TRADEMARK LAW IN INDIA WITH

SPECIAL REFERENCE TO PASSING OFF

AND INFRINGEMENT OF TRADEMARKS

Kunal Dutta
LLM Part II (Business Law)
Enrolment No. 18/247
Chapters Bifercation
 CHAPTER 1: INTRODUCTION
 CHAPTER 2: REVIEW OF LITERATURE
 CHAPTER 3: METHODOLOGY AND OBJECTIVES OF THE
STUDY
 CHAPTER 4: TRADEMARK PROTECTION- A CONCEPTUAL
ANALYSIS
 CHAPTER 5: REGISTRABILITY OF TRADEMARKS –
LEGISLATIVE APPROACH
 CHAPTER 6: PASSING OFF AND INFRINGEMENT OF
TRADEMARK
 CHAPTER 7: REMEDIES IN ACTIONS FOR PASSING OFF
AND INFRINGEMENT OF TRADEMARKS
 CHAPTER 8: CERTAIN IMPERFECTIONS IN THE
TRADEMARK LAW AND PRACTICE
 CHAPTER 9: SUGGESTIONS AND RECOMMENDATIONS
Importance of Trademarks (Page 1)

Helps to establish The goodwill and reputation

established by the reputed companies
Sometimes Trademarks become synonym for
the brand. Eg: Maggi, Xerox etc.
It creates revenue to the trader.
Establishes the quality of a product.
Only IP which is granted for unlimeted time
duration
Social status. Eg: Apple
Objectives of the study (Page 10)

Recognise the loopholes and lacunae in

Trademark law in India.
Trace the Development of Trademark law in
India.
Analyze the concept of infringement and passing
off and the remedies available for the same.
Analyse the judicial trends in the field of
Trademarks.
Laying down practical Solutions for the
problems in the relevant scenario.
Hypothesis (Page11)

The passing-off and infringement of

trademarks are global phenomenon.
The passing-off and infringement of
trademarks causes loss to not only the trader
but also to the consumers.
The laws relating to protection of trademarks
in India have been proved to be inadequate.
MNCs have been exploiting small traders
using the current system of Trademark Law.
Definition of Trademark (Pg. 16)

S.2(zb) reads “trade mark” means a mark

capable of being represented graphically
and which is capable of distinguishing the
goods or services of one person from those
of others and may include shape of goods
their packaging and combination of colors
The 1999 act massively expands the scope
of the trademarks to include all kinds of
services
Changes brought by Trademark Act 1999.
(Pg.18)

Registration
of trademarks for services.
Enlargement of definition of trademarks.
Enhanced protection for well- known trademarks.
(pg.28)
Rigrous registration system in 1958 act omitted.
Part A and Part B registration system abolished.
Period of renewal of trademark registration has
been modified.
Filing of multi class applications permitted.
Changes brought by Trademark Act 1999.
(Pg.18)

Law concerning registration of registered users

simplified.
Incorporated provisions for registration of collective
marks.
Scope of infringement of trademarks has been
widened.
Enhanced punishment for trademark offences.
Removal of mark on the ground of non-use.
Assignment of unregistered trademarks.
Amendment of Companies Act prohibiting the use of
someone else trademark as a corporate name.
Pfizer Products Inc. v. Neeraj Food
Products. (Pg. 23)
Principles behind Trademarks.
◦ Registration of TM is not absolute and but have
some restrictions
◦ Should not interfere with ordinary usage
◦ Prior user of TM must be protected against any
monopoly
◦ TM protects two major intrest (1) Comsumer’s (2)
Traders’
◦ Honest use for a long period of time is permitted
◦ TM has no meaning unless it is used in relation to
some goods
Registration of Trademark (Pg.25)
Section 18 of the Trademarks act lays down
the provisions for registration of trademark.
Section 9 and 11 lays down the conditions
where a mark cannot be registered under
the act.
Registration of TM is not necessary but it
brings various rights with it and also
enables the trader to move to court in case
of infringement of the registered trademark.
Essential Requirements for registration
(pg.26)

The mark should be capable of being represented

graphically which all the categories of mark included
in the definition of mark under S.2(1)(m) of the act
obviously satisfy.
It should be capable of distinguishing the good of one
person from that of another.
The mark is used in relation to goods or services for
the purpose of indicating or so as to indicate a
convection in the course of trade between the goods or
services, as the case may be, and some person having
the right as a proprietor or by way of permitted user to
the mark.
Essential Requirements for registration
(pg.26)

The use of the mark need not indicate any

identity of the person using the mark.
Besides this it should not be hit by the
provisions which are the grounds for
refusal of registration of the trademark,
i.e.; section 9 and 11.
Grounds of refusal of Registration
Absolute Grounds (Section 9)
◦ distinctiveness of trade mark applied for
(page30)
◦ matters of public policy (page33)
◦ Prohibition of registration of shapes which are
descriptive of the goods themselves (page36)
Relative Grounds (Section 11) (page37)
◦ Likelihood of confusion
◦ Registration by consent
◦ Unfair use of distinctive character
Passing Off (Pg.42)
ICC Development (International) Ltd. vs.
Arvee Enterprises
“nobody has any right to represent
his goods as the goods
of somebody else”
Passing Off
Passing off is not defined in the Trademark Act,
1999. It is referred to in Section 27 (2), 134 (1)
(c) and 135 of the Act.
Passing off is a common law concept which is
now applied in modern days judicial
proceedings.
It is applied to many forms of unfair trading and
unfair competition where the activities of one
person cause damage or injury to the goodwill
associated with the activities of another person.
 Elements of Passing Off action
Reckitt & Colman vs. Borden (page 48)

