Chapter – 2

Trade Mark
 History
Indian trademark law statutorily protects trademarks as per the Trademark
Act, 1999 and also under the common law remedy of passing off. Statutory
protection of trademark is administered by the Controller General of Patents,
Designs and Trade Marks, a government agency which reports to the
Department of Industrial Policy and Promotion (DIPP), under the Ministry of
Commerce and Industry.
The law of trademark deals with the mechanism of registration, protection
of trademark and prevention of fraudulent trademark. The law also provides for
the rights acquired by registration of trademark, modes of transfer and
assignment of the rights, nature of infringements, penalties for such
infringement and remedies available to the owner in case of such infringement.

RVCE IPRE 2
 History
• The Act of 1999 makes important departures
from the Act of 1958 in two important
respects:
•  Shape of goods is recognised as a trademark;
and  
• Trademarks are now granted for services also,
besides goods.

RVCE IPRE 3
 History
• Service means service of any description
offered to users. Banking, finance, insurance,
transport, energy supply, construction, hotels,
entertainment, information and broadcasting
etc. are all examples of areas where services
are offered in connection with business,
industry or commerce.

RVCE IPRE 4
 History
• The law of trademark in India before 1940 was based on the common law principles of
passing off and equity as followed in England before the enactment of the first Registration
Act, 1875.

• The first statutory law related to trademark in India was the Trade Marks Act, 1940 which had
similar provision like the UK Trade Marks Act, 1938.

• In 1958, the Trade and Merchandise Marks Act, 1958 was enacted which consolidated the
provisions related to trademarks contained in other statutes like, the Indian Penal Code,
Criminal Procedure Code and the Sea Customs Act.

• The Trade and Merchandise Marks Act, 1958 was repealed by the Trade Marks Act, 1999 and
is the current governing law related to registered trademarks. The 1999 Act was enacted to
comply with the provisions of the TRIPS. Though some aspects of the unregistered trade
marks have been enacted into the 1999 Act, but they are primarily governed by the common
law rules based on the principles evolved out of the judgments of the Courts.

Where the law is ambiguous, the principles evolved and interpretation made by the Courts in
England have been applied in India taking into consideration the context of our legal
procedure, laws and realities of India.
RVCE IPRE 5
 Current Events

Considered an important development in the Indian as well as international

trademark registration procedure, the Madrid regime would enable an applicant in India
to apply online and get trademark protection in the 90 member-nations. A Wider
protection of a trademark, single application for all Madrid member countries, single fee
for trademark application, one language a" either English or French -- speedy and cost-
effective registration process are the benefits of the Madrid Agreement Concerning the
International Registration of Trademarks.

India signed the protocol on April 8 this year, bringing the Indian trademarks system
in conformity with the Madrid Protocol. As a first step, the Indian Trademarks Act, 1999
and the Rules to the Act, were amended in 2012

Four trademark registries in India -- Delhi, Mumbai, Chennai and Kolkata a" can
now start receiving the applications for international trademarks as per Madrid Protocol
from July 8, 2013. 

RVCE IPRE 6
 Definition
"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 colours

“mark” includes a device, brand, heading, label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging or combination of colours or any combination
thereof

capable of distinguishing“…to guarantee the identity of the origin of the marked product
to the consumer or end-user by enabling him, without any possibility of confusion, to
distinguish the product or service from others which have another origin, and for the
trade mark to be able to fulfil its essential role in the system of undistorted competition
which the Treaty seeks to establish, it must offer a guarantee that all the goods or services
bearing it have originated under the control of a single undertaking which is responsible
for their quality….” Philips case [2003] RPC 2 paragraph 30.

RVCE IPRE 7
 What TM Suggest
• Identifies the product of its origin
• Guaranties its unchanged quality
• Advertises the product
• Creates an image for product

RVCE IPRE 8
Illustration of the Multifaceted Nature of
Trademark Protection

Name is
trademarked
Symbol is trademarked

Slogan is trademarked

RVCE IPRE 12-9

 Object of Trade Mark Law
• To deal with the precise nature of the rights
which a person can aquire in respect of trade
marks , the mode of acquisition of such rights,
the method of transfer of those rights to
others, the precise nature of infringement of
such rights, and the remedies available in
respect thereof.

RVCE IPRE 10
 Trade mark
What is a good trade mark ?
• Should be easy to pronounce and remember, if the mark is a word,
• In the case of device mark the device should be capable of being described
by a single word,
• Must be easy to spell correctly and write legibly,
• Should not be descriptive but may be suggestive of the quality of the goods,
• Should be short,
• Should appeal to the eye as well as to the ear,
• Should satisfy the requirements of registration,
• Should not belong to the class of marks prohibited for registration.
Invented words or original artistic devices are generally considered to be
very good trade marks.

RVCE IPRE 11
 Kinds of TM
• Trademark
A trademark includes any word, name, symbol, or device, or any combination, used, or
intended to be used, in commerce to identify and distinguish the goods of one manufacturer or
seller from goods manufactured or sold by others, and to indicate the source of the goods. In
short, a trademark is a brand name.
• Service Mark
A service mark is any word, name, symbol, device, or any combination, used, or intended
to be used, in commerce, to identify and distinguish the services of one provider from services
provided by others, and to indicate the source of the services.
• Certification Mark
A certification mark is any word, name, symbol, device, or any combination, used, or
intended to be used, in commerce with the owner’s permission by someone other than its owner,
to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy,
or other characteristics of someone's goods or services, or that the work or labor on the goods or
services was performed by members of a union or other organization.
• Collective Mark
A collective mark is a trademark or service mark used, or intended to be used, in
commerce, by the members of a cooperative, an association, or other collective group or
organization, including a mark which indicates membership in a union, an association, or other
organization
RVCE IPRE 12
Certificate marks

RVCE IPRE 13
 Exclusions from Trademark Protection

• Exclusions from Trademark Protection

– Immoral or scandalous matter
– Deceptive matter
• For example, a food company couldn’t register the name “Fresh
Florida Oranges” if the oranges weren’t from Florida.
– Descriptive market
• Marks that are merely descriptive of a product or service cannot be
trademarked. For example, if you develop a new type of golf ball,
you can’t get a trademark on the words “golf ball.”
– Surnames
• A trademark consisting primarily of a surname, such as Anderson
or Smith, is typically not protectable.

