Trademark Notes by Adv. Gunjan

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Law Guru Institute IPR Adv. Ga•anan Chow
Part: C- Trade Mark

Chapter: I
Nature of Trade Mark
Introduction:
Trade and commerce is the life line of economy of any nation. In the era Of
competition, the goods are traded by their names which indicate quality and identity of the
goods.
With the emergence of competitive market, huge numbers of similar goods were
manufactured.A consumer is duped if he buys a commodity presuming it to have
originatedfrom a certain identified source, but actually it is not and later finds it to be
substandard. In such case - the reputation of trader suffers.
Sc to identify their products, manufacturers began to use certain symbols, marks or
devices whereby their goods can be distinguished from similar goods manufactured and
marketed by others.
The interests of both the consumer and the trader can be saved if some definite
symbol is attached with the goods which mark out the origin of goods from a definite
source and such a symbol is called a trade mark. This also fed to trade mark acquiring
goodwil!and reputation among consumers of goods.
ll. Need and Emergence of Trade Mark Laws:

The marks associated with goods acquire a reputation and goodwill. Before the
enactment of the Trade Marks Law, the trademarks used to be called common law marks.
The common law marks could not be registered as there was no law only.
The owner of a common law mark had to protect his mark against acts of
infringement by initiating common law proceedings for passing off. Such proceedings had
to be set in motion each time an infringement occurred. Also such proceedings could be
launched only when the mark had actually been used by an infringer. Such proceedings
used to be time-taking and burdensome. That brought in the need for a special legislation.
The first statutory enactment prior to independence was Trade Marks Act, 1940. But
this Act was repealed and a new statute - The Trade and Merchandise Marks Act, 1958
came into existence. New Act gave a system of registration of trademarks and statutory
recognitionto proprietorshipof trademarks and also defined the rights conferred by such
registrationand prescribed remedies in respect of infringement of those rights. But even
this Act of 1958 has now been replaced by 1999 Act.
The provisions of the Trade Marks Act, 1999 came into force with effect from 15th
day of September, 2003.
Ill. Definitions:
Add: Opp. Garware College, Karve Road. Pune —4.

80
i ute IR
defines - 'Mark' is a device, brand, heading, label, ticket, name,

word, letter, shape of goods, packaging or combination of colours, numeral
combination thereof.
prany defines 'Trade mark' as a mark capable of being represented
section
b) graphicallyand which is capable of distinguishing the goods or services of one person
and may include shape of goods, their packaging and combination
fromthose of others
of colours.
definition of 'trade mark' and 'mark' it becomes evident

After carefully reading the
ingredients:
it contains following includes a dcvicc. brand, heading, label, ticket,
that
1) Trade mark must be a mark which
numeral,shape of goods, packaging or combination of
name,signature,word, letter,
combination thereof.
coloursor any
The mark must be capable of being represented graphically.
2) person from those of
3) It mustbe capable of distinguishing the goods or services of one
may include shape of goods, their packaging and combination of colours.

4) It
or proposed to be used in relation to goods or services.
5) Itmustbe used
6)Theuse must be for the purpose of indicating a connection in the course of trade
right either as proprietor
betweenthe goods or services and some persons having the
user to use the mark.
or byway of permitted
Kinds of Marks Device:
V.Meaninof Different
representation.
i) Device:It is a symbolic/graphic
ii) Brand:It usually refers to those kind of marks which are branded on goods themselves
the trademark. Illustration—PERRYbrand rice, TORTOISE brand mosquito
constituting
coil.
iii)Letters:The letters have been very useful elements for designers to work with and
a populartrademark. Some reputed examples of letter marks are - LG, IBM.
develop
iv)Heading:The dictionary meaning of heading includes an inscription which means
message, caption,writing etc. However,the meaning of the word heading in reference
totrademarkis not very clear.
v) label:A label may refer to a compositemark containing various features including
devices and words usually printed on paper which can be pasted or attached to the
goodsthemselves or their containers.
vi) Ticket:
Ticketmay be somethingstitched or tagged on the goods and containing the
markprintedor pasted thereon, Some popular examples relating to garrnents are—
WRANGLER' jeans, 'PENTALOON' shirts, 'ZODIAC' ties.
vii) Name;Name may be of
an individual (including surname), firm or company. Name aiso
includesany abbreviation of a name.
Add:Opp.Garware
College, Karve Road, Pune —4.
81
law Guru nst tute Adv. Ga anan Choudhar
viil) Signature: Signature means signature of an individual e.g. signature
of proprietor of
ix) Word, Letter and Numeral:The terms word, letter and numeral
are to given their plain
and general meaning. A mark may consist of a combination of them.
Illustration'303'
capsules, •SSS' cigarettes.
x) Shape of goods: The Trade Marks Act 1999 makes shape of goods
registrable as mark
under the Act. Illustration—shape of soap, shape of tooth brush.
xi) Packaging: Package includes 'any case, box, container, covering,
ioider, receptacle
vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule,
cap, lid, stopper
and cork'. The definition is inclusive,and not exhaustive.
xii) Combination of colours: Combination of colours has been inserted within the
definition
of mark under the Trade Marks Act 1999. A scheme of colouringapplied to goods
is,
therefore, a mark within the definition,
xiii) Any combination of different marks: Any combination of two or more marks is also a
mark within the definition of mark.
V!. Essentials for a good Trademark

Besides possessing a distinctive trademark, it should possess the following attributes:—
a. it should be easy to pronounce and remember, if the mark is a word;
b. the device should be capabie of being described by a single word;
c. it should be of such character, which makes it spell correctly and write legibly,
d, it should be short;
e. it should be attractive to eye;
it should satisfy the requirement of registration.
Vil. Case:
a) Sumat kumar v. Sheoianan Prasad_&State of Bihar
Supreme Court observed that a trade mark means a mark used in relation to goods
for the purpose of indicating a connection between the goods and some person having the
right as proprietor to use that mark.
The function of a trade tnark is 10give an indication to the purchaser or a possible
purchaser as to the manufacture or quality of the goods, to give an indicationto his eye of
the trade source from which the goods come, or the trade hands through which they pass.
b) Firm Koonerii Bechari Lal v. Firm Adam Hazi Pir Mohammed (AIR 1944 Sind 21)
The Sind High Court has observed that a trade mark is some symbol consisting in
general - picture, label, word or words, which is applied or attached to goods of a trader so
as to distinguish his goods from similar goods of other traders. It is the adoption or use of a
trade mark, which give a title to it.
As soon as trade mark has been so employed in the market to indicate to purchasers
that the goods to which it is attached are the manufacture of a particularfirm, it becomes
to that.extent the property of the firm.
Add: O . Garware Colle e Karve Ro PLüie

