By,

Ms Vintee Mishra
Brain League IP Services

Copyright Brain League IP Services Pvt. Ltd. 2009

RISKS
INFRINGEMENT
PASSING OFF
SUIT FOR THREAT OF LEGAL PROCEEDINGS
AND TRADE LIBEL
WHAT CONSTITUTES
INFRINGEMENT

IDENTICAL OR DECEPTIVELY SIMILAR

MARKS
COVERED GOODS AND SERVICES
USE OF MARK IN COURSE OF TRADE
USE OF MARK IN MANNER OF TRADEMARK
PERMITTED USER

MAGIC V MAGIX FOR FANS

INFRINGEMENT CONTI…
IDENTICAL MARK - SIMILAR GOODS AND
SERVICES
MATRIX V MATRIX FOR MOUSE AND KEYBOARD

SIMILAR MARK – IDENTICAL OR SIMILAR

GOODS AND SERVICES
MAGIC V MAZIX FOR FANS

IDENTICAL MARK – IDENTICAL GOODS AND

SERVICES
MATRIX V MATRIX FOR COMPUTERS

LIKELIHOOD OF CONFUSION/ASSOCIATION WITH TRADEMARK

NEW HOPE FOOD INDUSTRIES V.
PIONEER BAKERIES
NEW HOPE - CONFECTIONARY ITEMS AND
BAKERY PRODUCTS
TRADE NAMES AND MARKS “MILKA” AND
“MILKA WONDER CAKE”

PIONEER-SAME BUSINESS
TRADEMARK “MILKA”

INFRINGEMENT?
YES
 TEST OF INFRINGEMENT
DECEPTIVE SIMILARITY

2 IDENTICAL TRADEMARKS –INFRINGEMENT

NOT IDENTICAL – RESEMBLE-CAUSE CONFUSION
ONUS – PLAINTIFF
PURCHASERS LIKELY TO DECEIVE
COMPARE ESSENTIAL FEATURES
MARK AS A WHOLE
RESEMBLACE – PHONETIC OR VISUAL

XEROX V ZERRROGZZ
MEDILINE HEALTH CARE PVT. LTD. V.
SHRI PAWAN KUMAR VARSHNEY,
TRADING AS SALAKA PHARMA CARE PVT.
LTD
APPLICANT’S TRADEMARK ‘ANTIFLAM’
RESPONDENT TRADEMARK ‘NT FLEM’
PHARMA PRODUCTS
INFRINGEMENT?
YES

THE COURT HELD SINCE THE GOODS ARE

SAME, RIVAL MARKS PHONETICALLY
SIMILAR AND RESPONDENT SUBSEQUENT
USER, THEREFORE HELD INFRINGEMENT
INFRINGEMENT CONTI…
DILUTION
MARK IDENTICAL OR SIMILAR –TRADEMARK ®
GOODS AND SERVICES NOT SIMILAR
TRADEMARK ® - REPUTATION IN INDIA
USE WITHOUT DUE CAUSE
USE- UNFAIR ADVANTAGE, DETRIMENTAL TO
DISTINCTIVE CHARACTER AND REPUTE –
TRADEMARK ®

BARVEE FOR DOLLS – EARLIER MARK

V
BARWE FOR BAR AND RESTAURANTS
 MEANING OF REPUTATION
SUFFICIENT KNOWLEDGE OF EARLIER MARK EXIST TO
MAKE ASSOCIATION
KNOWN TO SIGNIFICANT PART OF PUBLIC
SUFFICIENT TO BE KNOWN IN ONE AREA
CONSIDER MARKET SHARE, GEOGRAPHICAL EXTENT,
DURATION OF USE AND SIZE OF INVESTMENT
ROLEX SA V. ALEX JEWELLERY
“ROLEX” REGISTERED FOR WATCHES IN AROUND
THE WORLD INCLUDING INDIA.

DEFENDANT ALSO STARTS SELLING JEWELLERY

UNDER THE NAME OF “ROLEX” IN INDIA.

DILUTION?
YES

HELD USE WITHOUT DUE CAUSE AND

DEFENDANT TAKING UNFAIR ADVANTAGE OF
PLAINTIFF’S BUSINESS WHICH WAS DETRIMENTAL
TO ITS DISTINCTIVE CHARACTER AND REPUTE
 INFRINGEMENT CONTI…
USE TRADEMARK ® AS-
TRADE NAME OR PART OF IT
NAME OF BUSINESS OR PART OF IT
SAME CLASS OF GOODS AND SERVICES

AFFIX TO GOODS OR PACKAGE

EX-IM GOODS UNDER THE MARK
BUSINESS PAPER OR ADVERTISING
OFFER FOR SALE OR ACTUAL SALE, MARKETS, STOCKS GOODS
AND SERVICES
APPLIED TO MATERIAL FOR PACKAGING OR LABELLING
COMPARATIVE ADVERTISEMENT - DISPARAGEMENT
INFRINGEMENT BY ADVERTISING
COMPARATIVE ADVERTISING
DECLARE OWN GOODS AS BEST
DECLARE OWN GOODS BETTER THAN
OTHERS, EVEN IF UNTRUE
COMPARE ADVANTAGES OF OWN GOODS
WITH OTHERS
NOT SLANDER OR DEFAME

DISPARAGEMENT
FALSE OR MISLEADING STATEMENT
STATEMENT CAPABLE OF DECEPTION
DECEPTION INFLUENCE PURCHASING DECISION
LOCALITY OF INFRINGEMENT
TERRITORIAL RIGHT