RVCE IPRE 12-14

 Categories of Mark
• Fanciful marks (prima facie- its first
encounter, first blush, or at first sight)
• Arbitrary marks
• Suggestive marks
• Descriptive marks
• Generic terms
• Trade dress

RVCE IPRE 15
 Fanciful marks
• Fanciful marks are devices which have been
invented for the sole purpose of functioning as a
trademark and have no other meaning than
acting as a mark. Fanciful marks are considered
to be the strongest type of mark. Examples of
fanciful marks are:
• EXXON
• KODAK
• XEROX
RVCE IPRE 16
 Suggestive marks
• Suggestive marks are marks that suggest a quality or characteristic of the goods and
services. Despite the fact that suggestive marks are not as strong as fanciful or
arbitrary marks, suggestive marks are far more common due to the inherent
marketing advantage of tying a mark to the product in a customer's mind. Suggestive
marks are often difficult to distinguish from descriptive marks (described below),
since both are intended to refer to the goods and services in question. Suggestive
marks require some imagination, thought, or perception to reach a conclusion as to
the nature of the goods. Descriptive marks allow one to reach that conclusion
without such imagination, thought or perception. Putting this distinction into
practice clearly is one of the most difficult and disputed areas of trademark law.
• The following marks can be considered suggestive:
• MICROSOFT (suggestive of software for microcomputers)
• NETSCAPE (suggestive of software which allows traversing the "landscape" of the
Internet)
• SILICON GRAPHICS (suggestive of graphic oriented computers)

RVCE IPRE 17
 Descriptive marks

•Descriptive marks (or more properly, "merely descriptive marks") are devices which merely
describe the services or goods on which the mark is used. If a device is merely descriptive, it is not
a mark at all, since it does not serve to identify the source of the goods or services. No trademark
rights are granted to merely descriptive marks. Misdescriptive marks are equally weak. As
explained in connection with suggestive marks above, descriptive marks are often difficult to
distinguish from suggestive marks. Suggestive marks require some imagination, thought, or
perception to reach a conclusion as to the nature of the goods. Descriptive marks allow one to
reach that conclusion without such imagination, thought or perception. Putting this distinction into
practice can be very difficult. Merely descriptive marks can be registered federally on the
Supplemental Register (see the BitLaw discussion on federal registration of trademarks for more
information).
•The following imaginary marks could be considered merely descriptive for computer peripherals:
•FAST BAUD for modems (describing the quickness of the modem);
•104 KEY for computer keyboards (describing the number of keys on a keyboard);
•LIGHT for portable computers (describing the computer's weight); and
•TUBELESS for computer monitors (even if misdescriptive for a monitor that contains tubes).

RVCE IPRE 18
 Generic terms
• Generic "marks" are devices which actually name a product and are incapable of functioning
as a trademark. Unlike descriptive marks, generic devices will not become a trademark even if
they are advertised so heavily that secondary meaning can be proven in the mind of consumers.
The rationale for creating the category of generic marks is that no manufacturer or service
provider should be given exclusive right to use words that generically identify a product.
• A valid trademark can become generic if the consuming public misuses the mark sufficiently
for the mark to become the generic name for the product. The prime examples of former
trademarks that became the generic name for a product are ASPIRIN and CELLOPHANE.
Current trademarks that were once considered to be candidates for becoming generic are
XEROX and KLEENEX. XEROX has spent a great deal of advertising money to prevent
misuse of its mark. By doing so, XEROX has likely avoiding the loss of its trademark.
• The following words and phrases can be considered generic and therefore are incapable of
functioning as a trademark:
• MODEM;
• WWW; and
• E-MAIL.

RVCE IPRE 19
 Arbitrary marks

• An arbitrary mark utilizes a device having a

common meaning that has no relation to the
goods or services being sold. Examples of
arbitrary marks include:
• APPLE (for computers)
• LOTUS (for software)
• SUN (for computers)

RVCE IPRE 20
 Trade Mark
• The new legal definition of a trade mark under the Act consists
of the shape of goods, packaging or combination of colors or any
combination thereof. A package is now protected under the Act,
which includes any case, box container, receptacle, vessel,
casket, bottle, wrapper, label, band, ticket, reel, frame, capsule,
cap, lid, stopper, and cork. Thus, the new definition of trademark
in India broadly encompasses almost all the elements of trade
dress under the US law.
• Under the Indian trademark law, any distinctive and identifying
mark, which is capable of distinguishing the goods and services
of one owner from that of another, may be utilized as Trademark
and such marks are afforded protection under the law.

RVCE IPRE 21
 Collective and Certification Marks

(1)The collective mark is owned by an association of persons not being

partnership.

(2) The collective marks belong to a group and its use thereof is
reserved for members of the group .

(3) The association may not use itself the collective mark but it ensures
compliance of certain quality standards by its members who may
use the collective mark.

(4) The primary function of a collective mark is to indicate a trade

connection with the association or organization who is the
proprietor of the mark.

RVCE IPRE 22
 Collective and Certification Marks
Sections 69 to 78 of the Act deal with registration of certification trade
mark. The purpose of a certification trade mark is to show that the goods or
services in respect of which the mark is used have been certified by some
competent person in respect of certain characteristics such as Origin, mode
of manufacture, quality etc

Section 70 of the Act makes it clear that the proprietor of a

certification trade mark should not himself carry on a trade in the
goods of the kind certified or a trade of the provision of services of the
kind certified. Besides, the certifying authority who may be an
individual or a company or association of persons should be
competent to certify the goods in respect of origin, material, mode of
manufacture or performance of services , quality , accuracy or other
characteristics.

RVCE IPRE 23
 Significance of Collective marks
• Working collectively , SMEs can benefit from the
advantages of being relatively small while at the same time
taking advantage of collective strengths. For example,
smaller companies operate without large bureaucracies
and have much more flexibility to adapt to market
conditions. Working collectively, they can also benefit from
economies of scale and broader brand name recognition in
the same manner as larger companies. SMEs in many
countries are aware of these benefits and have traditionally
grouped into federations or associations organized either
geographically or on the basis of industrial sectors.

RVCE IPRE 24
 Significance of Collective marks
• Collective marks are often used to promote products
which are characteristic of a given region. In such cases,
the creation of a collective mark has not only helped to
market such products domestically and occasionally
internationally, but has also provided a framework for
cooperation between local producers. The creation of
the collective mark, in fact, must go hand in hand with
the development of certain standards and criteria and a
common strategy. In this sense, collective marks can
become powerful tools for local development.

RVCE IPRE 25
 Attributes of an Trade Mark
The trademark,
1. Should be distinctive;
2. Should not be descriptive;
3. Should not be generic;
4. Should not be deceptive;
5. Should not hurt the religious sentiments of any class or section of the citizens
of India;
6. Should not contain scandalous or obscene matter;
7. Should not contain marks prohibited by Emblems and names (prevention
of improper use) Act, 1950;
8. Should not be the shape of goods which results from the nature of the goods;
9. Should not be identical with an earlier trademark;
10. Should not be prevented by virtue of any law and in particular the law of passing
off
11. Should not be a well known trademark.

