WEEKS 6-10

Prof. Smarnika Srivastava

 INTRODUCTION TO
TRADEMARKS

• The statutory law governing protection, registration,

infringement and assignment of trademarks in India is
the Trademarks Act, 1999.
• Trademark, as the name suggests, is a mark of trade of
the proprietor who uses the trademark. It helps
consumers in identifying the source of a particular
good or service in the market.
• S 2(1)(zb) – Trademark means a mark:
• capable of being represented graphically
• capable of distinguishing the goods or services of
one person from those of others
• S.2(1)(e) – Certification
trademark
• In respect of origin, material,
mode of manufacture of goods
or performance of services,
quality, accuracy and other
characteristics.
• Distinguishes the certified
goods and services from non-
certified goods and services.
 TYPES OF ‘MARKS’ – S 2(M)

• Device – graphic or visual symbol, which can include logos or other pictoral representations.

• Brand – device mark, along with the name.

• Heading - can be a distinctive title or line of text used in advertising or packaging.

• Label – any tag, sign, or sticker affixed to goods to indicate their source or quality. Eg -coca cola packaging

• Ticket - A ticket is a small label or card attached to goods, which could contain information about the product or
its source.
• Name – could be the proprietor’s name, used as a brand name.

• Signature – handwritten or stylized form of a person's name or initials used as a mark.

• Word - A word refers to any single term or combination of terms used to identify goods or services.
• Letter - A letter can refer to a single letter or group of letters used to represent a brand.

• Numeral - number or set of numbers used as a trademark.

• Shape of goods - distinctive shape of the product itself, which can be trademarked.

• Packaging - design and appearance of the container or wrapping of a product.

• Combination of colours - A combination of colours refers to a specific mix of colours used together to represent
a brand.

• Any combination thereof - combination of any of the beforementioned elements can also be used as a trademark.
 NICE CLASSIFICATION

The Nice Classification (NCL), established by the Nice Agreement (1957), is an international
classification of goods and services applied for the registration of marks. It is a global standardized
system for trademark classification.
• Goods – 34 classes of goods [Class 1 – 34]
• Services - 11 classes of services [Class 35 – 45]

When applying for a trademark, the applicant must select the appropriate class(es) that cover the goods
or services they wish to protect. E.g., a company applying for a trademark for its brand of clothing would
file for the trademark under Class 25 (which covers clothing, footwear, and headgear).
 IMPORTANCE OF REGISTRATION OF
TRADEMARK

• Legal protection: Without registration, you can still use your mark and may have some protection under tort law,
such as passing off. However, to prove the same, one needs to establish “goodwill” of the company and brand.
However, registration of the mark will grant you legal protection under the TM Act which makes it easier to sue a
rival mark for trademark infringement and provides stronger protection. (read S 27 of the TM Act)
• Public notice: Once your trademark is registered, it is reflected as a part of the registry, which informs people
regarding your rights. This can prevent others from adopting the same mark as yours and reduces the likelihood of
unintentional infringement.
• Exclusive rights: When you register a trademark, you have the exclusive right to use that trademark and prevent
others from using identical or similar marks.
• Easy enforcement: If your trademark is registered and a rival mark registers the same mark, you can stop them from
doing so, since your trademark is available on the registry for public viewing. However, if your mark is not registered,
enforcing it may be difficult.
• International expansion: If your trademark is registered in India, it can become the basis of expanding business
internationally.You can then apply for a trademark in other countries as per the Madrid Agreement.
 ABERCROMBIE SPECTRUM
OF DISTINCTIVENESS

• The spectrum was laid down in the case

of Abercrombie & Fitch Co. v. Hunting
World Inc. (1976)
• The spectrum lays down 5 categories, in
which any kind of mark can be sorted,
to understand whether it would be
protected as a trademark or not.
• Consideration – whether sellers of
similar products are likely to use or
actually use the term in connection
with their goods and services.
 THE FIVE CATEGORIES – ABERCROMBIE
SPECTRUM

1. GENERIC – These marks are devoid of distinctive character and cannot distinguish one good/service from another.
Eg- ‘milk’ for selling ‘milk’.They are usually not granted any protection.
2. DESCRIPTIVE – These marks describe the kind, quality, quantity or intended purpose of the good/service to which it
is affixed. Eg- ‘cold and creamy’ for ice cream.They are usually not granted any protection.
3. SUGGESTIVE - Suggestive marks hint at or suggest some characteristic or quality of the product or service without
directly describing it. These marks require some imagination or thought on the part of the consumer to connect the
mark with the product, making them inherently distinctive and protectable. Eg- ‘Sleepy owl’ for coffee, ’Netflix’ for
streaming platform,‘Treat’ for ice cream.
4. ARBITRARY – these are common words that have no logical relationship to the product or service they represent.
Because they are used in an arbitrary manner, they are inherently distinctive and enjoy strong protection. Eg- ‘Mango’
for clothing,‘Apple’ for electronics.
5. FANCIFUL - Fanciful marks are invented or coined terms that have no meaning outside of their use as a trademark.
These marks are inherently distinctive and have the strongest level of protection. Eg- ‘Lakme’ for makeup, ‘Kodak’ for
photographic equipment,‘Rolex’ for watch,‘Reebok’ for shoes.
 ABSOLUTE GROUNDS OF REFUSAL OF
TRADEMARK – S.9