82
ns itut A v G a n h ud
6 a
Thusa trade mark is a property right which the law protects. A trade mark is a visual
for the purpose of indicating their trade origin.
resentationattached to goods
Trademark:
functions of
The A tradc mark serves the purpose of identifying the source of origin of goods. Trade
following four functions:
perform s the
nark the and its ori in. For example, the trade mark 'Brooke Bond'
It identifies Company manufacturing tea and marketing it under
identifiestea originating from the
that mark. . The quality of tea sold in the packs marked Brooke Bond Tea
Itcuaranteesits ualit with mark Taj Mahal.
different from tea labeled
wouldbe similar but
3) the product. The trade mark represents the product. The trade mark 'Sony'
isassociatedwith electronic itcms. The trade mark SONY rings bell of particular quality
ofparticularclass of goods. It thus advertises the product while distinguishing it from
cornpetitors.
productsof Sony's
4) Itcreatesan image of the product in the minds of the public, particularly consumers or
consumers of such goods.
theprospective
Themark 'MMwhich stands for the food items originating from the American fast
foodchainMcDonalds creates an image and reputation for food items offered by it for
salein the market.
. Garware
Colie e Karve Road Pune—4.
83
Kinds of Marks
(ether •_Seyyigegvtar_k1
Co!lcctivgMarks,
Well-Kmown_TrademarksJngernetDomain Etc.)
Introduction:
Other than trademarks, there are certain other specific forms of m
arks which
be related to trademarks. These marks cover certain categories of ttade, may
business or
services. The new trademark law also provides legal protection to them.
ll. Other Marks:

Other Marks are explained as under:
1. Service Marks
Service business has become a major area of business at national and
global level.
Hence service industry also needs to be ptotected. Under the Trade and
Merchandise
Marks Act, 1958 service marks were not registrable. However, The 1999 Act, makes
the
service marks also registrable.
Section 2(z) defines 'service' as under:
"Service" means
service of any description which is made available to potential users and
includes the provision of services in connection with business of any industrial
or
commercial matters
such as banking, communication, education, financing, insurance, chit funds, real
estate, transport, storage, medical treatment, processing, supply of electrical or other
energy, boarding, lodging, entertainment, amusement, construction, repair, conveying
of news or information and advertising.
Illustration- Logos of PNB, SBI, IDBI, ICICI, AIRTEL etc.
2. Collective Marks
Section 2(g) defines 'Collective Mark' as under:
'Collective Mark" means
a trade mark distinguishingthe goods or services of membersof an associationof
persons which is the proprietor of the mark from those of others.
The association of persons, however, does not includes partnership within the
meaning of Indian Partnership Act, 1932.
Example: Godrej, Bajaj etc.
Section 2: lays down that any reference to "Trade Mark" shall include reference to
"Collective Mark" or "Certification Trade Mark".
Collective mark not to be misleading as to character of significance.
Section 62 of the Act prohibitsthe registrationof collective mark,if it is likely to
deceive or cause confusion on the part of public in particular if it is likely to be taken to be
Add: Opp. Garware College, Karve Roa<. Pune 4.

84
other than a collective and in such the a
respe
mark,
it is a collective
Trade Mark:
defines as follows:
2Éß) to any goods or services means -
trade mark', in relation the public which uses
•wel which has become so as to the substantial segment of
a
goods or receives such services services would be likely to be
such mark in relation to other goods or
thatthe use of such rendering of services between
as indicating a connection in the course of trade or
taken using the mark in relation to the first mentioned
and a person
thosegoodsor services
services
goods or Parle, Liberty, Raymond, Colgate, Bata etc.
- Artel, Reliance, Britania, take into
determining whether a mark is a well-known mark, the Registrar may
For for the said purpose. He is also mandated to
fact which he considers relevant
the relevant section of the public
or recognitionof that trade mark in
knowledge promotion of the trade mark;
as a result of
includingknowledge in India obtained
geographical area of any use of that trade mark;
(ii)theduration,extent and mark,
duration,
(iii)the extent and geographicalarea of any promotion of the trade
advertisingor publicity and presentation,at fairs or exhibition of the goods or
including
servicesto which the trade mark applies;
durationand geographicalarea of any registration of or any application for
(iV)The
of that trade mark underthe Act to the extent they reflect the use or
registration
recognitionof the trade mark;
(v)Therecordof successfulenforcementof the rights in that trade mark. The extent to
whichthe trade mark has been recognisedas a well-known trade mark by any court of
registrar;
(vi)lfa markis determinedas well-known,by even one section of the public in India, by
anvcourtor registrar, it should be considered as well-known for registration.
Forconsideringwhether a mark is a well-known mark, the Registrar is mandated not
torequirethe following aspects as necessary conditions:
(a)thatthe trade mark has been used in India;
(b)thatthetrade mark has been registered;
(c)thatthe application for registration of the trade mark has been filed in
India;
(d)that the trade mark —
(i) is well-known in; or
(ii)hasbeenregistered in; or
(iii)in respectof which an application for
registration has been filed in, any Jurisdiction
otherthan India; or
Add:o . GarwareCoile e
Karve Road Pune—4.
85
Law Guru Institute IPR Adv. Ga anan
Choudha
(iv) that it is well-known to the public at large in India;
4. Certification Trademark:
Certification Trademark means
a mark capable of distinguishing the goods or services in connection with
which it is
used in the course of trade
which are certified by the proprietor of the mark in respect of origin, material,
modeof
manufacture of goods or performance of services, quality, accuracy
or other
characteristics of goods or services not so certified and registrable under
the Act.
A mark shall not be registrable as a certificationtrademark in the
name of a person
who carries trade in goods of the kind certified or a trade of the providing
of services of the
kind certified.
Iliustrations: 'Agmark' fcr food items, 'Hallmark' for Jwellery.
5. Internet Domain Name:

Use of computer and information technology have brought revolutionary
changes in
business methodology. The Information Technology Act, 2000 has paved the way
for E-
commerce.In the present scenario Internet domain names play a very vital role
in
promotion of business. They are valuable corporate assets.
With the advancement and progress in the technology, the services rendered on
the
Internet site have a!so come to be recognized and accepted and are being given protection
so as to protect such provider of services.
6. Term of Trademark
A unique feature of trademark is its perpetual life. Though initially a trademark
is
registeredfor 10 years, but it can be periodically renewed and can be used for indefinite
period, unless it is removed from register or prohibited by court order,
It is interestingto note that first trademark registeredin U.K. under No. 1 of 1876
consisting of Red Equilateral Triangle in respect of alcoholic beverages is still in force.
Ill. Conclusion:
Add: Opp. Garware College.Karve Road. Pune 4.