RVCE IPRE 26
Marks constituted by three letters or numeral marks consisting of five digits
are regarded as capable of distinguishing per se. Accordingly such group of
marks is to be registered only as independent marks and not as series.

RVCE IPRE 27
 Procedure for Registration
The procedure for registration of a trademark is contained in Sections 18-24 of
Indian Trademarks Act 1999. Trademark registration includes the following steps:

• Trademark Search
• Preliminary Advice by the Registrar
• Application
• Examination
• Publication
• Opposition
• Registration
RVCE IPRE 28
 Procedure for Registration
Registration of a trademark is not compulsory. However, registered trademarks have
additional benefits when compared to unregistered trademarks. Registration of
trademarks allows the Owner of the trademarks to file infringement suits for violation of
his rights whereas the unregistered user has to search remedies in common law.

• There are totally 45 classes listed in Fourth Schedule of the Trademarks Act

• Each class provides a list of goods and services

• A trademark that is intended to be used for any goods or services has to be

registered under the class that lists such goods or services.

• Registration of a trademark in one class gives rights to the owner to prevent

others from using the same or similar trademark with any goods or services
relating to entries under that class.

• Registration of trademark in one class does not prohibit others to use or

register the mark for entries in other classes.
RVCE IPRE 29
 Procedure for Registration
Trademark Search

Trademark registration procedure starts with a 'trademark search'. A

trademark search can be done on the database at the trademark office. A
person can either perform a trademark search on his/her own by paying the
prescribed fee of Rs.400 for Fifteen Minutes or request the trademark office
for an official search by paying prescribed fee of Rs.500 per mark per class.
The official trademark search report takes a minimum period of one
month. The report identifies registered trademarks that are same or similar
as the mark for which a search is requested and gives an opinion about
possibility of getting the mark registered.

Preliminary Advice by the Registrar

If not satisfied by the Search Report an application for preliminary
advice by the Registrar shall be made in respect of any goods comprised
within any one class in the Fourth Schedule by paying prescribed fee of
Rs.1000/-.
RVCE IPRE 30
 Procedure for Registration
Application
The application may be made in the name of an individual, partners of a firm, a
Corporation, any Government Department, a Trust or joint applicants. An agent/
advocate can file application on behalf of his client who empowers him through a
power of attorney (Form TM-48) on Rs.100 Stamp Paper.
Filing
• A Trademark application has to be made on TM1 in triplicate along with five
additional representations of the Trademark for registration of single mark in
single class by paying Rs.2,500/- prescribed fee.

• In order to apply for more than one class, a Single application can be made on
TM51 in triplicate along with five additional representations by paying
prescribed fee of Rs.2,500 per class.

• To apply for more than one trademark (Series of Marks) for same class of goods, a
single application can be made on TM8 in triplicate along with five additional
representations by paying the prescribed fee per mark per class.
On filing a trademark application an application number will be allotted.
RVCE IPRE 31
 Procedure for Registration
Examination
The application is examined within one month from the date of application to check
if it meets the requirements of the Trademarks Act 1999.
Publication
If the trademark is accepted for registration, the details of the application will be
advertised in the Official Journal of trademarks within six months from the date of
acceptance of application.
Opposition
On advertisement, any person who believes that a trademark should not be registered
may oppose its registration within three months from the advertisement date
Registration
Trademarks Registry of India will then send a Certificate of Registration and record
the details of the trademark in the Register of trademarks. The trademark will be registered
from the date of filing of application, not from the date it was examined or accepted.
The term of protection of a trademark is unlimited. However, it has to be renewed every ten years
from the date of filing to keep it alive. Non-use of the trademark for a period of five years would
result in loss of the trademark.

RVCE IPRE 32
 Absolute Ground for Rejection
• A trade marks 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;

• Trade marks which consist exclusively of marks or indications which may serve in
trade, to designate the kind, quality, quantity, intended purpose, value,
geographical origin ,or the time of production of goods or of rendering of
services, or other characteristics of goods or service,

• Trade marks 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:

“Provided that, a trade mark shall not be refused registration if, before the date of
application for registration, it has acquired a distinctive character as a result of the
use made of it or is a well known trade mark”.
RVCE IPRE 33
 Section(9)(a)
(a) A description of the goods/services combined with some other noticeable but
non-distinctive element; e.g. words ending with “master” eg. “Lawn Master”
for lawn mover; “Cold master” for refrigerators etc. However, where the word
is deemed to have no direct reference (including a covert and skilful allusion)
it may be acceptable – eg. “Globe master” for cycles.

(b) A mark which appears to serve a merely decorative purpose in relation to the
goods/services concerned;

(c) The shape of goods which does not stand out sufficiently from the norm to be
distinctive, or does so in a way which fails to counter on the mark with a trade
mark character, e.g. because the unusual features of the shape serve an
aesthetic or functional purpose;

(d) A mark which is simply too insignificant to constitute or be taken to be a

trade mark for the goods/services concerned, eg colours, very simple
geometrical shapes, such as a circle;
RVCE IPRE 34
 Section(9)(a)
e) a description or slogan of an undertaking or its policies which could
equally apply to any undertaking in the field, eg “The ones you want to do
business with”;

f) a description of goods/services not included in the application but which

are so similar to the goods/services covered by the application as to deprive
the trade mark of any distinctive character for those goods/services.

g) A word, which according to its ordinary significance, is a surname or a

personal name Where the word has a better known meaning, other than as
a surname (eg. “Bull”,“Jury” etc) it may be regarded as a non-ordinary one
for being accepted for registration as a trade mark.

RVCE IPRE 35
 Section(9)
. “may serve”
The Registrar considers that the expression “may serve in trade” means that there exists a
reasonable likelihood that other honest traders will wish to use the mark in question to
designate characteristics of the goods/services

‘kind”
The expression “kind” would include the name of the goods or services claimed and any
words recognized as indicating size or type.

“Quality”
Laudatory words such as GOOD or BEST are not register able for any goods or services
since all traders should be equally free to use them in the course of advertising their
products. HIGH TECH would not be acceptable for use in connection with any technical
items, such as computer but it may be accepted for other goods e.g. foodstuff. CLASSIC
would not be acceptable for furniture or cars, but may be acceptable for medical
apparatus like scanners

RVCE IPRE 36
 Section(9)
"Intended purpose"
Words which refer directly to the use to which the goods are put or which
describe the consequences of providing the service are not acceptable. Example
are : KETTLE CLEAN for preparations for cleaning kettles

"Value"
Words or symbols which merely serve to indicate the worth, merit or importance
of the goods or services are not acceptable

RVCE IPRE 37
 RIGHTS OF THE OWNER OF THE TRADEMARKS

• An exclusive right to the use of the trademark

in relation to the goods or services in respect
of which it has been registered; if the
trademark consists of several parts, the
exclusive right pertains to the use of the
trademark taken as a whole; if the trademark
contains matter common to trade and is not of
a distinctive character, there is no exclusive
right in such parts.