• Lack of Distinctiveness (Section 9(1)(a)): A trademark that is not capable of distinguishing the goods
or services of one person from those of another cannot be registered. Trademarks that are purely generic
fall into this category.
• Descriptiveness (Section 9(1)(b)): A trademark that exclusively describes the kind, quality, quantity,
intended purpose, values, or other characteristics of the goods or services will not be registered.
Descriptive terms do not function as trademarks because they simply describe the product or service and
are necessary for competitors to use on their products.Therefore, these cannot be monopolised.
• Customary Marks/Terms (Section 9(1)(c)): A trademark that has become customary in the current
language or in the established practices of trade cannot be registered. Generic terms are necessary for
competitors to describe their products and cannot be monopolized by one entity.
EXCEPTIONS to S. 9(1)– A trademark shall not be refused registration if before the date of the application for registration:
1. It has acquired a distinctive character as a result of the use made of it –
• This refers to a trademark that may have originally been non-distinctive, descriptive, generic or customary but has, over time,
gained distinctiveness through extensive and consistent use in the marketplace.
• This process is known as acquiring secondary meaning. Essentially, the public has come to associate the mark with a
particular source or brand, even though the mark might not have been inherently distinctive at the time of its initial use.
• The mark has gained recognition among the public as identifying a specific source of goods or services due to its extensive
use over time, in a way that when consumers think of the mark, they only think of the proprietor’s product and nothing else.
• Consumer’s perception, displaced primary meaning, exclusivity of use, duration of use, volume of goods marketed,
advertisements, consumer surveys, etc. weigh in to prove whether such a trademark has acquired secondary meaning or not.
• Eg- ‘Sugar Free’ is descriptive, however, due to extensive use, has acquired secondary meaning and thus, has a successful
trademark registered for the same.
2. It is a well-known trademark –
• A well-known trademark is a mark that is recognized by a significant portion of the public as identifying the goods or
services of one particular entity, even if that trademark is not registered or used in the same geographical area or market
segment.
=> The key difference between 1 and 2 is that a well-known trademark doesn’t necessarily need to have been used extensively
in the relevant market segment in question; it just needs to be widely recognized by the relevant public (this could be a very
famous mark used in foreign countries, but not in India). However, for a mark to acquire distinctiveness/secondary meaning, it
needs to be used consistently in the relevant market segment.
 WELL-KNOWN TRADEMARKS

• 2(zg) - a mark which has become well-known to the substantial segment of the public such that if the mark is used in relation to any
other goods or services, the public would likely believe that the goods/services have a connection to the well-known mark.
• This would include even those marks which are not registered or used in India but have a strong international repute.
• Substantial segment of the public – relevant class of people for those goods/services, including considerations such as age, income level,
country, gender. For example - a brand which is popular amongst people living in urban areas, but not rural areas, may still be recognised
by a substantial segment of the public if the urban population represents the substantial market of the product.
• Whether a mark can be considered as a ‘well-known mark’ can be seen through the following factors-
• Advertising and sales revenue- Large advertising budgets allow for widespread and frequent exposure of the brand to the public
(including international public), increasing the likelihood that it will be recognized by a substantial segment (even in those
geographical markets where it is not used). High sales figures typically correlate with a strong market presence, suggesting that a
significant portion of the public is familiar with the brand.
• Expansion and distribution- The broader the distribution, the more likely it is that a substantial segment of the public will encounter
and recognize the brand and that it might expand to locations where it does not currently function.
• Duration and extent of use – the more the duration and extent of use, the more possibility of the mark being well known.
• Consumer surveys- provides empirical evidence and assesses consumer recognition, association, and understanding of the trademark.
• Deceptive or Misleading Trademarks (Section 9(2)(a)): A trademark that is likely to deceive or cause
confusion among consumers regarding the nature, quality, or origin of the goods or services cannot be registered. This
includes trademarks that misrepresent the source or quality of the goods. Eg- “Organic Delight” for non-organic
products,“Olwool” for clothing products made of silk.
• Marks hurting religious susceptibilities (Section 9(2)(b)): A trademark which hurts the religious sentiments of
any class or section of citizens of India.
• Marks containing scandalous or obscene matter (Section 9(2)(c)): A trademark that is scandalous, offensive,
or contrary to public order or morality cannot be registered. This provision ensures that trademarks do not offend
public sensibilities or promote illegal activities.
• Emblems or Marks of Government Authorities (Section 9(2)(d)): A trademark that contains emblems, names,
or symbols that are protected under the Emblems and Names (Prevention of Improper Use) Act, 1950, or any other
law, cannot be registered. This includes marks that may falsely suggest a connection with government authorities. Eg-
the use of the Ashoka Chakra as a trademark would be refused.
• Shape of Goods (Section 9(3)):Trademarks that consist exclusively of the shape of goods cannot be registered if
the shape:
(a) results from the nature of the goods themselves, or
(b) is necessary to obtain a technical result, or
(c) gives substantial value to the goods
This provision is meant to prevent the monopolization of functional shapes or designs to the exclusion of others.
 KO N I N K L I J K E P H I L I P S
E L E C T RO N I C S N V V S . R E M I N G TO N
C O N S U M E R P RO D U C T S LT D. ( 2 0 0 2 )

• In 1966, Philips developed a new type of three

headed rotary electric shaver which comprised of
three circular heads with rotating blades in the
shape of an equilateral triangle.
• The three-headed shape was registered as a
trademark in the U.K. in 1985.
• In 1995, Remington started producing and selling in
the UK its electric shaver model DT 55, also
comprising of the rotating heads forming an
equilateral triangle, shaped similarly to that of
Philips.
• Philips subsequently sued Remington for
infringement of its trademark and alleged that
Remington sold the electric rotary shavers with
heads identical or confusingly similar to Philip’s
shape mark.
• Remington denied infringement and counterclaimed
that Philip’s shape mark was invalid since it was
functional and filed for revocation of trademark.
• The High Court of Justice of England and Wales ordered revocation of the plaintiff’s shape mark on the
following grounds:
1. The shape was not inherently distinctive and incapable of distinguishing the goods of the plaintiff from
those of others - since consumers did not associate this particular shape solely with Philips.
2. Consisted exclusively of a sign which served in trade to designate the intended purpose of the goods -
the three-headed shaver design was viewed as a functional feature that indicated the intended purpose of
the shaver (i.e., to provide a close and efficient shave). This shape was necessary for the shaver to
function as intended and was not seen as a mark indicating the product’s commercial origin.
3. Was necessary to obtain a technical result, i.e., greater coverage and more efficient shaving.