86
Chapteglll
Registration of Trademark
duction: unregistered,
10troT,.adcmarkmay be tegistptprl nr dLldinstinfringcment
registration offers prima facie evidence of ownership of
providedfor both. The the user of trademark has to establish the
whereas, in case of non-registration
ad passing off.
registration can be explained in two parts viz., conditions and
The whole subject of
and procedure for registration.
for registration
17
conditions and Grounds for Re istration Sections 6 to
partA:
of Tgdgm-ar-# for registration, are entered into a Register
—-ß-¯ÅGademarks, which are accepted
1958 the Register was divided into part
maintained by Registrar. Under the repealedAct of
of 1999 has done away with this practice and only a single
AandpartB; but the r,ew Act
now maintained.
Registeris
It shallbe lawfulfor Registrarto keep the record wholly or partially in computer
diskettesor in any other electronicform subject to such safeguards as may be
floppies
prescribed.
of Goods Sections 7 & 8

1.Classification
The Registrarshall classify goods and services, as far as may be, in accordance with
theinternationalclassification of goods and services for the purposes of registration of
Any question arising as to the class within which any goods or services falls
trademarks.
shallbedeterminedby the Registrar whose decision shall be final.
The Registrar may publish in the prescribed manner an alphabetical index of
of goods and services. Whereany goods or services are not specified in the
classification
index of goods and services,the classification of goods or services shall be
alphabetical
by the Registrar.
determined
of registration:
Il,Duration
Whenan applicationfor registrationis made to the Registrar, he may accept or
refuse
afterhaving accepted the same, if the conditions so demand
Case:
Contest2 Win.com India Pvt. Ltd. v. Cell Cast Interactive India Pvt. Ltd,
It was held by Bombay High Court that one does not get a proprietary
right over a
mark
merelyby virtue of applying for the registration of the said mark
as his trademark.
AsperSection24 of the Trademarks Act, 1999, a trademark
is owned by only one person,
butunderspecial circumstances two or more
persons may also be registered as joint
proprietors
of a trademark.
Add:O SGarware
Colle e Karve Road Pune —4.
87
Law Guru Institute Adv. Gaianan
The registration of a trademark is initially made for a period for 10 years but may be
renewed from time to time by payment of prescribed fee. Before the expiry of the
reserved term, the Registrar gives a notice to the proprietor to get it renewed for another
term by depositing prescribed fee and fulfilling other conditions, if any, mentioned in the
notice. If the proprietor fails to comply with the notice and conditions prescribed-therein,
the Registrar will remove the trademark from the register after its present term expires.
Registrar:
IV. Relevant Factors to be considered by
Every trademark is not registrab!e. For obtaining registration a trademark has to
fulfill the conditions laid down under the law; in other words, the registration may be
grounds, These grounds are further
refused if the trademark is covered under prohibited
grounds.
classified into absolute grounds and relative
Before granting registration the Registrar shall examine the application keeping in
mind the following factors:
1) deceptively similar
of registration;
2} absolute grounds for refusal
3) limitations as to colour;
of registration;
4) relative grounds for refusal
5) honest and concurrent uses;
etc.; and
6) names of chemical elements
living persons or persons who recently died etc.
7) names and representations of
hereunder:
These factors are explained
1) Deceptively Similar Work to a mark has been defined as that
The expression'deceptively similar' in relation
mark as to be likely to deceive or cause confusion.
which so nearly resembles the other -
of similarity of two marks are
The principles for deciding the question
general impressions of some of significant detail rather
i) The marks are remembered by
the whole.
than by a photographic recollection of
ii) Overall similarity is the touch stone.
of a person of average intelligence
iii) Mark must be lookedat from the first impression
and imperfect recollection.
idea are important and both
iv) Overall structure, phonetic similarity and similarity of
visual and phonetic tests must be applied.
examination, the nature of
v) The marks must be compared as a whole, microscopic
other surrounding
commodity, the class of purchaser, the mode of purchase and
considered for
circumstancestnusl also be taken into consideration-Factors to be
deciding deceptive similarity.
are to be considered
For deciding the question of deceptive similarity, the following factors
Add: O . Garware Colle e Karve Road pune

88
Institute IPR Adv. Ga ana Choudhar
Guru
L3W
mark i.e., whether the marks are word marks or label marks or
Thenature of composite
both word and label marks.
1) marksi.e.,
degree of resemblances between the marks, whether they are phonetically,
2)visually or structurally similar and hence similar in idea.
goods in respect of which they are used as trade marks.
Thenature of
3)The similarity in the nature, character and performance of the goods of the rival
4)
traders.
purchaser who ore likely to buy the goods bearing the marks.
Theclass of
purchasing the goods or placing orders for the goods.
6) Themodeof
surrounding circumstances.
1) Any other
It is also settled that weightage to be given to each of the aforesaid factors depends
weightage cannot be given to each factor in every
factsof each case and the same
tivit
for determinin the dece
case.
triteria
The Act does not lay down any criteria for determining what is likely to deceive or
meaning of the provisions therein. Therefore, everv case must
causeconfusion within
depend upon its own particular fact and the value of authorities lies not so much in the
decisionas in the tests applied for deterrnining what is.likely to deceive or cause
On an application to register, the Registrar or an opponent may object that the
confusion.
markis not registerable by reason of provisions embodied in Act.
trade
Insuch a case, the onus is on the applicant to satisfy the Registrar that the trade
mark appliedfor is not likely to deceive or cause confusion. In cases when it is considered
thatthereis doubt as to whether deception is likely, the applicationshould be refused. A
markis likely to deceive or cause confusion by its resemblance to another already on
trade
theregisterif it is likely to do so in the course of its legitimate use in a market.
i) Distinctiveness:
Thedistinctivenessof a mark is the hallmark (essential feature) of the law of trade
Thisconcept is included in the definition of trade mark itself.
mark,
Case:
Vermav. William Hollins & co. Ltd.
i) M.R. (AIR1947 Lah. 29)
It was held that distinctive mark must mean some mark which distinguishes the
goods
to whichit is attached on those made or sold by the persons who uses the
mark.
b)Imperial
TobaccoCo. of India Ltd. v.'Registrar of Trade Marks (AIR1977 cal. 413)
It was held that distinctiveness has been understood as
- some quality in the trade
rnLrk
whichmakes the goods distinct from those of others.
Distinctiveness
may be -
(i)inherent; or
(i)acquired
over a period of time.
Theimportance
of distinctiveness:
Add:O. Garwre le e Karve Road Pune

89
Adv. Ga anan Choudha
Law Guru Institute
that one good can have only one origin
The trade mark law is based on the principle
mark serves as an identification of origin and
same as one man has one mother. The trade
competitors that is why the element of
distinguishesthe markedproduct from those of the
'distinctiveness' is so important.
Distinctivenessdoes not give conclusive right to registration:
The distinctivenessthough a necessary condition for registration, is not by itself
of success in obtaining
sufficient to qualify for registration. The applicant's chance
registration of a mark would largely depend upon whether other traders in the ordinary
course of business and without any improper motive desire to use the same mark.
3) Absolute Grounds for refusal of registration:

-
Under Sec. 9 following categories cf trademarks shall not be registered
(a) Which are devoid of any distinctive character. that is to say, not capable of
distinguishing the goods or services of one person from those of another person.
(b) Which consist exclusively of mark or indications which may serve in trade to designate
the kind, quality, quantity: intended purpose, values, geographical origin or the time of
productionof the goods or rendering of the service or other characteristics of the
goods or service.
(c) Which consist exclusively of marks or indications, which have become customary in the
current language or in the bona fide and established practices of the trade.
(d) It is of such nature as to deceive the public or cause confusion.
(e) It contains or comprises of any matter likely to hurt the religious susceptibilities of any
class or section of the citizens of India.
(f) It comprises or contains scandalous or obscene matter.
(g) Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act,
1950.
Further, a mark shall not be registered as a trademark if it consists exclusively of—

(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape, which gives substantial value to the goods.
However, if a trademark before making an application has acquired distinctive
characteras a resultof the use made of it or is a well-knowntrademark,the registration
shall not be refused.
4) Limitation as to Colour:
A trademark may be registered either subject to limitation as to certain colours or
any combination thereof, or without limitation of colour. in deciding the distinctive
character of the trademark, the tribunal should take such limitation into consideration. If
the trademark is registered without limitation of colour, it will be deemed to be registered
for all colours.
Add: O . GarwareColle e Karve Road Pune 4.

90
itute Adv. Ga ana C oudha
curu I
registration:
rounds for refusal of
refused on some more grounds other than
Registrationof a trademark rnay be
8elative
5) Section 9 of the Act. In Section 11 the grounds mentioned
grounds specified in
may also refuse registration if—
3550'ute
in nature. It means the Registrar
are•relative' ood of confusion caused to the public including the likelihood of
Li8gL!b——
there is by virtue of its identity with the earlier trademark
(a)associationwith an earlier trademark
services caused by the earlier trademark or by virtue of its
andsimilarityof goods or and identity or similarity of the goods or services
to an earlier trademark
the earliertrademark;
causedby trademark is w ell-known trademark in India and the later mark would take
earlier
(b)the advantageof the earlier mark or would be detrimental
to the distinctive
unfair
repute of the earlier trademark;
characteror be prevented by virtue of any law of passing off protecting an
India is liable to
its in course of trade or its use in India is liable to be
unregistered trademark used in the
of law of copyright.
preventedby virtue earlier trademark or proprietor of the earlier right
However,if the proprietor of the
later trademark, the same may be registered by the
to the registrationof the
the above grounds unless objection is
Further,a trademarkshall not be refused on
Registrar.
by the proprietor of the earlier trademark.

in oppositionproceedings
raised
and Concurrent use:

6)Honest Registrar may permit the registration to more than one
12, the
UnderSection
of the trademarks which are identical or similar, irrespective Of an earlier
proprietor
in respectof one of them, on the ground of honest and concurrent use or
registration
special circumstances.
other
Howfar the length of concurrent and uninterrupted user is required to claim the
was the issue addressed by Delhi High Court in S. Mehar Singh v. M.C. Gupta &
registration,
co.
Courtnarrated the following parameters

The :
i) theextentof use in time, quantity and the area of the trade;
i) thedegreeof confusionlikely to ensure from the resemblance of the marks which is to
alargeextentindicativeof the tneasure of public inconvenience;
il) thehonesty and the concurrent use;
i) whetherany instances of confusion have in fact been proved; and
v)therelativeinconvenience which would be caused if the marks were registered.
gut,if a persondeliberately and knowingly uses a similar trademark which is
already
•teredwitha hope that if wili also be registered on subsequent date, such
a user
annot
beconsideredas an honest and concurrent user.
'dd.'
Opp.GarwareCollege,
Karve Road. Pune —4.
91
IPR Adv. Ga•anan Choudha
Law Guru Institute
7) Names of chemical elements or international non-proprietory names not registrable:

No word, which is commonly used and accepted name of any single chemical
element or any singlechemical compound (as distinguishedfrom a mixture) in respect ofa
chemical substanceor preparation, or which is declared by the World Health Organisation
and notified in the prescribed manner by the Registrar from time to time, as an
international non-proprietaryname or which is deceptively similar to such name, shall be
registered as a trademark.
8) Names and representationsof living persons or persons who recently died -

Where an applicationis made for the registrationof a trademark which falsely
suggests a connectionwith any living person, or a person whose death took place within
twenty years prior to the date of appiication for registration of the trademark, the
Registrar may, before he proceeds with the application, require the applicant to furnish
him with the consentin writing of such living person or, as the case may be, of the legal
representative of the deceased person to the connectionappearing on the trademark, and
may refuse to proceedwith the application unless the applicant furnishes the registrar
with such consent.
The reason for excluding names of living or dead persons may be to avoid and
prevent commercial use of such names on the ground of emotional, relationship of their
family members.
Conclusion:
Add: . Garware Colle e arve Road Pun —4.

92
Institute Adv. Ga anan Choudhary
edure for Registration (Sections 18 to 26)

to 26 of Trademarks Act, 1999 deal with procedure for registration.
for TM:
who—apply claiming to be the proprietor of a trademark used or pgposed to be
-ZAN person used
j. of registering it, shall apply in writing to the Registrar in the
by him, who is desirous
the registration of his trademark.
prescribedmanner for
may be made for registration of a trademark for different classes of
fee payable therefore shaii be in respect of each such class of
oods and services and
services.
goods or
a lication:
placeof filin the Trademark Registry within whose
Everyapplicationshall be filed in the office of
of business in India of the applicant is situated, or in the
territoriallimits the principal place
of business in India of the applicant whose name
caseofjoint applicants the principal place
as having a place of business in India is situated.
isfirstmentionedin the application
providedthat where the applicant or any of the joint applicants does not carry on
in India, the application shall be filed in the office of the Trademarks Registry
business
whoseterritoriallimits the place mentioned in the address for service in India as
within
in the application, is situated.
I disclosed
On receipt of application, the Registrar may accept or refuse to accept the

But if he refuses to accept the application he will record the reasons for
application.
The applicationmay be accepted with or without amendments, modifications,
refusal,
and limitations.
conditions
However,if the Registrar,after acceptance of application, but before registration,
findsthatthe application was erroneously accepted may withdraw the acceptance.
Whenan applicationfor registrationof a trademark has been accepted whether

absolutely
or subject to conditions or limitations, the Registrar shall, as soon as may
be
after
acceptance,cause the application along with the conditions or limitations, if any,
to
beadvertisedin the Drescribed manner.
The application is advertised in the Trademark Journal. The
purpose of
advertisement is to invite objections from interested persons whose
likelyto suffer.
trade interests are
[he Registrarmay cause the applicationto be advertised
before acceptance, if the
trademark
is devoid of any
distinctive character or consists of Only marks
consists or indications or
Of marksor indications which became customary in
the current language or trade
Add:
o . Garware
Colle e Karv
93
IPR
law uru stitute
similar or identical to another trademark
Further if the tradematk is deccptively
the public etc., then also the Registrar
which mav lead to confusionon the part of
before acceptance,
cause the application to be advertised
V. Opposition ot Application: (Section 21)