RVCE IPRE 38
 RIGHTS OF THE OWNER OF THE
TRADEMARKS
• Registration entitles the proprietor to obtain relief in case
of infringement when a similar mark is used on (a) same,
or similar, goods or services, (b) dissimilar goods or
services.
• Registration forbids other persons, except the registered,
or unregistered permitted user to use the registered
trademark or a confusingly similar mark in relation to the
same goods or services, (or the some description of goods
and services) in relation to which the mark is registered.
 

RVCE IPRE 39
 RIGHTS OF THE OWNER OF THE
TRADEMARKS
• Once a trademark is registered, the same or
confusingly similar mark can not be registered for
the same or similar goods or services. In case of well-
known trademarks, it cannot be registered even for
dissimilar goods and services.
• A registered trademark shall not be used by any one
unauthorized in business papers and in advertising.
Use in comparative advertising should not be
contrary to honest practices and should not harm the
distinctive character or reputation of the trademark.
RVCE IPRE 40
 RIGHTS OF THE OWNER OF THE
TRADEMARKS
• Import of goods and services bearing a mark similar
to a registered trademark can be restricted by the
registered proprietor.
• A right holder has a right to restrain the use of his
registered trademark as trade name or part of a
trade name or name of business concern dealing in
the same goods or services.
• A registered trademark continues to enjoy all the
rights available to an unregistered mark, emerging
from common law like passing off action.
RVCE IPRE 41
 RIGHTS OF THE OWNER OF THE
TRADEMARKS
• Registration confers the right to assign or
transmit the trademark to another person by
the registered proprietor.

RVCE IPRE 42
 Exception to Rights

• Rights of the prior user

If a person A gets registration for a trademark and
uses it and another person B has been using the
trademark from an earlier time, the right of B to use
it is not affected after A’s registration, even if B had
not opposed it. However, B’s growth of business may
be affected. But if B’s business has got great
reputation, A can even be restrained from using the
trademark despite registration.
•  
RVCE IPRE 43
 Exception to Rights

• Rights to use one’s own name

Registration does not confer a right on the
proprietor to interfere with the business of
another person who is using, in a bona fide
manner, his own name, or that of his place of
business or any description of the character,
quality of goods or services.
•  

RVCE IPRE 44
 Exception to Rights

• Concurrent use
A mark which has been in concurrent use in the same
jurisdiction on the same, similar, dissimilar or different goods is
not affected by the registration of the same mark by another
person.

• It may be reiterated that there is no exclusive right (i) in parts of a

trademark and (ii) in non-distinctive or other matter common to
trade. A matter is said to be common to the trade when it is in
common use in the trade, or when it is open to the trade to use.
It could be a word or a symbol or a get-up which any trader in the
trade can use and nobody can claim as his own.

RVCE IPRE 45
REGISTRATION OF ASSIGNMENTS AND TRANSFER

• Assignment of a registered trademark may

sometimes necessitate certain alteration in the mark
such as a change in the name of the proprietor.
• As is in the case of assignment a licensing too has to
be in writing and oral licensing is no licensing.
However trademark licensed ceases to be valid if
there is no connection in the course of trade with
the registered proprietor or otherwise becomes
deceptive by the act of registered owner.

RVCE IPRE 46
 Difference between assignment and license

• There are some basic differences between

assignment and license is that assignment is a
permanent transfer where as license is a
temporary transfer. Assignment is or without
the assignment of the good will and is
preferable to have licensing with control over
the quality than to assign without good will.
License is revocable whereas assignment is
not revocable.
RVCE IPRE 47
 Case study
Applies to trade marks “which consist exclusively of marks or indications which
may serve in trade”, to designate a characteristic of the goods or services for
which registration is sought, eg the kind, quality, quantity, intended purpose,
value, geographical origin, or the time of production of goods or rendering of
service or other characteristics of the goods or service.
Case Study
1. DOUBLEMINT,(1952 case 2003).
2. POSTKANTOOR(2004).
3. WINDSURFING CHIEMSEE(1999), lake, bavaria, germany. a “synctactical
change”
4. Procter & Gamble filed an application with the Office for Harmonization in the
Internal Market (OHIM) on April 3, 1996, for registration of 'BABY-DRY as a
community trade mark for disposable diapers. On January 29, 1998, OHIM's
examiner refused the application.

RVCE IPRE 48
 Case study
Philishave triangular shaver Vs Remington consulted solicitors :-
Wednesday 19 June 2002
The European court of justice yesterday cleared up a long standing legal
uncertainty - the extent to which a product's shape qualifies for trademark
protection. A nine year battle to stop competitors marketing triple-headed
rotary shavers ended in defeat for the Dutch based electronics company
Philips. The court in Luxembourg ruled that design features which are aimed
solely at achieving a technical result - as in the case of the rotary shaver -
cannot be registered as a trademark.

RVCE IPRE 49
 Geographical names

The name of a place applied in relation to goods/services will prima facie be

taken to indicate their origin, and hence non-distinctive . The principles applied to
registration of geographical names are the same as those applicable for registration of
descriptive words

Name of places with populations of less than 5000 in India will prima facie be
acceptable. However if the location covers a large area having a reputation in respect of
the goods or service, the application may attract objections.

In the case of overseas names, the location is considered more important than size.

Name of rivers, mountains, seas, lakes, etc will be considered prima facie
acceptable in respect of goods, not associated with the geographical feature.

RVCE IPRE 50
 Geographical names used fancifully
Geographical names, used in a fanciful manner, such as NORTH POLE or
MOUNT EVEREST for bananas, which are not likely to be taken as
indicating the origin of the goods , can be accepted.

The names of rivers, seas , lakes and mountains etc. are usually accepted
prima-facie for goods which are not associated with these geographical
features . However, “Ganga” or “Kaveri”, the name of rivers, which are also
better known personal names, can be registered only on the basis of acquired
distinctiveness.

Towns with company names

In rare instances, applicants may be able to show that they established
their business at a particular location and that subsequently a town grew up
around the business and adopted the same name. Any reputation which the town
has in respect of the products concerned originates from the business . In such
cases prima facie acceptance is normally possible for such goods. For example
TATANAGAR for steel.
RVCE IPRE 51
 Case study
Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938), is a United States Supreme Court case in
which the Court ruled that the Kellogg Company was not violating any trademark or unfair competition
laws when it manufactured its own Shredded Wheat breakfast cereal, which had originally been
invented by the National Biscuit Company (later called Nabisco)

Kellogg's version of the product was of an essentially identical shape, and was also marketed as
"Shredded Wheat"; but Nabisco's patents had expired, and its trademark application for the term
"Shredded Wheat" had been turned down as a descriptive, non-trademarkable term

The complaint about the picture was based on trademark law; the other two complaints were that
Kellogg's was fraudulently trying to "pass off" its cereal as Nabisco's. Nabisco had previously failed in
its attempt to register "Shredded Wheat" as a trademark, as the U.S. Patent and Trademark Office had
rejected the registration, as descriptive.