APPEAL AND DECISION BY EUROPEAN COURT OF JUSTICE –

Issues-
a) Can a shape that is necessary to achieve a technical result be registered as a trademark?
b) Does acquired distinctiveness allow for the registration of such a shape?
1.Technical result – prohibition
• The ECJ ruled that the shape of a good which is necessary to achieve a technical result, cannot be registered as a
trademark. This is to prevent the monopolization of technical solutions, which would exclude competitors from freely
using that shape for the efficiency of their products, thus, hindering competition.
• Even if such signs are registered as a trademark, they are liable to be declared invalid.
2.Acquired distinctiveness – does not matter if the shape mark falls under any of the three categories
• The ECJ held that where a trader has been the only supplier of a specific kind of goods in the market, extensive use of
a sign which consists of the shape of those goods may be sufficient to give the shape a distinctive character due to
which a substantial proportion of the relevant class of persons associate that shape with that trader.
• However, even if a shape has acquired distinctiveness through use, it cannot be registered if the shape itself is
necessary to achieve a technical result (or any of the other categories). The primary function of trademarks is to
indicate the origin of goods, not to protect functional designs.
3. Substantial value and nature of goods
• The court also held that shapes that add substantial value to the goods or that are determined by the nature of the
goods themselves cannot be trademarked. The purpose of this is to ensure that competitors are not unfairly
restricted from using shapes that are essential for the goods' use or appeal.

Thus, it was held that the three-headed shaver cannot be protected as a trademark since it serves a technical function,
even if consumers associate that shape with Philips.
 RELATIVE GROUNDS OF REFUSAL – S 11(1)

A trademark shall not be registered if-

1. It is ‘identical’ to an earlier trademark, and the goods and services covered by both trademarks are ‘similar’.
2. If trademark is ‘similar’ to an earlier trademark and both the trademarks are registered for ‘identical’ or ‘similar’
goods and services
.. And due to the identity/similarly of the rival mark in respect of similar goods, there exists a likelihood of confusion
(LOC) on the part of the public, with respect to the source of the goods/services in respect of the earlier trademark.

• Identical trademark for identical goods/services – double identity infringement – usually there is no need to prove
LOC, such a trademark typically doesn’t get registered.
• Similar trademark for identical or similar g/s or identical trademark for similar g/s which is covered under S 11(1) –
have to prove likelihood of confusion to refuse registration to such marks.

Exception to applicability of S.11(1): Honest concurrent use (Section 12)

 HONEST CONCURRENT USE – S 12

• It is a principle under trademark law that allows for the registration of trademarks that are similar or identical to
existing trademarks, provided that both trademarks have been used concurrently and honestly without causing
confusion.
• It allows two parties to register similar trademarks if they have been using them independently and honestly in different
geographical areas or contexts without causing confusion among the public. This principle recognizes that both parties
have established their brands in good faith and allows them to coexist with certain limitations.
• Considerations for establishing honest concurrent use:
• Independent and Honest Use: Both parties must have used their trademarks independently and without any intention
to deceive or cause confusion.
• Geographical or Market Separation: The use of the trademarks must be in separate geographical areas or market
segments to avoid confusion.
• No Existing Confusion: There must be evidence that the concurrent use has not led to actual confusion among
consumers.
 POLAROID TEST

The Polaroid test was laid down in 1961, in the case Polaroid Corp. v. Polarad Electronics Corp. The factors laid down in this
case are known as the “Polaroid Factors”, which help in determining and establishing the ‘likelihood of confusion’ in a
case.This could be used for judging LOC during registration or even infringement.
This test is intended as a guide to judge LOC and not all factors may always weigh in. Factors for consideration must be
seen as per the particular facts of the case.
1. Strength of the senior user’s mark- The stronger or more distinctive the senior user’s mark, the more likely that the
mark will be protected against junior users.
2. Similarity of the marks- The more the similarity between the two marks, the more the likelihood of confusion.
Similarity is judged by phonetic, visual, conceptual similarity and overall impression.
3. Similarity of the products or services- The more that the senior and junior user’s goods or services are related, the
more likely the confusion.
4. Likelihood that the senior user will bridge the gap- If it is probable that the senior user will expand into the junior
user’s product area, the more likely there will be confusion.
5. Evidence of actual confusion- Proof of consumer confusion is not always required, but when the
trademark owner can show that the average reasonably prudent consumer is confused, it is a powerful
evidence of infringement.This could be done through consumer surveys.
6. Sophistication of buyers- The less sophisticated the purchaser, the more likely the confusion. For this
factor, we have to assess the consumer class of the product.
7. Marketing channels used- The way the products are encountered in the marketplace. Eg- the market in
which they are being sold, the extent of the market, how the product is being advertised, how often can
they be found in the stores, etc.
 RELATIVE GROUNDS OF REFUSAL:
DILUTION HARM- S. 11(2)

A trademark which—
• is ‘identical’ with or ‘similar’ to an earlier trademark; and
• is to be registered for goods or services which are not similar to those for which the earlier trademark
is registered
shall not be registered if the earlier trademark is a well-known trademark in India and the use of the later
mark without due cause would take unfair advantage of or be detrimental to the distinctive character or
repute of the earlier trademark.