Classic Trinity

Goodwill Misrepresentation Damage

Elements of Passing Off action
Cadila Health Care v. Cadila Pharmaceutical Limited
(page 49)
The nature of the marks
The degree of resemblances between the marks
The nature of the goods
The similarity in the nature, character and performance of
the goods of the rival traders.
The class of purchasers who are likely to buy the goods
The mode of purchasing the goods or placing orders for
the good
Any other surrounding circumstances which may be
relevant
Infringement (Pg.56)
Section 29 of the Act deals with
Infringement of trademark, this section
specifically states various acts which
constitute infringement.
“When an unauthorized person uses a
trademark that is 'identical' or 'deceptively
similar' to a registered trademark, it is
known as infringement.”
Infringement (Pg.56)
 Unauthorized person – this means a person who is not
the owner or the licensee of the registered trademark.
 'Identical' or 'Deceptively similar '– the test for
determining whether marks are identical or not is by
determining whether there is a chance for a likelihood of
confusion among the public. If the consumers are likely
to get confused between the two marks then there is an
infringement.
 Registered Trademark – You can only infringe a
registered trademark. For an unregistered Trademark,
the common law concept of passing off will apply.
 Goods/ Services – In order to establish infringement
even the goods/ services of the infringer must be
identical with or similar to the goods that the registered
 Passing off and Infringement Differences
(pg.67)

Passing off Infringement

Action can be brought against both Action can only be bought against
registered and unregistered trademark registered trademarks

Common law remedy Statutory remedy

Reputation of the previous trader has No such requirement

to be established

Likelihood of Confusion has to be No such requirement

proved
Mark should be in use by the first No such requirement. The suit can be
trader to bring an action of passing off brought by any person who has a right
to a registered trademark
Remedies In Actions For Passing Off
And Infringement Of Trademarks

Remedies

Civil Criminal
Remedies (page70)
Section 135 of the Trademarks Act, 1999
provides that in any suit for infringement
or passing off, the court may grant the
following civil remedies-
◦ Injunction,
◦ Damages,
◦ Accounts of profit, with or without any order
for the delivery-up of the infringement labels
and marks for destruction or erasure.
Remedies (page70)
The order of injunction may be an ex-parte
injunction or an interlocutory order. Such an order
may be for any of the following purposes-
◦ For discovery of documents;
◦ Preserving of infringing goods, documents or other
evidence which are related to the subject-matter of the
suit;
◦ 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.
Criminal Remedies
Criminal remedies are available only in
an action for infringement. Action for
passing off being a tort- a civil wrong,
does not call for criminal remedies in case
of infringement of unregistered
trademark.
Penalty Ranges from imprisonment for
six months to two years and fine from
50,000 to 2 Lakh Rupees.
Penalties
 Section 103- Penalty for applying false trade mark
 Section 104- Penalty for selling goods or providing
services to which false trade mark or false trade
description is applied
 Section 105- Enhanced penalty on second or subsequent
conviction
 Section106- Penalty for removing piece goods, etc.,
contrary to section 81
 Section107-Penalty for falsely representing at rademark
as registered
 Section 108- Penalty for improperly describing a place
of business as connected with the Trademarks Office
 Section 109-Penalty for falsification of entries in the
 Loopholes in the Law (page 82)
Abuse Of Section 134 Of The Trademarks
Act 1999 By Multinational Companies
◦ Contravention under section 134 of
trademarks act and section 20 of CPC
Section 134 Of The Section 20 of CPC
Trademarks Act
Suit must be filed at at the court Suit must be filed at the court
having jurisdiction where having jurisdiction where
Plaintiff resides , works or earns •Defendant resides
profit •Works or earns profit
•Where cause of action arise
Loopholes in the Law
Smell marks not recognised (pg. 86)
Unecessary ex parte orders by court in
hastiness (pg. 87)
◦ Ramrameshwari Devi&Ors. Vs Nirmala Devi
& Ors.
Problem in “propoesd to be used clause”.
(Section 18)
Suggestion and Recommendations
Firstly, the researcher would suggest that now
the time has come to amend Section 134 of
the trademark act 1999 and insert a specific
explanation similar to that of the one under
Section 20 of CPC
Secondly the researcher would like to suggest
that, if the sound marks are recognized and
are protected under in India law, then the
smell marks should also be recognized and
should be protected under the said law.
Suggestion and Recommendations
Thirdly, Passing of exparte orders is a
prerogative of the judge. He can pass such
order if the case in hand qualifies to be one.
But experience has shown that such orders
are being passed without carefully
considering the important factors.
For registration of a trademark, evidence of
actual usage of the mark should necessarily
be filed with the trademark registry.
Conclusion
The passing-off and infringement of trademarks are
global phenomenon and our national legislations are
way behind to become ideal for the current scenario.
The passing-off and infringement of trademarks causes
loss to not only the trader but also to the consumers.
The laws relating to protection of trademarks in India
have been proved to be inadequate as mentioned in
chapter 8.
MNCs have been exploiting small traders using the
current system of Trademark Law and the proposed
recommendation of insertion of some clauses can curb
this exploitation.