On the protection of the cereal's shape, the Court decided that the shape was functional and that
there was a right to copy it after its patent expired. On the picture of the two shredded wheat biscuits
in the bowl of milk, the Court noted that "the name Kellogg was so prominent on all of the
defendant's cartons as to minimize the possibility of confusion. On the use of the term "Shredded
Wheat", the Court ruled that the term was generic and not trademarkable; and dismissed a claim by
Nabisco that it had acquired a "secondary meaning" under case law.
RVCE IPRE 52
 Case study
Reckitt, sold lemon juice under the name "Jif Lemon" which came in plastic yellow
container that was shaped like a lemon. Borden, a competitor, started to produce lemon
juice in a similar lemon-shaped plastic container that was only slightly larger with a
flattened side. Reckitt sued Borden for passing off their product as Jif Lemon juice. At
trial the Court found in favour of Reckitt, which was subsequently upheld at the Court of
Appeal.(1990)

RVCE IPRE 53
 Color Marks
A color trademark is a non-conventional trademark where at least one color is used
to perform the trademark function of uniquely identifying the commercial origin of
products or services.

In recent times colors have been increasingly used as trade marks in the
marketplace. However, it has traditionally been difficult to protect colors as trademarks
through registration, as a color as such was not considered to be a distinctive 'trademark'.
This issue was addressed by the World Trade Organization Agreement on Trade-Related
Aspects of Intellectual Property Rights, which broadened the legal definition of
trademark to encompass "any sign...capable of distinguishing the goods or services of
one undertaking from those of other undertakings

RVCE IPRE 54
 Domain Names
It has been fairly well settled that domain names are neither automatically
eligible nor ineligible for registration as trade marks. The key question is whether
the designation put forward for registration has the ability to function not simply as a
domain name , but also as a trade mark for goods or services of the kind specified by
the applicant.

For assessing distinctiveness of such trade marks, where the mark is not prima
facie distinctive , the applicant may submit evidence of factual distinctiveness. If such
evidence shows goods or services being offered for sale under the mark is likely to
constitute trade mark use, and may be sufficient to show that the same has acquired a
distinctive character as a trade mark.

Use of the mark as a domain name will not assist unless the evidence shows that
the relevant goods/services have been offered for sale under the domain name.

RVCE IPRE 55
Satyam Infoway Ltd. v. Sifynet Solutions Pvt.
Ltd.
The appellant in the Supreme Court action, Satyam Infoway Ltd., alleged that the
respondent, Sifynet Solutions Pvt. Ltd., had intentionally registered and operated a
domain name that was confusingly similar to one owned by Satyam Infoway. Satyam
Infoway claimed that it had in 1999, registered several domain names pertaining to its
business: sifynet.com, sifymall.com, sifyrealestate.com.It submitted that the word
"Sify" – which was an amalgam of elements of its corporate name "Satyam
Infoway" – was a "fanciful" term, and that it had further garnered substantial goodwill
in the market. Meanwhile, Sifynet Solutions had started using the word "Siffy" as part
of the domain names under which it carried on internet marketing (namely
siffynet.com and siffynet.net).

Satyam Infoway alleged that Sifynet Solutions was attempting to pass off its
services as those belonging to Satyam Infoway by using a deceptively similar word as
part of its domain name.

Sifynet Solutions contended that unlike a trade mark, the registration of a domain
name did not confer an intellectual property right in the name. It averred that a domain
name is merely an address on the computer, which allows communications from the
consumers to reach the owner of the business, and confers no comparable property
RVCE IPRE 56
rights in the same.
 Satyam Infoway Ltd. v. Sifynet Solutions Pvt.
Ltd.
Because of a lacuna in the intellectual property laws of India, there was no law
which specifically addressed disputes relating to domain names. Therefore, members of
the Internet community asked the courts to apply trade mark law as an effective avenue of
redress for their disputes. The High Court responded and held that domain names could
be adequately protected under the doctrine of passing off referred to in the Indian law of
trade marks.

This doctrine was applied to resolve domain name disputes in Rediff Communication
Ltd. v. Cyberbooth & Anr. (AIR 2000 Bombay 27), Yahoo Inc. v. Akash Arora [1999 PTC
(19) 201], Acqua Minerals Ltd. v. Pramod Borse & Anr. [2001 PTC 619 (Del)], Dr.
Reddy's Laboratories Ltd. v. Manu Kosuri [2001 PTC 859 (Del)].

RVCE IPRE 57
 Satyam Infoway Ltd. v. Sifynet Solutions Pvt.
Ltd.
Sifynet Solutions appealed to the Karnataka High Court, which heard the case.
The High Court based its decision on a consideration of where the balance of
convenience lay. The High Court stated that Sifynet Solutions had already invested
heavily in securing a customer base for the business (about 50,000 members), and
would consequently suffer immense hardship and irreparable injury if the court found
in Satyam Infoway's favour. It noted that the business that the two parties were
involved in were disparate, and therefore there was no possibility of the customers
being misled by similar domain names.Further, since Satyam Infoway also had that
name to use in trade, the High Court believed that it would not cause them considerable
hardship to deny the temporary injunction.

RVCE IPRE 58
 Satyam Infoway Ltd. v. Sifynet Solutions Pvt.
Ltd.
The Supreme Court, through a bench comprising Justices Ruma Pal and P.
Venkatarama Reddi, set aside the decision of the High Court, and ruled in favour of
Satyam Infoway. It declared that domain names are subject to the regulatory framework
that is applied to trade marks (i.e. the Trade Marks Act, 1999). The court stated that
though there is no law in India which explicitly governs the regime of domain names,
this state of affairs does not foreclose protection for domain names under the aegis of
the Trade Marks Act. Thus, the court determined that domain names are protected under
the law relating to passing off as delineated in the Trade Marks Act.

RVCE IPRE 59
 Rights Conferred By Registration
(1)Subject to the other provisions of this Act, the registration of a trade mark
shall, if valid, give to the registered proprietor of the trade mark the exclusive
right to the use of the trade mark in relation to the goods or service in respect of
which the trade mark is registered and to obtain relief in respect of infringement
of the trade mark in the manner provided by this Act.