the date of the advertisement or re.
Any person may, within three months from
exceeding one month in the
advertisement of an application for registration, not
in the prescribed manner and on
as the Registrar,on applicationmade to him
in the prescribed mannerto
payment of the prescribedfee, allows, give notice in writing
the Registrar, of opposition to the registration.
and the applicantis
The Registrar shall send the copy of notice to the applicant
months from the receipt of notice. If he
required to give his counter-statement within two
period, it will be presumed that he has
fails to send counter-statement within two months
withdrawn the application.
When the third party preters an opposition and the applicant files his counter.
Registrar, who should give an
statement, they are required to produce any evidence to the
opportunity to both of them to be heard, if they so desire.
After considering their case, based on the application. opposition. counter.
the Registrar should decide
statement, evidence produced and oral representationetc.,
any, the registration is to be
whether and subject to what conditions or limitations, if
permitted or not.
for registration and disposing the obiections, if made by

with effect from date of
any relevant person, the Re istrar shall re ister the said trademark
application.After registering the trademark, the Registrar shall issue to the applicant a
certificate in prescribed form.
one important point to be noted is that if on account of default on the part of
applicant the whole process of registration could not be completed within twelve months,
the Registrar may, after giving notice to the applicant, treat the application as abandoned.
The purpose of imposingthis time limit is to avoid delay and discourage non-serious and
indolent applicants.
VI'. Effect of Registration:

The registration of a trademark is prima facie evidence of its validity. It however,
facilitates a remedy which may be enforced and obtained throughout the State.
Registration itself does not create a trademark. The trademark exists independently
of the registration which merely affords further protection undet the statute.
Vlll. Conclusion:
Add: Opp. Garware College, Kagve_Ro.d, Pune —4.

94
GuruInstitute
Adv. Ga anan Chou4hary
Assi nment and Chapter:

ransmission of Trademark
Introduction
other forms of intellectual
properties, trademark is also capable of being
red i.e. it can be assignable and
transmissible. The owner Of trademark can assign
withor without goodwill his trademark
to another personon
Similarly,a trademark can be transmitted to receipt of consideration.
the successor of the owner upon his death or
of law.
byoperation
and Transmission Sections 37-45)
Assi nment
Assinment - means a transfer of a claim of right
or a property in trademark by execution
assignment deed in writing.
of
Transmission- means transmission by operation of
law, devolution on the personal
representativeof a deceased person and any other mode
of transfer, not being an
assignment.
Section 37 of the Act - empowers the registered
proprietorto assign the trademark
foranyconsideration for such assignment.
However, it should be made clear that mere permissionto use trademark will not
amountto assignment of trademark.
Assignmentof an unregistered Trademark
An unregistered trademark can be assigned with or without the goodwill of business
concerned.
In an unregistered trademark which has been used is assigned without the goodwill
ofbusiness,the assignee (transferee) will not be able to protect the trademark since there
is absenceof the goodwill of business and no action for passing Off will lie. However,
prosecution may be available.
criminal
Conditionsof Assignment:
The assignment of trademark must-be in writing and specify the conditions and
to which the assignment is subject to. The assignmentotherwise then the
limitations
goodwillOf a business will not be effe ive unless the assigneeapplies for direction with
to the advertisement.Qf utte ass nment within six months of the assignment.
respect
D.Restrictionon Assi nment

If the assignmentor in the availability of exclusive right in more
thanone person to the use Of 'in relationto the goods or services or
on goods or services
description with each other or if the use of the
trademarkis likely to deceive regardto similarityof goods or
services
and Of the transmissionis not permissible.
Add:Opp.Garware Colte e Ka
'n ute IPR Adv. Ga anan Choudha
However. if the exclusive rights are exercised for sale or export of goods outside India, the
Registrar may grant certificate of validity of assignment.
Similarly. if the assignment results in the availability to one of the persons,
the
exclusivertghts to the use of trademark limited to use in relation to goods to be sold
traded in any place in India and to result in availability to another person to
the use Of
nearl•;resemblingthat mark or identical mark limited to use in any other place
in India
same will not be permissible unless the Registrar is satisfied that such assignment
or
transmi%ion is not contraty to public interest.
A certification trademark shall not be assignable or transmissible otherwise
than
with the consent of Registrar.
Associated trademark shall be assignable and transmissible only as a
whole and not
separately. But subject to provisions of the Act, they shall for all other purposes,
be
aeemed to have been registered as separate trademark.
E. Registration of Assignment and Transmission:

Registrationof assignment and transmissionwith Registrar is necessary. The
person
in whose favour assignment or transmission is made will make an application to the
Registrarfor registration of assignment or transmissionas the case may be. The Registrar
shall,on receipt of application and on proof of title to his satisfaction, register the person
as the proprietor of trademark in respect of goods or services in respect of which the
assignmentor transmissionhas been effected.
Case: Ratansi Mulsi v. Vinod Ratilal Gandhi
The BombayHigh Court has held that it is abundantlyclear that without registration
of the assignment or transmission, no rights can be pleaded on the ground that trademark
has been assigned or transmitted.
Case: CCE v. Vikshara Tradin and Investment P Ltd.
The Supreme Court has held that in case of non-registration of assignment of a
registeredtrademark,if on facts it is amply proved that assignment has taken place, mere
non-registrationof assignment will not vitiate thc cffect of assignment. It is submitted that
the judgment in this case has diluted the effect of Section '15.
F. Conclusion:
Thus it is clear that Act permits assignmentand transmission of trademark, both
registered and unregistered. But the assignmentis subject to certain conditions and the
deed of assignment should be registered with Registrar.
Add: Opp. Garware College. Karve Road. Pune —4.

96
Ch;yptcr: IV
of Trade Marks
dilCti0.!PÉ it to
trademark owner has the exclusive right cither to use himself or assign to
If sotneone else uses the trademark when he is not authorised, amounts
to the
Unauthorized use of trademark may be identical or deceptively similar
infringement.
trademark. registered
infringementof a trade mark occurs, if a person other than the
for the
in the course of trade, uses the same mark or a
for which the mark is registered.
goodsor services may
in of registered trademark, the registered proprietor or registered user
the
against infringement. But in case of trademark which is not registered
law r
cornmon
em-engJJ-c.a-dgm•rk2
other than the
----B¯Aregisteredtrade mark is infringed if it is used by a person course of
proprietoror other then the permitted user of such trade mark in the
confusion
Theinfringementoccurs because the mark being so used is likely to cause with the
trade.
of it
inthemindof public or is likely to cause impressionthat there is association
trademark.
registered
such confusion can also occur becalIse of the similarity of such mark
with the
trademark and even the identity or for which
trade mark is used,
theregistered
Infringementwould also occur if such a person uses a mark which is used in relation
registered.
goodsand services - which are not similar to which the trade mark is
toother a
Further,infringementwould also occur if the registered trade mark has acquired
takes
in India and the use of such mark or identical mark or similar mark and
reputation
advantageof it or causes detrimental to the reputation of the registered trade mark.
unfair
A registeredtrade mark is also infringed by a person who applies such trade mark to
intendedto the used for labelling or packaging goods, as a:business paper or it is
amaterial
foradvertisinggoods or services.
used
Conditions of Infringement:
Il,Essential
-
Inorderto constitute infringement following req uirements must be fulfilled
I) Thepersonis not•aVthorjzed to use the trademark.
2)Theinfringipgtcademarkis either similar or identicalor deceptively similar to the
alreadyregistered trademark.
3)Theinfringingtrédémgikfmust be actually used in the course of regular trade.
4)Theuseof i .i emark must e rinted like in advertisement, invoices or bills
etc.Mere eryiark is not infringement.
Add:O.G d' un —4. M-9371224923 9021428115