=> This known as ‘dilution harm’, i.e., a situation where a well-known trademark’s distinctiveness or
reputation is weakened due to unauthorized use or association, even if there is no direct competition or
likelihood of confusion. Dilution is relevant for famous or well-known trademarks.
 TYPES OF DILUTION HARMS

There are three types of dilution harms-

1. Blurring - Blurring occurs when a famous trademark’s distinctiveness is diminished because it is used
on unrelated goods or services by unauthorised people. This can weaken the trademark’s unique
association with its original goods or services. E.g.- using “Pepsi” or “Coca Cola” for selling tyres and
furniture.
2. Tarnishment - Tarnishment happens when a famous trademark is used in a way that harms its
reputation, usually by associating it with inferior quality or unsavory products or services. E.g.- using
a well-known trademark of a luxury car to sell undergarments.
3. Genericide - This occurs when a trademark becomes so commonly used to describe a general
category of products or services that it loses its trademark protection. The trademark is no longer
seen as a brand identifier but as a generic term. Eg- Xerox, Escalator, etc.
 AMRITDHARA PHARMACY V. SATYADEO
AIR 1963 SC 449

• Indian case on honest concurrent use, acquiescence, LOC, etc.

• In 1950, the respondent made an application for the registration of the mark “LAKSHMANDHARA” for biochemical
medicinal preparations. This name was being used by the respondents since 1923, mainly in the state of Uttarpradesh,
with only sporadic sales in other states.
• Amritdhara Pharmacy filed an opposition stating that they had registered the word “AMRITDHARA” for medicinal
preparations introduced and sold by them in the market since 1901.
• It was further contended that LAKSHMANDHARA being similar to AMRITDHARA was likely to deceive the public.
• In its response, the Respondent filed a counter affidavit, raising the defenses of honest concurrent use and
acquiescence on part of the Appellant, as the Respondent was using the mark ‘Lakshmandhara’ since 1923.
• The Registrar of Trademarks held that there was sufficient similarity between Amritdhara and Lakshmandhara to
cause confusion and refused registration of “Lakshmandhara” to respondents.
• On the point of acquiescence, the Registrar found in favour of the Respondent and held, that use of the trade name
Lakshmandhara by the Respondent for a long period to the knowledge of the Appellant, was a “special circumstance”
under Section 12 that entitled the Respondent to have his name registered along with the Appellant’s trade name.
• On the point of honest concurrent use, the Registrar found in favour of the Appellant because both the parties
were working in the same field, for the same class of goods. Amritdhara was a well-known mark, and it could not be
that while using the words “Lakshmandhara”, the respondents did not have knowledge about “Amritdhara” being
used for the same products.
• The Registrar accordingly passed an order allowing the registration of Lakshmandhara for sale in the State of U.P.
only.
• Both the parties appealed to the Allahabad High Court, which held that there was no possibility of confusion
between the two names since they are phonetically different. Moreover, “Amrit” and “Lakshman” are words of
common language and could not be made the monopoly of any individual. The court held that there was no
justification for refusing the registration of the trademark Lakshmandhara.
• Aggrieved by this order, the appellants appealed to the Supreme Court.
• The SC overruled the decision of the Allahabad HC and ruled that held that the marks ‘Amritdhara’ and
‘Lakshmandhara’ were similar.
• Whether a trade name is likely to deceive or cause confusion by its resemblance to an already registered mark is a
matter of first impression and must be decided by taking the view of all circumstances in a given case.
• You must take the two words. You must judge them both by their look and by their sound. You must consider the
goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to
buy those goods.
• If after considering the above, you come to the conclusion that there will be a confusion in the minds of public which
will lead to confusion in buying the goods, then registration must be refused.
• The standard of comparison to be adopted in judging the resemblance is from the point of view of a man of average
intelligence and imperfect recollection.
• “...a critical comparison of two names may disclose some points of difference but an unwary purchaser of average intelligence
and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the
medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous
occasion with a similar name.”
• To such a man, the phonetic and overall similarity of the two names Amritdhara and Lakshmandhara is likely to
deceive or cause confusion.
• As to acquiescence, the SC agreed with the Registrar of Trademarks. The name Lakshmanshara was first used in 1923
in a small way in U.P., however, it was used more extensively later. Moreover, both the trademarks ‘Amritdhara’ and
‘Lakshmandhara’ were publicized in the same journals.
• The Appellant was well aware of the advertisements of the Respondent, but the Appellant stood by and allowed the
Respondent to develop their business till it grew from a small business in 1923 to an annual turnover of Rs. 43,000/-
in 1946. In saying so, the Court upheld the decision of the Registrar of Trademarks and allowed ‘Lakshmandhara’ to
sell their products in Uttarpradesh.
 UNCONVENTIONAL TRADEMARKS