(2) The exclusive right to the use of a trade mark given under sub-section (1)
shall be subject to any conditions and limitations to which the registration is
subject.

(3) Where two or more persons are registered proprietors of trade marks, which
are identical with or nearly resemble reach other, the exclusive right to the use
of any of those trade marks shall not be deemed to have been acquired by any
one of those persons as against any other of those persons merely by
registration of the trade marks but each of those persons have otherwise the
same rights as against other persons

RVCE IPRE 60
 Rights Conferred By Registration
Registration of a trademark by itself does not create an absolute right in the
owner. The rights as are acquired by a person under the common law on account
of priority in adoption and use are much superior to that of a person who may
acquire registration of an identical mark prior in point of time.

The goods that are cognate or allied in their nature and character on account
of having common trade channel, class of purchasers or overlapping in business
activities are considered as the goods of same description.

RVCE IPRE 61
 Assignment of Trade Marks
The assignment of the trademark leads to a change in the ownership of the mark.
• Complete Assignment to another entity
• Assignment to another entity but with respect to only
some of the goods/ services
• Assignment with goodwill
• Assignment without goodwill

In many jurisdictions like United States, assignment of mark without goodwill is

not allowed at all. India on the other hand allows assignment without goodwill.

RVCE IPRE 62
 Assignment of Trade Marks
Restrictions
Restriction on assignment that results in the creation of exclusive rights in
more than one persons with respect to the same goods or services, or for same
description of goods or services or such goods or services as associated with
each other.

Restriction on assignment that results in different people using the

trademark in different parts of the country simultaneously.

RVCE IPRE 63
 Licensing of Trade Marks
• Trade mark license is an agreement between
the registered proprietor of the trade mark
(licenser) and another person (licensee),
authorizing the licensee to use the trade mark
in course of trade, against the certain payment
of royalty to the licenser.

RVCE IPRE 64
 Licensing of Trade Marks
Licensing of Trade Marks in India is permitted under the Trade Marks Act, 1999,
where the proprietor of a trade mark may, license the rights in the trade mark to a third
party, thereby permitting the third party to use the trade mark in the course of trade. The
terms license or licensing is not mentioned anywhere in the Act but, instead, the term
registered user is used. The word licensee is, however, found mentioned on two
occasions

Recordal of the Registered User in India is voluntary but it is advisable that

the registered agreement be registered with the Registrar of Trade Marks. The
registered proprietor and the proposed registered user have to jointly apply in the
prescribed manner, to the Registrar, enclosing with the application the written
agreement between them and an affidavit of the registered proprietor or a
person authorized by him, giving particulars of the relationship between them
including the degree of control by the proprietor.

The application for recordal of the registered user in India should be

made within six months from the date of the agreement.

RVCE IPRE 65
 Licensing of Trade Marks
Where a trade connection continues to exist between the goods and
the proprietor of the mark, the goodwill accruing there from will belong to
the licensor. This connection and the accruing goodwill can be maintained
by the licensor by adopting appropriate trade mark signifiers like quality
control, etc. If the licensor uses the trade mark as a commodity without
establishing a trade connection between the licensor and the products, the
goodwill may accrue to the licensee who may be able to challenge the
rights of the licensor, as happened in the case of Barcamerica International
USA Trust v. Tyfield Importers Inc.

RVCE IPRE 66
 Well-known Trademark and Trans Border
Reputation
Trans Border Reputation concept was recognised and discussed by the Apex Indian
Court in the landmark case of N. R. Dongre v. Whirlpool (1996) 5SCC 714. The
Trademark “WHIRLPOOL” was held to have acquired reputation and goodwill in
India. The Mark “WHIRLPOOL” was also held to have become associated in the
minds of the public with Whirlpool Corporation on account of circulation of the
advertisements in the magazines despite no evidence of actual sale. Hence, the
trademark WHIRLPOOL was held to have acquired trans-border reputation which
enjoys protection in India, irrespective of its actual user or registration in India.

RVCE IPRE 67
 Case study
A Pune court recently ordered in favor of M/s Finolex Cables Limited located on
Mumbai-Pune Road by restraining Mumbai-based M/s Finolex Tubes and Fitting
located at Khetwadi from using the trademark of Finolex Cables Limited and paying
the company Rs 1 lakh as damages to the company.

'Hamara Bajaj' produced by actor John Abraham's film production company, J.A.
Entertainment Pvt. Ltd. Bajaj Auto Ltd.

In 2010, the producers of the blockbuster movie, Dabangg, ran into trouble with
Emami Ltd. owing to its use of the name of one of Emami's products, Zandu balm in
an item song in the movie.

Consim Info runs a number of portals including a popular matrimonial portal

called BharatMatrimony.com. The company also targets different communities and
castes in India with matrimonial portals designed for each of these groups. When a user
does a search on Google for BharatMatrimony.com or related matrimonial sites of the
company, the user is served up advertisements of its competitors.

RVCE IPRE 68
 Trademark and Ecolabel

• "Ecolabelling" is a voluntary method of environmental

performance certification and labelling that is practised
around the world. An "ecolabel" is a label which identifies
overall, proven environmental preference of a product or
service within a specific product/service category.
• Eco-labels are affixed to products that pass eco-friendly
criteria laid down by government, association or standards
certification bodies. The criteria utilise extensive research
based on the product's life cycle impact on the
environment.

RVCE IPRE 69
 Main features of Ecolabel
• Eco-labels differ from green symbols and environmental claims in that the
latter are unverified and created by the manufacture or service provider.
Products awarded an eco-label have been assessed and verified by an
independent third body and are guaranteed to meet certain environmental
performance requirements.
• Eco-labels may focus on certain environmental aspects of the product, eg
energy consumption, water use, source of timber, etc, or they may
encompass the multiple environmental aspects, eg BREEAM, Blue Angel,
etc.
• Eco-labels are usually funded and backed by the national government, but
administered by an independent body. Compliance with eco-label
requirements is voluntary, but offers industry a competitive advantage both
domestically and internationally, as well as demonstrating good
environmental performance. Consumers also benefit from eco-labeling
schemes through education, and the ability to compare prices and
environmental performance of products. Eco-labeling can have
implications for trade and can influence the design and manufacture of
products. RVCE IPRE 70
 Trademark and Ecolabel
• Ecolabelling can be based on two types of criteria: product
related, and production-related.
• Product-related criteria are related to the environmental impact
of products only.
• Production-related criteria are related to process and production
methods (PPMs) which cover the environmental impact of an
entire production process.
• Developing eco-label is a collaborative attempt of government
industry, and non-governmental organizations (NGOs) for a
particular set of objectives to influence certification system and
actions of other stakeholders such as interest groups and industry
associations etc.
RVCE IPRE 71
 Trademark and Ecolabel
• Government is perceived to be significant in
(i) ensuring that businesses are run as per relevant
ISO quality standards and environmental reports
are published on the company website,
(ii) manufacturers disclose key product ingredients
and their environmental impact,
(iii) providing and promoting certification services,
(iv) ensuring social welfare being promoted by
certification, and
(v) preventing consumers from misleading claims.
RVCE IPRE 72
Role of different entities in eco-labeling implementation in India