97
Law Guru Institute IPR Adv. Ga anan Choudh
S) Infringementoccurs by using either whole of the registered trademark

or by taking
few of any essential feature of thc trademark or by making a few
additions
alterations in already registered trademark.
IV. Test for determininK Infringement:

If the totality of impression of trademark is likely to cause confusion or
deceptionin
the mind of purchaser, it amounts to infringement.
Substantial (considerable and significant) charges oi confusion by a substantial
proof
are the main test to find out whether the infringing mark is deceptively
similar to the
registered mark.
The likelihood of confusion is sufficient end there is no need to prove
that actual
confusion has been caused- in other words deception, fraud or confusion on the
part of
infringer is essential requirement to determine infringement.
V. Common forms of Infringement:

A trademark can be infringed in different ways. Some commonly noticed formsof
infringementare mentioned hereunder:
(i) Using of mark identical or similar to registered trademark by unauthorized personin
relation to similar or same trade.
(ii) Advertisement of registered trademark of another for promotion of one's trade also
amountsto infringement.
(iii)A registered trademark is also infringed when a person makes unauthorized app!ication
of such trademark to a material intended to be used for labelling or packaging his
(iv)A registeredtrademark is also infringed by the spoken use of words as well as their
usual representation in cases where the distinctiveelements of that mark consist of or
includesuch work.
(v) Use of deceptivesimilar mark as to goods or servicesand as to trade origin which
results into confusion or deception in the mind of buyer.
(vi) Taking substantial features of already registered trademark which is in use,
amounts to infringement,
Wii) Unauthorized use of registered trademark on reconditionedor second-hand artic:es
may constitute infringement.
(viii) Unauthorized printing of label of registered trademark would also amount to
infringement. If the label has copyright, it will cause infringement of copyright.
(ix)When the owner of trademark gets the goods manufacturedby third party solely for
mark, sale of goods bearing that.mark by third party manufacturer to other persons
would constitute infringement.
VI. Burden/Onus to prove

Case: S. M. Dyechem Ltd. v. Cadbury (India) Ltd. AIR 2000 SC 2114
Add: 022. Garware College. Karve Road Pune —4.

98
Institute
Adv. Ga
anan Choudha
well-settled that the plaintiff
must prove
. mark have been copied. The onus to that the
essential features of his
infringement. prove 'deception'
alleges is on the part of the
iff
ofAcgyje$-en-gex
33 contains provisions as to
effect of acquiescence
sec. the earlier trade (consent). It provides that
proprietorof mark cannot
contest
of a subsequent (later) trade mark, if (challange) the validity of
he has acquiescedin the use of the
auenttrade mark for a continuous period of five
years, unlesshe can prove that the
of the subsequent trade mark was not obtained
the later mark also is in good faith.
TheproprietorOf not entitled to oppose
the use of the earlier
demark.
similar mark:
decetivel
Theinfringement that deception or confusion has been caused may arise in the
ways -
é0Wing
tion or confusion as to oods - A person may buy the goods
seeing one mark
thifikjng brand,
that it is the which is in his mind, which in
fact is not the case. This is the
common type of confusion or deception.
most
Decetionor confusion as to trade ori in source -A personlooking at a mark may buy
thegoodsthinking that it is coming from the same source as some other goods bearing
which he is familiar. This is deception or
asimilarmark with confusion as to trade
source.
yeptionor confusion as to trade connection - A person looking at the mark may not
that it is the same as one with a different brand in his mind but the similarity may
think
make hirnbelieve that the two are in some way or other connectedwith each other.
useof the mark might give rise to a beiief in the purchasers'mind of there being
connectionwith the goods and the owner of the registeredtrade mark,
o similarit' and Action for infrin ement:

Thedegreeof similarity necessary to be deceptive cannot be measured in terms of
"Standard. The phrase itself has been defined in section 2(d) of the Act which shows
markshall be deemed to be deceptively similar to another mark when it so
ambles theother mark as to be likely to dcccive or cause confusion.This does not take
tematter muchfurther but it indicates the two ingredients of infringement viz, similarity
lithelikelihood of deception or confusion.
Wr inanactionfor infringement:
(a)theplaintiffmust be registered owner of a trade mark,
(b)thedefendantmust use a mark deceptively similar to the plaintiffs mark,
(t)theusemust be in relation to the goods in respect of which the plaintiff's mark is
registered,
Colle e Karve Road Pune —4.

k.@2L.Garware M-93712249239021428115
99
Guru (nstitute c
(d) the use by the defendant tnust not be accidental but in the course of trade.
X. Illustrations of Infringement:
Addition of extraneous matter, inconspicuousadditions is infringement. If a person

incorpotates whole or part of a registered Trade Mark of another, the addition of other or
matter would not save him from the charge of infringement.
Addition are sometimes nude to the infringing mark which are either not
visible or are so inconspicuous that they could be seen only by careful scrutiny which is not
expected of an ordinary customer. The inconspicuous additions indicate fraudulent
intention and trade mark would be struck down on grounds of infringement.
2. Use of registered trade mark along with a name other than that of registered proprietor
constitutesinfringement -
Use of trade mark of registered proprietorwith the name other than of a registered
user constitutes infringement.
Case: Levi v. Shah 1985 RFC 371,
The plaintiff had registered trademarks consisting of labels respective!y coloured
red, orange, white, black and blue sewn — "LEVI's" also a registered trade mark was
invariablyadded to the tabs. The defendantssold jeans and white tabs similar to the
registeredtrade mark sewn into the pockets. It was held as a case of infringement.
3. Use on reconditionedor second hand articles:

The use of the plaintiff's mark on reconditioned goods may constitute infringement
even if it is clarified that goods are not original but only reconditioned.
Case: Rolls-Royce v. Dodd 1981 FSR 517,
The defendant, a motor engineer concerned with the repair of automatic gear boxes
used in Rolls-Royce and Bentley Motor Cars, built a car having a grill similar to the
plaintiffs grill using plaintiffs registered Trade Mark emblem and logo, the car also had
Rolls-Royceengine. Defendant contendedthat he had built the car only to advertise his
business end he was not selling cars. It was held to be an infringement and injunction was
granted.
Certain acts not to constitute infringement of a registered trademark
Section 30 specifically excludes certain acts as not constituting infringement.They
are -
1) Where the use -
(a) is in accordance with the honest practice, and
(b) is not to take unfair advantage or to be detrimental to the distinctive character or
reputation of other trade mark.
2) A registered trade mark is not infringed -
Add: O . Garware Colle e Karve Road Pune —4.