• Shapes, colours, sounds and smells are some marks which are categorized as “unconventional trademarks”. This is
so because all these marks are inherently non-distinctive.
• This means that when a consumer interacts with the brand for the first time, they do not usually remember or
rely on unconventional trademarks to verify the source of the good; rather, they rely on the device mark or
word mark for the same.
• Therefore, getting registration for unconventional trademarks is tough, because the proprietor must prove that
the relevant segment of public has started associating the unconventional mark with their goods and services in a
way that it has become a source identifier in the minds of consumers (acquired distinctiveness).
• Since marks such as colours, shapes, smells, etc. should be free for everyone to use, it is difficult to grant
monopoly to one single brand/company for the same. However, if a brand or company has been able to prove
that an unconventional mark has become so distinctive that consumers have started identifying its source as the
brand itself, this makes it a ground for getting the unconventional mark registered as a trademark.
=> Note: as discussed, for shape marks, even if the mark has acquired distinctiveness so that consumers have
started considering it as a source identifier of the brand, it would still not be registered if it falls foul of Section 9(3).
However, in all other circumstances, the shape can get registered as a TM.
 COLOURS AS TRADEMARKS

• Non-conventional mark but is possible to register as a

trademark if the brand can prove that consumers have
started associating the colour (as per international code)
with their brand to indicate the source of goods.
• Functionality doctrine- Colors can be refused trademark
protection if they are deemed functional. A colour or
combination of colours can be considered functional if it
serves a specific purpose or is essential to the use of the
product. Eg- traffic signal lights, medical scrubs, brown
for baking, yellow for high visibility clothing, etc.
• The functionality doctrine ensures that colours that are
essential to the use, purpose or quality of a product
cannot be monopolized.
• However, those colours which are not functional can be
registered as a trademark, provided they should have
become distinctive enough to serve as a source
identifier for the brand’s good and services in the minds
of consumers.
 QUALITEX CO. V. JACOBSON
PRODUCTS CO., INC. (1995)

• U.S. case on functionality of colour.

• The plaintiff, i.e., Qualitex used a green-gold colour for dry cleaning
press pads, which it sold to dry cleaning firms to use their presses. They
registered the colour for trademark and the same was granted by the
USPTO.
• The defendants also started using a similar green gold colour for
manufacturing their own dry cleaning press pads. The plaintiff sued the
defendants for trademark infringement of their colour mark.
• The District Court held in favour of Qualitex, but the US Court of
Appeals reversed this decision and held that colour alone cannot be
registered as a trademark.
• Aggrieved by this order, Qualitex appealed to the US Supreme Court.
• The Supreme Court overturned the decision of the Court of Appeals and held that the definition of what
a trademark could be is very broad, under the Lanham Act– trademarks include "any word, name, symbol, or
device, or any combination thereof".
• The court reasoned that even though colours constitute as non-distinctive trademarks, because even while
colours do not automatically evoke a connection to any product by themselves, they could take on a
secondary meaning in the course of the product’s extensive use in the marketplace. In this way, colours
could serve as a source identifier of the particular product it is used for.
• Regarding the functionality doctrine, the court held that it was not a bar to the registration of the
plaintiff’s colour mark. A product feature is only functional if it is essential to the purpose of the article or
affects the cost or quality of the article.
• “The fact that sometimes color is not essential to a product's use or purpose and does not affect cost or quality—
indicates that the doctrine of "functionality" does not create an absolute bar to the use of color alone as a mark.”
• In this case, the colour mark used by Qualitex acted purely as a symbol and served no other purpose.
Therefore, functionality is not a bar to registering the colour as a trademark.
 TRADEMARK INFRINGEMENT

S 29- Infringement of registered trademarks

Scenario 1- S 29(1)
• Infringement of a registered trademark happens when a person who is neither the proprietor nor a permitted user
of the trademark
• uses another mark (rival mark) that is either identical with or deceptively similar to the registered TM
• Deceptive similarity is closer to ‘identical’ than ‘similar’
• In the course of trade
• Goods and services should be identical
Ø Identical mark with identical g/s – double identity infringement
Ø deceptively mark with identical g/s – deceptive similarity
• The infringer’s use of the mark must be perceived by the public as being used as a trademark – the rival mark should
serve as an identifier of the source of the goods or services of the registered mark.
ÞNo express requirement to prove LOC has been given in this provision since confusion or association is implicit
(mark centric provision).The point of enquiry in 29(1) is with respect to the mark only, and not its effect.
Scenario 2: S. 29(2)
• Infringement of a registered trademark happens when a person who is neither the proprietor nor a permitted user of
the trademark
• uses another mark (rival mark):
• Identical mark + similarity of g/s
• Similar mark + identity/similarity to g/s
• Identical mark + identical g/s (double identity)
• in the course of trade
• The use is likely to cause confusion (LOC) on the part of the public, or which is likely to have an association with the
registered trademark.
q Enquiry is user centric here, i.e. effect on the users is seen – LOC.
q Have to prove LOC for 29(2)(a) and (b) and burden of proof will be on the plaintiff to prove LOC.
q However, for cases falling under 29(2)(c) [double identity infringement], LOC shall be presumed.
Scenario 3: S. 29(4)
• Covers cases of trademark dilution.
• Mark should be identical or similar to registered trademark
• The mark should be used for unrelated goods and services
• The registered trademark must have a reputation in India (well-known mark)
• use of the mark without due cause must take unfair advantage of or be detrimental to the distinctive character or
repute of the registered trademark.

Scenario 4: S. 29(5)
• A registered trademark is infringed by a person if it is used
• as his trade name or part of his trade name or name of his business
• which deals with goods or services
• in respect of which the trademark is registered.
 C A D I LA H E A LT H C A R E LT D. V. C A D I LA
P H A R M ACEUT IC A LS LT D.( 2001)

> Indian case on LOC and deceptive similarity.