• The proposed framework has four entities: consumers,

government and certification agencies, non- government
organizations and industry. Their individual roles and
significance are explained:
• Consumers – The role of eco-label in influencing consumer
purchase decisions is influenced by their environmental
consciousness and environmental knowledge which lead to
recognizing the importance of eco-labels and reading the
information offered by eco-labels (D'Souza et al., 2006).
Consumers’ trust on eco-labels and the environmental
information provided by them as well as personal benefits
(i.e. health and economic benefits) are also significant in
influencing their purchase decisions.
RVCE IPRE 73
• Government and certification agencies – The Government
of India has a comprehensive system of product certifications
managed by various governmental agencies and governed by
parliamentary laws.
• Most of the product certifications in India are governed by the
Bureau of Indian Standards (BIS). Some of them are
mandatory for a product to be placed in Indian market, such as
ISI mark (industrial products), FPO mark (fruit products),
Agmark (agricultural products), Non Polluting Vehicle mark
(motor vehicles), and BIS hallmark (jewellery) etc.
• And, some of them hold only an advisory status, such as Eco-
mark. The objective of such marks is to ensure quality
standards of the products, and to promote resource efficiency
and sustainable consumption and production.
RVCE IPRE 74
• Non-Government Organizations – They work towards
creating awareness about eco-labeling schemes at consumer as
well as industry levels. Their programs also intend to increase
cooperation between India’s Eco-mark and other eco-labels
through the development of a roadmap towards mutual
recognition of eco-labeling schemes in international trade.
• These programs are organized in collaboration with United
Nations Environment Programme (UNEP) and supported by
industrial bodies such as Confederation of Indian Industry
(CII) and Federation of Indian Chambers of Commerce and
Industry (FICCI).

RVCE IPRE 75
• Industry – Industry bodies in India have been working
towards creating awareness about eco-labels and setting
industry standards. Collaborating with sectoral ministries,
manufacturer associations have been facilitating and
encouraging Indian manufacturers to respond to green
markets.
• For example, the Textiles Committee established under the
Ministry of Textiles has been facilitating manufacturers to
adopt environmentally friendly manufacturing processes
and product designs to cater to developed markets.

RVCE IPRE 76
• Eco-labels may be national (eg Japan's Eco
Mark), regional (eg EU Eco-label) or
international (eg International Energy Star).

RVCE IPRE 77
Examples

RVCE IPRE 78
 Infringement
Under the Trade Marks Act, both civil and criminal remedies are simultaneously
available against infringement and passing off.

A trademark is said to be infringed by a person, who, not being a permitted user, uses
an identical/ similar/ deceptively similar mark to the registered trademark without the
authorization of the registered proprietor of the trademark. However, it is pertinent to note
that the Indian trademark law protects the vested rights of a prior user against a
registered proprietor which is based on common law principles.

Passing off is a common law tort used to enforce unregistered trademark rights. Passing
off essentially occurs where the reputation in the trademark of party A is misappropriated
by party B, such that party B misrepresents as being the owner of the trademark or
having some affiliation/nexus with party A, thereby damaging the goodwill of party A.
For an action of passing off, registration of a trademark is irrelevant.

RVCE IPRE 79
 Remedies for infringement of Trademark

• Civil remedies
• Criminal remedies
• Administrative remedies.

RVCE IPRE 80
 Relief granted by Courts
Suits for Infringement and Passing off
The relief which a court may usually grant in a suit for infringement or passing
off includes permanent and interim injunction, damages or account of profits, delivery
of the infringing goods for destruction and cost of the legal proceedings
The order of interim injunction may be passed ex parte or after notice. The Interim
relief's in the suit may also include order for:
• Appointment of a local commissioner, for search, seizure and preservation of
infringing goods, account books and preparation of inventory, etc.
• Restraining the infringer from disposing of or dealing with the 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.

Offences and Penalties

In case of a criminal action for infringement or passing off, the offence is
punishable with imprisonment for a term which shall not be less than six months but
which may extend to three years and fine which shall not be less than INR 50,000 but
may extend to INR 200,000.
RVCE IPRE 81
 Passing-Off
• “nobody has any right to represent his goods
as the goods of somebody else”
• In case of passing off, there is no statutory
protection and is completely based on
goodwill and reputation of the business.

RVCE IPRE 82
 Passing-Off
• The act of passing off one’s good in another name is
close to the act of infringement of trademark. Passing
off is the tort of using the trademarks, trade names
and such other descriptions to pass off one’s own
good or services as those originating from the
registered proprietor.
• The rights available against passing off aren‟t the
same as those against infringement, since the
remedies available in case of passing off are under
the umbrella of Common Law.
RVCE IPRE 83
 Passing-Off
• In case of Passing off, no statutory right of the
owner is breached, where as the only test to
determine passing off action is whether the
goodwill of the owner has been affected or
not.
• Passing off is nothing but an encroachment on
the goodwill built by the affected party.

RVCE IPRE 84
 Passing-Off
The few factors that needs to be taken into account while deciding a passing off
case.
• The nature of marks, that is both in case of word and label marks.
• The degree of resemblance between the marks, phonetically similar and
hence similar in idea.
• The similarity in nature, character and performance of goods.
• The nature of goods in respect of which they are used as trademarks.
• The mode of purchasing the goods or placing orders for the goods.
• The importance to reputation acquired by a trade name was held in the case
of Teju Singh v. Shanta Devi. The Court held that the goodwill acquired and
the reputation owned by a trade name was important tests to be applied in the
case of passing off.

RVCE IPRE 85
 Essential characteristics of a passing off :

(a) Misrepresentation,
(b) Made by a person in the course of trade
(c)To prospective customers of his or ultimate
consumers of goods or services supplied by him
(d)Which is calculated to injure the business or
goodwill of another trader
(e)Which causes actual damage to a business or
goodwill of the trader

RVCE IPRE 86
 Passing-Off
• The registration of trademark is irrelevant in case of passing
off action. Priority is given more to adoption and use of the
trade mark and not on the registration.
• Generally, protection against passing off is granted where
the parties are engaged in the trade of the same or similar
products or closely related products and services.In an
action for passing off, the motive of the defendant is not
important.
• Once the plaintiffs establish Reputation , no further proof of
fraudulent intention on the part of the defendants is required
to be proved or established.