100
te an Choy4b•n
I tstit
the mark indicates the kind, quality, quantity, intended purpose, value,
Whcrc
geographicalorigin etc. or other characteristicsof goods or services;
such
a trade mark is - the of such trade mark is in relation to
goo does not extend;

the registration
mark is used by a person -
the trade mark, the
in reletionto the oods connected with the proprietor or registered trade
31 rietor or the re isleted use' has -
;stcrcd ro
has not
confirmed the ermitted use of the registered trade mark and
subsequently removed or obliterate (eliminate) it, or
has expresslyor impliedly consented to the use of the trade mark; or
relation to the services connected with the proprietor or registered trade mark,
in
istered ro rietor or the re istered user has—
there
confirmedthe ermitted use and then applied the mark, and
services
the purpose and effect of use of such mark is to indicate, that those
havebeen performed by the proprietor or a registered user of the mark;
been used without
wherethe use of.a trade mark by a person in relation to goods, has
if trade mark is reasonablynecessary in order to indicate that the

goods: are so adapted (modified), and
neit nor the effect of the use of the trade mark is to indicate, a
conneCt16ribétWeen any person and the goods or services;
o(i.9Risgered trade mark, which is identical or nearly resembles other, is
5)Wheretheuse
of, .tj-ht ..re istration under this Act.
inexercise
5uitforinfrin e
g infringuq •trade mark or
suitfor
trade mark or
suitrelating
off.'l
for passing
shallnot be i
a DistrictCourt having jurisdiction to try
the suit,
suit is as laid down in code of Civil
. for filing a suit for

of a trade
infringement
Where the infrin of action arises every
theaninfringement occ-
Add:O . Garware Colle
Law Guru Institute Adv. Ga anan Choudha
For instance - in a continued sale of infringingarticle, sale of each article wouldgive

rise to a fresh cause of action.
W. Who can sue for infringement -

The plaintiff in an infringement suit may be either:
(a) The proprietor of the registered trade mark or his legal successor.
(b) A registered user of a trade mark subject to a prior notice to the registeredproprietor
and consequent failure of the registeredprop,ietor to take any action against
infringer.
(c) An applicant for registration of a trade mark.
(d) Legal heirs of the deceased proprietor of a trade mark.
(e) Any one of the ioint proprietors of a trade mark.
(f) A foreign proprietor of a trade mark registered in India when infringement occursin
India.
XVI. Who can be sued?

(a) The infringer who directly by his action causes infringement or who uses or
contemplates or threatens to use a trade mark infringing the plaintiff's right.
(b) The master responsible for his servant's act of infringement. He is to be madethe
defendant in such suit. For example, a worker who is engaged in the business of making
fake labels is a servant of the master who orders the making of such labels. It is the
master in such a case who is to be sued.
(c) The agents of an infringer.
be joined as co-defendants
(d) Directors and promoters of a limited company cannot
acts,
unless they have personally committed or directed infringing
XVII. Conclusion:
Add: O . Garware Colle e Karve Road Pune

102
t te IFR ANY.
Chapter: IV
Remedies a ainst Infrin
ement of Trade Mark
tntroductieg;
the registered Trade Mark, the following
TO remedies can be resorted to -
. remedies,
Criminal proceedings,
2 remedies,
3. Administrative
Relief:
Formsof
CriminalRemedies:
i. complaint"Idy be made against the person causing infringement. Both the actions,
underthe civil !aw and criminal law can be initiated simultaneously. Under the civil law
proceedings,the plaintiff seeks reliefs for himself whife under the criminal law
proceedings,the complainant seeks award of punishment to the infringen
opposingthe registration of a deceptivelysimilar trade mark when the Trade Mark

Registryis in the process of considering the grant of a trade mark, can protect the trade
mark.TheRegistrycan also be mcved for removalof a deceptivelysimilar trade mark, even
registered.
if aiready
3.gyue-mgdjg:
Wheninstances (cases) of infringement occur, the court of competent jurisdiction
(courtnot lower than District Court) can be moved for passing off, grant of interlocutory
Anton PillarOrders, Damages and Account of Profits.
injunction,
1) Passing off:
passingoff is a fornpf_gortgpus action. The law of passing off is based on common
law,andhas remained. The sole object of passing off is to protect
thegoodwilland reputati by dishonest competitors.
The passing-off ' 10ridFöGQrjÆ;e'f19th' century and depends upon the simple
that
principle goods as the goods of somebody
else"
The Supreme if')dv*ding-off is said to be species of
unfairtrade competitidpA.#' b') which one person, through
deception attempts tQ reputation, which other has
established for himself in
Theactionis regarded as •
The commonest for or appearanceof the

plaintiffsgoods or selling
Add:O . Garware Colle e
Guru Institute
Cho
tort of passing-off involves a misrepresentationmade by
a
o another which
probabb,•.causes damage to the business or goodwillof the other trader. actuall.
Charesteristics of Passing-off:
The characteristics cf passing-off are discussed and explained in a
numberof
(i) Misrepresentation;
(ii) made by a person in the course of trade,
(iii) to prospective customers of goods or services supplied by him,
(tv)which was designed to injure business or goodwill of another trader, and
(v) which caused actual damage to a business or goodwil of a trader by whom
action was brought.
Thus an action for passing off suggests that the defendant is to be restrainedfrom
using its goods or services to the public as that of plaintiffs. It is an action not onlyto
preserve the reputation of the plaintiff but also to safeguard the public.
It prevents the likelihood of confusion in the mind of the public that goods
services offered by the defendant are the goods or the services of the plaintiff.
Case: Baker HuKhes Ltd. v. Hiroo Khushalani (2000) 102 comp cas. 203 (Del)
The Delhi High Court held that the plaintiff in an action for passing-offmust
establish the following elements:
(i) the plaintiff has acquired a reputation or goodwill in his goods, name or mark;
(ii) a misrepresentation, whether intentional or unintentiona!, which proceeds fromthe
defendant by the use of the name of mark of the plaintiff and which leadsor is likely
to lead the purchaser into believing that
goods and servicesofthe
the goods or services offered by the defendantare the
plaintiff, or
that the goods or services offered by the defendant are the resultof the
association with the plaintiff;
to suffer damage due to defendan(s
(iii)the plaintiff has suffered or is likely
representation.
action namely the reputationof goods,
These three elements of passing off by the Apex Court
of damage have been approved
possibility of deception and possibility
2) Iniunction: order restraining a person from continuingwit

judicial process or
An injunction is-a in sectior
act. The general rules governing the grant of injunction are contained
wrongful Section1!
Indian Specific Relief Act, 1963 and Order X)(XIX Rules I & 2 and
36 to 42 Of the
1903.
of the Code of Civil Procedure, are not likelytol
are of such a nature that they
Where the acts of infringement order that the plainti'
granting an injunction may pass an
repeated, the Court instead of
Road Pune —4.