> Cadila group is an Indian multinational pharmaceutical
company, that provides high quality and affordable
pharmaceutical drugs, etc.
> Cadila group was restructured in 1995 and was divided into
two separate companies, both of which had the right to use
‘Cadila’ as their corporate name – Cadila Healthcare Ltd. and
Cadila Pharmaceuticals Ltd.
> Plaintiff’s mark ‘Falcigo’ for a drug used to treat falcipharum
malaria was registered in 1996, post which, they started
manufacturing and selling it the drug all over India.
> The dispute arose when the defendant started using the mark
‘Facitab’ on their drug, which was also used to treat falcipharum
malaria.
• As per pharmaceutical industry practice, it is common to use a part of the word of the disease as the name of the
medicine, to indicate to the doctors or chemists that a particular product is meant to cure a particular disease.
• The plaintiffs claimed that they got to know in 1998 that the defendants were using the trademark “FALCITAB” for the
treatment of falcipharum malaria. They then filed a suit in the District Court of Vadodara, Gujarat, against the
defendants, seeking an injunction against the respondents from using “FALCITAB”. However, this application was
dismissed.
• The plaintiffs then appealed to the High Court, which concluded that LOC cannot be proved, upon which, they
approached the Supreme Court, against the order of the HC.
• A Division Bench of the Supreme Court invoked the contents of the Drugs and Cosmetics Act, 1940, which provides
that to avoid confusion or deception in the market, the concerned authorities responsible for grant of trademarks
under the Act should verify the trademark in question and ensure that it is not an imitation or resemblance of a
previously held trademark. Based on this, it was held that the plaintiffs were right in claiming the infringement of their
trademark.
• Confusion among medicines targeted towards the same ailment, but containing different compositions and side effects
causes more harm than confusion among other products because they can be fatal and could have disastrous effects on
the buyers.Therefore, higher standards must be applied to judge such situations.
• For deciding the question of deceptive similarity between two marks, the following factors are to be considered:
• The nature of the marks, i.e., whether the marks are word marks or label marks or composite marks
• The degree of resemblance between the marks
• The nature of the goods in respect of which they are used as trademarks
• The similarity in the nature and character of the goods of the rival traders
• The class of purchasers who are likely to buy the goods bearing the marks
• The mode of purchasing the goods or placing orders for the goods
• Any other surrounding circumstances which may be relevant
• It held that even though the two trademarks (“Falcigo” and “Falcitab”) were not identical, the sound and appearance of the words
were sufficiently close to cause confusion among doctors, chemists, and patients.
• The Supreme Court noted that a stricter standard must be applied to pharmaceutical trademarks than to other goods, due to the
higher risk to public health. Even a minor mistake in the administration of drugs could be fatal. The court held that the likelihood of
confusion in the pharmaceutical industry should be judged more stringently, considering confusion amongst expert professionals
(doctors and pharmacists) and ordinary consumers.
• The Supreme Court ruled in favour of Cadila Healthcare Ltd., stating that the trademarks “Falcigo” and “Falcitab” were deceptively
similar and could lead to confusion among consumers.

Note: in the case of a life saving drug- very high standard of judging LOC, since the wrong prescription could be life threatening.
 HOFFMAN LA-ROCHE V. GEOFFREY
MANNERS (1970)

• Indian case on trademark infringement and deceptive similarity.

• Hoffman La Roche (plaintiff), a Swiss pharmaceutical company, engaged in the manufacture and sale of medicinal
products. One of its products was a multivitamin syrup under the registered trademark “PROTOVIT” in India.
• Geoffrey Manners (defendant), an Indian pharmaceutical company, marketed a similar multivitamin preparation under
the name “DROPOVIT”.
• The plaintiff sued the defendant for trademark infringement.
• The plaintiff alleged that the defendant's use of the word "Dropovit" infringed on their trademark "Protovit," as the two
names were deceptively similar, both phonetically and visually. Both marks contained the suffix “-vit” and since both the
products were multivitamins, the public could get confused into believing that the two products were related or came
from the same source. Further, they argued that the ordinary consumer would not pay close attention to the difference
between "Proto" and "Dropo" but would focus on the overall similarity in the sound of the marks.
• Moreover, the plaintiff also argued that the word “Dropovit” was descriptive as it is short for “Drop-of-vitamin” and
thus, should not be registered as a trademark.
• The defendant argued that the two marks were not deceptively similar since the prefix was entirely different. Even
though the suffix “vit” was common in both the marks, however, it was common in the pharmaceutical company to use
this suffix for vitamin-based products and that no one can claim exclusivity over it.
SUPREME COURT JUDGEMENT-
• In order for a mark to be found deceptively similar to another mark, it is not necessary that it should be intended to
deceive or cause confusion. Rather, its effect on the ordinary consumers has to be considered to judge likelihood of
confusion. (effect v. intention)
• It is also important to judge both marks as a whole and it is not right to take one portion of the word to decide LOC
and deceptive similarity. The true test is whether the totality of the mark is such that it is likely to cause confusion or
mistake in the mind of consumers.
• The suffix in both the marks (“vit”) was held to be descriptive. The court agreed with the defendants that this was
commonly used by many companies for selling vitamin related products and the plaintiff cannot claim exclusive rights
over it.
• The letters 'D' and 'P' in ‘DROPOVIT' and the corresponding letters 'P' and 'T' in 'PROTOVIT' could not possibly be
slurred over in pronunciation and the words were so dissimilar that there was no reasonable probability of confusion
between the words either from the visual or phonetic point of view.
• The court also held that ‘DROPOVIT’ was not descriptive. Even though it is short for ‘Drop of Vitamin’, the resulting
combination produced a newly coined word which does not remind the ordinary person of the original words out of
which it is coined, unless they are told, or they devote some time to thinking about it.
• Importantly, while giving the decision, the court considered the nature of the product. The preparations from their very
nature were likely to be purchased on the prescription of doctors and sold by licensed purchasers, who would be
careful while prescribing/selling the medicines.Therefore, LOC would reduce to a great extent.
 RIGHTS OF A TRADEMARK OWNER