TRADE MAY NOT OVERLAP

USE OF OFFENDING MARK - MUST IN INDIA

IMPORT FOR RE-EXPORT SUFFICIENT USE

USE OF OFFENDING MARK – IN COURSE OF

TRADE
ACTS NOT CONSTITUTING
INFRINGEMENT

HONEST PRACTICES EG – LIVTEC V LIVDEE

NO UNFAIR ADVANTAGE DETRIMENTAL TO

DISTINCTIVE CHARACTER OR REPUTE. EG –
COMPARATIVE ADVERTISEMENT

DESCRIPTIVENESS. EG – COOLAIR FOR AIR

CONDITIONERS
ACTS NOT CONSTITUTING
INFRINGEMENT
USAGE SUBJECT TO CONDITIONS AND
LIMITATIONS

RESALE OF GOODS OR SUPPLY OF SERVICES

ON WHICH MARK APPLIED AND NOT REMOVED
EG – PARALLEL IMPORTATION
ACTS NOT CONSTITUTING
INFRINGEMENT

USE ON PARTS OR ACCESSORIES EG – CAR AND

CAR ACCESSORIES

LAWFUL ACQUISITION OF GOODS WITH

TRADEMARK
 MCDONALDS V MCCURRY
MCDONALDS -RIGHT CLAIMED OVER THE WORD “MC”
SIMILAR SERVICES- BOTH IN RESTAURANT BUSINESS
MCCURRY - “MC” / “MAC” IS A COMMON NAME OF A PERSON,
USED COMMONLY IN BUSINESS ACROSS VARIOUS DOMAINS
INFRINGEMENT?
NO

COURT HELD HONEST PRACTICE. NOT TAKING UNFAIR

ADVANTAGE.
DEFENCES
NO TITLE TO SUE
INVALID REGISTRATION OF TRADEMARK
ACT DOES NOT CONSTITUTE
INFRINGEMENT
CONCURRENT REGISTRATION
PRIOR USER
INNOCENT INFRINGEMENT
LONG DELAY, LACHES AND ACQUIESCENCE
PASSING OFF
GENERAL PRINCIPLES
MISREPRESENTATION
COURSE OF TRADE
PROSPECTIVE AND ULTIMATE CONSUMERS
INJURIOUS TO BUSINESS OR GOODWILL
ACTUAL DAMAGE TO BUSINESS OR
GOODWILL
 ELEMENTS OF PASSING
OFF
GOODWILL OR REPUTATION
DEPENDS ON NATURE OF GOODS, QUANTUM OF SALES,
EXTENT OF ADVERTISEMENT, AREA OF USAGE

DECEPTION
DEPENDS ON NATURE AND EXTENT OF REPUTATION,
FIELDS OF ACTIVITY, SIMILARITY OF MARK, CONSUMERS
LIKELY TO RECEIVE

DAMAGE TO GOODWILL OR REPUTATION

ACTUAL OR PROBABLE
DIVERSION OF SALES, INJURIOUS ASSOCIATION,
MISAPPROPRIATION OF BUSINESS REPUTATION
HONDA MOTORS V. CHARANJIT
SINGH
PLAINTIFF - “HONDA” FOR MOTORS
DEFENDANT – “HONDA” FOR PRESSURE COOKERS.
PASSING OFF?
YES

COURT HELD SUCH USE OF TRADEMARK “HONDA” IS

CREATING DECEPTION OR CONFUSION IN THE
MINDS OF THE PUBLIC AT LARGE AND SUCH
CONFUSION IS CAUSING DAMAGE OR INJURY TO
THE BUSINESS, REPUTATION, GOODWILL AND FAIR
NAME OF THE PLAINTIFF.
MEANS ADOPTED FOR PASSING OFF

DIRECT FALSE REPRESENTATION

ADOPTION OF OR COLORABLE IMITATION OF
SAME TRADEMARK
ADOPTION OF COMPLETE OR ESSENTIAL PART
OF RIVAL TRADER’S NAME – DUNKIN DONUT V
DUNKEN TYRE
DEFENCES
NON DISTINCTIVENESS
DELAY, LACHES, ACQUIESCENCE,
MISREPRESENTATION OF FACTS OR
FRAUDULENT TRADE
GOODS AND BUSINESSES TOTALLY
DIFFERENT
BONAFIDE USE
ISOLATED INSTANCE
THREAT OF LEGAL POCEEDINGS AND TRADE
LIBEL
THREAT
LIBEL
SUIT MAY BE FILED
ONLY FOR THREAT FOR INFRINGEMENT OF
REGISTERED MARK
REMEDIES CONTI…
CIVIL – INJUNCTION, DAMAGE, PROFIT

CRIMINAL – IMPRISONMENT,FINE, BOTH

ADMINISTRATIVE – ANTON PILLAR ORDER,

MAREVA INJUNCTION
 OFFENCES
FALSIFYING TRADEMARK
FALSELY APPLYING A TRADEMARK
MAKING OR POSSESSING INSTRUMENTS FOR FALSIFYING TRADEMARK
APPLYING FALSE TRADE DESCRIPTION
APPLYING FALSE INDICATION OF COUNTRY OF ORIGIN
TAMPERING WITH AN INDICATION OF ORIGIN
CAUSING ANY OF ABOVE
OFFENCES CONTINUED
SELLING GOODS OR POSSESSING OR EXPOSING
FOR SALE OF GOODS FALSELY MARKED
REMOVING PIECEGOODS
FALSELY REPRESENTING TRADEMARK AS
REGISTERED
IMPROPERLY DESCRIBING PLACE OF BUSINESS AS
CONNECTED WITH TRADEMARK OFFICE
FALSIFICATION OF ENTERIES IN REGISTER
THANK YOU

VINTEE MISHRA

Copyright Brain League IP Services Pvt. Ltd. 2009