current market rate
of the said item; subsequently, exploiting the doctrine of exhaustion

Doctrine of Exhaustion essentially implies that a owner of a specific good stops to have control over
further offer of his goods once he has made a valid transfer of sale. At the end of the day, if the
trademarked goods are once put available by the proprietor or by his assent, and once obtained
truly, the trademark proprietor or any one getting his title from him can't avoid offer of such great, as
the selective appropriate to offer merchandise bearing the stamp is 'depleted' by the principal deal;
at that point the elite ideal to offer products bearing the check can't be practiced twice in regard of
similar merchandise. Consequently, this doctrine is generally called as the doctrine of first deal. In
addition, there are diverse methods of exhaustion too, which are perceived internationally

Doctrine of International exhaustion takes a shot at the assumption that the entire world is one
market or one nation and accordingly merchandise once sold in any piece of such market or nation
works as exhaustion of privileges of the trademark proprietor over such products.

CURRENT POSITION IN INDIA: Section 30 sub-clauses (3) and (4)[1] of the Indian Trademarks Act,2
deals with the exhaustion of rights after first sale of goods. From a cursory reading of the same, one
would deduce that the intention of the legislature was to recognize domestic exhaustion only. In the
case involving parallel imports and trademarks, the Plaintiffs were successful in getting an ex parte
order directing the Customs authorities to notify all ports to bar imports of defendant‟s goods. In
another case tried by the Delhi High Court, an ex parte injunction was granted to the plaintiff thereby
preventing the defendant from importing genuine Samsung products into India from China. The most
recent case is that of Kapil Wadhwa vs. Samsung Electronics Ltd.3 ,where the High Court of Delhi has
ruled otherwise on the basis that the scope of the expression „the market‟ in Section 30 (3)4 is not
limited to domestic markets

PARALLEL IMPORTATION Parallel importing will be a type of international trade that is referred as
the “gray market. ” a result it will be a gray area it need a few particular cases What's more
demonstrating thereabouts that know party need aid mindful from claiming its implying also get it its
legality. Parallel importation will be an unapproved import under a nation for non-counterfeit
products foreign without the express reasonably of the intellectual holder. People allude should this
Similarly as gray business goods, Also the vast majority trades involve high-weight marked products
for example, such that jewelry, cameras, tablets, and watches.