Ø Right to use the trademark exclusively in connection to the goods and services for which it is registered.
Ø Right to assign ownership of the trademark or license the trademark in favour of third parties.
Ø Right to franchise – allowing the franchisee to operate a business model under the trademark.
Ø Right to prevent infringement and protection against dilution of the brand.
Ø Right to use the “R” symbol – communicating the status of the trademark and deter others from infringing the
mark.
Ø Right to renew the trademark after 10 years.
Ø Right to expand the scope of the trademark.
 ASSIGNMENT OF TRADEMARKS

• Assignment refers to the transfer of ownership of a trademark from one entity (the assignor) to another person or
entity (the assignee), either fully or partially.Assignment could be of registered or unregistered trademarks.
TYPES OF ASSIGNMENT-
• Complete assignment- The trademark owner transfers all rights and interests in the trademark to the assignee. After
the assignment, the assignor has no rights over the trademark.
• Partial assignment- The assignor transfers the trademark rights only concerning certain goods or services, while
retaining the rights to other goods or services.
• Assignment of trademark with goodwill- When a trademark is assigned along with business goodwill, it involves not just
the transfer of the trademark itself but also the rights, values and entitlements linked to the specific goods or services
being sold under the trademark. Under such assignment, the assignee is allowed to use the trademark in respect of the
goods/services it was initially being used for.
• Assignment of trademark without goodwill- When a trademark is assigned without the business goodwill, the assignee
is not allowed to use the trademark in respect of the goods/services it was initially being used for. They can only use the
trademark for a different category of g/s. This creates a difference between the original business and the new owner’s
use of marks.
 LICENSING OF TRADEMARK

• Licensing of trademark allows the proprietor (licensor) to authorize another party (licensee) to use the trademark
under specified conditions (such as duration, extent, location, etc.), as per the licensing agreement.
• Benefits of licensing trademark –
Ø Brand expansion and diversification - expanding business operations and enhancing consumer recognition by
allowing the production and distribution of goods or services by third parties.
Ø Market penetration in new territories and geographic areas.
Ø Ownership is preserved – owner can exercise control on the quality of goods and services.
Ø Leveraging the expertise of third parties for business expansion.
• Exclusive license: Licensee gets the right to use the trademark to the exclusion of all others, in respect of the goods
and services as mentioned in the agreement.
• Non-exclusive license: Licensor can allow many licensees to use the trademark in respect of the goods and services as
per the terms of the licensing agreement.
• No transfer of goodwill in licensing, since the original proprietor retains the ownership and makes decisions regarding
the business.
 REGISTRATION OF TRADEMARK