RVCE IPRE 87
 Passing-Off
• Misrepresentation and loss or damage of
goodwill is also essential elements for a
successful passing off action.
• The relief available in suits for passing off
includes an injunction restraining further use
of the mark, damages, an account of profits, or
an order for delivery of the infringing labels
and marks for destruction or erasure

RVCE IPRE 88
Tests to Determine Entitlement to Injunction

• Whether the words used in the trade name of the

plaintiff were descriptive words of common use
or have they come to acquire a distinctive or
secondary meaning in connection with the
plaintiff‟s business.
• Whether there is a reasonable probability that the
use of the name adopted by the defendant was
likely to mislead the customers of the plaintiff by
reason of similarity of the two trade names.
RVCE IPRE 89
Distinction between Infringement Action and Passing Off
• Passing Off is a common law remedy, whereas an
infringement is an action for deceit.
• Statutory remedy is the right kind of relief available in the
case of registered proprietor of a registered trademark,
whereas the right available in case of an unregistered
trademark is passing off.
• The use of the mark by the defendant of the trademark of the
plaintiff is not essential in any action for passing off, but it is
sine quo non in case of infringement. An action for
infringement takes place when the defendant has used the
mark of the plaintiff
• The defendant may escape liability if he can show that the
added matter is sufficient to distinguish his goods from
those of the plaintiff.
RVCE IPRE 90
 Jurisdiction
• One of the most important practical benefit given under
Section 134 of the Trade Marks Act, 1999 is that a suit for
infringement can also be instituted before a District Court /
High Court (enjoying Ordinary Original Civil jurisdiction such
as High Court of New Delhi, Mumbai, Kolkata or Chennai),
within the local limits of whose jurisdiction, at the time of the
institution of the suit, the person instituting the suit, actually
and voluntarily resides or carries on business or personally
work for gain. The person includes the registered proprietor
and the registered user. On the other hand the suit for passing
off can only be instituted before a District Court, within the
local limits of whose jurisdiction The Defendant is residing,
working for gain or carrying on its business; or the cause of
action has arisen.
RVCE IPRE 91
Amul wins trade mark case in Gujarat High Court, (Sep 24, 2007)

• Amul has won the trade mark case in Gujarat High Court and no
one else can use it.
• The Kaira District Co-operative Milk Producers Union Ltd. and
GCMMF had filed trade mark infringement cases, against two local
shop owners : AmulChasmaghar and its partners and Amul Cut
Piece Stores in the District Court, Anand.
The District Court, Anand passed an order dated 25 April 2007,
ruling that it was a clear case of infringement and restrained the
two from using the Amul trademark.
•  AmulChasmaghar had challenged this interim injunction in the
Gujarat High Court. The Gujarat High Court ruled the decision in
favor of Amul, terming the order passed by the trial court as true,
correct, legal and in consonance with the facts of the case, as well
as in accordance with the provisions of the Trade Marks Act 1999.
RVCE IPRE 92
 Beecham Group Plc. vs. S.R.K. Pharmaceuticals 2004 (28) PTC391
(IPAB)

• The appellant was using the mark 'AMOXIL' in India since 1990.
This mark was registered in India in 1972 in Class 5 in respect
of Pharmaceutical goods. The respondent started using the
mark 'LYMOXYL' in India from 1985. The respondent filed the
application for registration of the mark in 1987 in India in the
same class with respect to similar goods.
• The appellant brought an action against the respondent stating
that the mark is deceptively similar. The only difference
between the two marks is in the prefix 'LY' and 'M'. The rival
marks are phonetically and deceptively similar and the goods
are pharmaceutical goods under Sec. 12(1) of the Act.

RVCE IPRE 93
• The Intellectual Property Appellate Board
(IPAB) held that the respondent dishonestly
adopted the mark by copying it from the
appellant who had got the mark registered
long ago. Hence the respondent cannot claim
honest concurrent use, by virtue of earlier
use. The Appellate Board delivered a
judgment prohibiting registration of the Trade
Mark 'LYMOXYL'.
RVCE IPRE 94
 Ranbaxy Laboratories Limited vs. Anand Prasad & 4 Others 2004 (28) PTC 438
(IPAB)

• The appellant was the registered proprietor of the mark

'FORTWIN' and had been using the mark since 1975. The
respondent applied for registration of the mark 'OSTWIN'.
Both the marks related to pharmaceutical compositions in
respect of treatment of bones.
• The appellant brought an action against the respondent
stating that the mark is deceptively similar. The IPAB held
that the prefixes are 'FORT' and 'OST' while both the marks
end with the suffix 'WIN'. It was further held that since the
rival goods are also pharmaceutical goods it might lead to
serious consequences due to deception or confusion in the
minds of the public. Hence on the possibility of harm being
caused to common person the appeal was allowed.
RVCE IPRE 95
Wyeth Holdings Corp. &Anr. vs. Sun Pharmaceuticals Industries Ltd. 2004 (28)
PTC 423 (Bom)

• In this case the plaintiff whose former name

was American Cynamid Company and who
was the proprietor of the trademark
'PACITANE' registered the mark in Class 5 of
Pharma goods. The respondent was using the
mark 'PARKITANE' with respect to similar
goods. The plaintiffs filed a suit for
infringement and passing off and sought
various reliefs including interim injunction
against the defendant for using the mark
'PARKITANE'. RVCE IPRE 96
• The Court held that in both the cases the goods are similar, being
pharmaceutical preparations for treatment of Parkinson's disease, the
customers buying these goods are the same and the trade channels are
the same. Since the defendants did not show any search of the Register
before adopting the impugned mark, prima facie adoption of the mark
was not honest. Further, the Court held that despite protests, if the
defendants have chosen to continue to sell the products, it cannot be said
to be acquiescence by the plaintiff. Therefore the Court held that
injunction is to be granted in favour of the plaintiff.
•  The Court further held that in case of pharmaceutical products, the test
is of possibility of confusion and not probability of confusion. The
plaintiffs have been in the field since 1950 and as such the balance of
convenience is in their favour. The Court granted injunction in favour of
the plaintiffs.

RVCE IPRE 97
 Computer
It further introduced explicit exclusions from patentability with regard to
Computer Related Inventions (CRIs) under
section 3:
(k) a mathematical or business method or a computer programme per se or
algorithms;
(l) a literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever including cinematographic works and television
productions;
(m) a mere scheme or rule or method of performing mental act or method of
playing game;
(n) a presentation of information;”
The exclusions under section 3 (k)5 were amended through the Patents
(Amendment) Ordinance, 2004 (No. 7 of 2004) as:
3(k) a computer programme per se other than its technical application to
industry or a combination with hardware;
3(ka) a mathematical method or business method or algorithms;

RVCE IPRE 98