Add: O . Garware Colle e Karve
104
itute Adv. Ga anan Choudhar
establishedinfringement of their trade mark will be at
liberty to apply for an
should such
an occasion arise.
•rction,
may be of the following types:—
: Injunction
Injunction
aterlocutory
I
alInjunction.
perpetu
cxplaincd below:
sc
such an order the Court has power to freeze defendant's assets where there
existsa probability cf the assets being dissipated or cancelled so as to make a
judgementagainst him worthless and un-enforceable.
in•unction -
Interlocuto
Thisform of injunction is the most commonlysoughtand most often granted form
of injunction.It serves to take action against defendant on the basis of past
fringement.The interlocutory injunction is an order restraining the defendant from
ontinuanceOf the acts which amount to infringement.An interlocutory injunction
n
the purpose of preventing further infringement.

serves
Aninterlocutory/interiminjunction may be granted ex parte that is without notice
incasesof urgency. Such ex parte injunctionis howevergranted for a limited period
only•
Theplaintiffin seeking an ex parte interim injunctionhas to discharge the duty Of
makingfull disclosure to the Court of all facts which are material to the exercise of the
court'sdiscretion whether or not to grant the relief. The Court may reject the
of an ex parte injunction on the ground that the disclosure has not been
application
fullyand truly by the applicant.
made
Grantof interim/interjocutoryinjunctionis discretionary,the plaintiff or the
cannot claim it as a matter of right to have an ex parte order granted in his
applicant
favour.
iniunction -
t)perpetual
injunction is atiöRÅi"tfåihing
Perpetual the defendanttotally, for all times to
fromdoing any act
come, rightsof the proprietorof the Trade
MarkPerpetual when the suit is finally decided.
injunction
Perpetual grant of interim injunction against
was granted a
infringement suit. It can bc granted also in cases
where
no interim injunction
• .'.l.é,t
tm piller order:
'
Theseare ex parte order$ premises.A court may grant such
orderto the plaintiff Wher (Jil!ityof the defendant destroying
or
Posing
of the incriminating t inspectionof the premises of
!defendant.
10 .Garware
colle e M-9371224923/9021428115
Gyre-'nstit.u!e—
An patte order nicans an order passed on the application of the plaintiff

Without
the defendant a notice of the application, Such a notice would enable the defendant
to tamper with the evidence of his infringement; hence ex parte order.
Case: E. M.l_v. Kishorilal 1976 RPC 333,
it was held that such an order may authorize samples to be taken or experiment
bc made on or with eny property which is the subject-matter of the action. to
The three conditions requisite for making an order are:
a) There must be a strong prima facie case favour of the plaintiff.
b) Such an order if not granted will cause irreparable damage to the applicant
for
injunction.
c) There must be clear evidence that the defendants have in their possession
incriminating documents or things and that there is a real possibility that they may
destroy such material if any notice of application is served.
4) Damages. Account of Profits

The plaintiff in an action for infringementmay be granted either damages or an
account of profits but not both. In an account of profits the infringer is required to give up
his ill-gotten gains in favour of the plaintiff whose rights he has infringed.
In case of damages the defendant has to compensate the plaintiff. The damages may even
be more than the monetary profits reaped by the defendant by the misuse of the plaintiff's
mark.
The quantum of damages awarded is determined by the quantum of loss actually
sustained by the plaintiff which was the natural and direct consequence of the unlawful
acts of tne defendant, Speculative and unproven damages are also not considered in
determining the quantum of damage.
In calculating the account of profits, the damage suffered by the plaintiff is
immaterial. The account of profit, is made on the basis of actual profits, the defendant has
made out of the sale of infringing goods.
Ill. Conclusion:
Add; O . Garware Colle e Karve Roa Pune —4.

106

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Part: C- Trade Mark

ll. Need and Emergence of Trade Mark Laws:

Add: Opp. Garware College, Karve Road. Pune —4.

defines - 'Mark' is a device, brand, heading, label, ticket, name,

definition of 'trade mark' and 'mark' it becomes evident

may include shape of goods, their packaging and combination of colours.

V!. Essentials for a good Trademark

Add: O . Garware Colle e Karve Ro PLüie

ll. Other Marks:

Add: Opp. Garware College, Karve Roa<. Pune 4.

5. Internet Domain Name:

Add: Opp. Garware College.Karve Road. Pune 4.

of Goods Sections 7 & 8

Add: O . Garware Colle e Karve Road pune

Add:O. Garwre le e Karve Road Pune

3) Absolute Grounds for refusal of registration:

Further, a mark shall not be registered as a trademark if it consists exclusively of—

Add: O . GarwareColle e Karve Road Pune 4.

by the proprietor of the earlier trademark.

and Concurrent use:

Courtnarrated the following parameters

7) Names of chemical elements or international non-proprietory names not registrable:

8) Names and representationsof living persons or persons who recently died -

Add: . Garware Colle e arve Road Pun —4.

edure for Registration (Sections 18 to 26)

On receipt of application, the Registrar may accept or refuse to accept the

Whenan applicationfor registrationof a trademark has been accepted whether

V. Opposition ot Application: (Section 21)

for registration and disposing the obiections, if made by

VI'. Effect of Registration:

Add: Opp. Garware College, Kagve_Ro.d, Pune —4.

Assi nment and Chapter:

D.Restrictionon Assi nment

E. Registration of Assignment and Transmission:

Add: Opp. Garware College. Karve Road. Pune —4.

Add:O.G d' un —4. M-9371224923 9021428115

S) Infringementoccurs by using either whole of the registered trademark

IV. Test for determininK Infringement:

V. Common forms of Infringement:

VI. Burden/Onus to prove

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o similarit' and Action for infrin ement:

Colle e Karve Road Pune —4.

Addition of extraneous matter, inconspicuousadditions is infringement. If a person

3. Use on reconditionedor second hand articles:

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goo does not extend;

if trade mark is reasonablynecessary in order to indicate that the

suit is as laid down in code of Civil

. for filing a suit for

Add:O . Garware Colle

For instance - in a continued sale of infringingarticle, sale of each article wouldgive

W. Who can sue for infringement -

XVI. Who can be sued?

Add: O . Garware Colle e Karve Road Pune

opposingthe registration of a deceptivelysimilar trade mark when the Trade Mark

The commonest for or appearanceof the

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2) Iniunction: order restraining a person from continuingwit

Road Pune —4.