S 18 – Application for Registration

• Any person claiming to be the proprietor of a trademark which is either currently being used by him or is proposed to be
used by him in future, can apply to the Registrar for registration of the trademark.
• Usually, a single application has to be made for registration of a trademark, even if the registration is in respect of different
classes of goods. Fee payable is calculated in respect of each such class of goods or services which the trademark is to be
registered for.
• The applicant must file the trademark application at the appropriate Trade Marks Registry office that has jurisdiction over
their principal place of business in India.
• The Trade Marks Registry has regional offices across different parts of India, and each office has territorial jurisdiction over
certain regions.These offices are located in Mumbai, Delhi, Chennai, Kolkata, and Ahmedabad.
• In case the applicant does not carry on business in India, the application should be filed at the Trade Marks Registry office
that has jurisdiction over the address for service in India mentioned in the application, i.e. the address within India where
official correspondence related to the trademark application can be sent. This is often provided by foreign applicants or
entities that do not have a place of business in India but still wish to protect their trademark in the country. It could be the
address of their legal representative, attorney, or agent in India.
• Subject to the provisions of the TM Act, the Registrar may refuse the application or may accept it either absolutely or subject
to any amendments, modifications, conditions or limitations, as he thinks fit. Eg- correcting typos, modifying description of g/s,
geographical limitations, altering text or logo, changing unlawful elements, etc.
• In the case of a refusal or conditional acceptance of an application for registration of trademark, the Registrar shall record in
writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.
INTENT TO USE THE TRADEMARK -
• While applying for the registration of a trademark, the applicant must have bona fide intention to use the mark in trade.
This means that applicant should either be using the mark at the time of the application or should have a genuine
intention to use the mark in the near future.
• This prevents trademark squatting or hoarding by entities with no real intent to use them and blocking others who
have genuine business interests.
• If the trademark is already being used, the applicant must specify the date of the first use in the application for
registration.
• If the trademark is not yet in use, the applicant must declare an intention to use the mark in the near future for the
goods/services specified in the application.
• For establishing intent to use in the future, the applicant can give evidence in respect of the following:
• Business planning and development – product research, development, marketing strategy, product launch timeline,
product designs, formulations, etc.
• Pre-launch marketing and advertisement – promotional activities, advertisements, brochures, online campaign, etc.
before the launch of the g/s.
• Agreements secured with distributors or retailers upon production.
• Evidence of secured funding and investments.
• Product samples and prototypes.
ABANDONMENT -
• Abandonment of trademark occurs when the owner discontinues the use of the trademark with no intention to
resume use. A trademark that is abandoned may lose its protection and the owner loses his/her exclusive rights over it.
This ensures than only active trademarks that are being used for legitimate business purposes remain on the register.
• Types of abandonment-
1. When an applicant fails to respond to official requirements or objections raised by the Registrar or does not proceed
with the application.
• S 132 - If the applicant does not reply to official requirements of actions such as objections, etc. within the stipulated
time, i.e., 6 months, the application is deemed to be abandoned.
2. When the owner of a registered trademark stops using it for an extended period (typically 5 years or more) with no
intention to resume, the trademark is considered abandoned.
• S 47 – provides for removal of registration of a trademark due to non-use if it has not been used for 5 years after
registration of the trademark (up to 3 months before application date) and there is no bona-fide intention to use the
mark.
Ø Starting use in the 5th year -
• If the owner resumes use of the trademark within the five-year window, particularly in the 5th year, this can help
protect the mark from being deemed abandoned. If the trademark is genuinely put back into commercial use, the
owner can argue that there was no intent to abandon.
• However, if the use is insignificant or merely to prevent cancellation, it might not be sufficient to avoid a claim of non-
use. Courts will evaluate whether the resumed use is genuine and in the normal course of trade or if it is token use to
prevent cancellation proceedings.
• To show that the resumed use is genuine, the proprietor could bring evidence to show the following –
o Documentation of commercial use, such as advertisements, promotion, agreements with distributors, e-commerce
platforms, etc.
o Stock and inventory records.
o Sales figures and market presence.
o Business records and correspondence.
o Contracts and agreements.
Ø Determining intent to abandon and token use–
• Intent to abandon is typically inferred from the circumstances of non-use. It can be difficult to directly prove the lack of
intent to use unless there is explicit evidence (e.g., statements from the owner). Instead, courts often look at the
owner's actions, such as failure to resume use despite opportunities.
• Lack of business efforts to market or sell the goods or services under the trademark and minimal or token use that
does not reflect genuine commercial activity.
• Evidence of plans to resume use, such as business plans, market research, or preparations to reintroduce the product,
can counter a claim of abandonment, even if the mark hasn't been used continuously.
Ø Sporadic or intermittent use –
• Sporadic or irregular use of a trademark may raise questions about whether the owner has a genuine intention
to use the mark in a bona fide commercial sense. In determining abandonment, courts will look at whether the
use is genuine or merely token use intended to preserve the trademark.
• If the use is sporadic but genuine (e.g., due to market fluctuations, seasonal products, or supply chain issues),
the trademark may still be considered in use.
• However, token use—a minimal or artificial effort to maintain the trademark without any real intent to use it
for commercial purposes—may not be enough to avoid abandonment.
S 20 – Advertisement of Application
• Once a trademark has been accepted, either absolutely, or subject to conditions/limitations, the Registrar must advertise
the application, which allows the public to review the application and, if necessary, oppose the registration.
• The application is published in an electronic form in the Trade Marks Journal, which is an official publication of the Trade
Marks Registry and is made available on their website for public viewing.
• The advertisement serves to inform the public about the pending registration and provides a window for any opposition
to be filed. It ensures transparency in the registration process and provides an opportunity for public scrutiny. The
opposition period is 4 months from the date of publication in the Trade Marks journal.
• Sometimes, advertisement is made before acceptance, when there is an issue related to absolute or relative grounds of
refusal of registration of a mark (S 9 and S 11).
• If a trademark has been advertised before acceptance, or if after advertisement, any changes or amendments have to be
made, the Registrar may either re-advertise the application (in case of significant changes) or notify the correction or
amendment made in the application (in case of minor changes which do not significantly alter the application).
• Amendments or changes can be made any time during the pendency period (4 months). For minor changes, re-
advertisement is not required. But for major changes, re-advertisement would be required.
• Registrar’s discretion - Usually, minor changes and typographical errors are allowed. However, major changes are subject
to higher level of scrutiny and may be refused by the registrar.
S 21 – Opposition to registration
Filing opposition to Registration (Subsection 1)
• Who Can Oppose:Anyone (a company, individual, or organization) can oppose a trademark application.
• When: The opposition must be filed within four months from the date the application is advertised or re-advertised in
the Trademarks Journal.
• How: The opposition needs to be filed in a prescribed format, and the the opponent must pay a fee [as per the Trade
Marks Rules].The written opposition is a formal document outlining why the trademark should not be registered.
Counter-Statement by the Applicant (Subsection 2)
• Once the opposition is filed, the Registrar of Trademarks sends a copy of the opposition notice to the applicant (the
person who applied for the trademark).
• The applicant has two months from receiving the opposition notice to submit a counter-statement explaining why
their trademark should still be registered despite the opposition.
• If the applicant does not submit the counter-statement in time, it is considered that they have abandoned their
trademark application.
Service of Counter-Statement (Subsection 3)
• After the applicant submits the counter-statement, the Registrar sends a copy of this counter-statement to the
opponent.
Submission of Evidence and Opportunity for Hearing (Subsection 4)
• Both the opponent and the applicant must provide evidence supporting their arguments. This must be done in the
prescribed manner and within the prescribed time limits.
• If either party wants a hearing, the Registrar must give them a chance to present their case orally [either in person or
virtually via video conferencing].
Registrar’s Decision (Subsection 5)
• After hearing the parties (if requested) and reviewing all the evidence, the Registrar will decide whether to allow the
trademark to be registered or not.
• The Registrar may impose conditions or limitations on the registration, such as restrictions on the use of the
trademark.
• The Registrar can also take into account objections that might not have been raised by the opponent but are still
relevant.
S 23 - Registration
(1) When an application for registration of a trademark has been accepted and either—
(a) the application has not been opposed and the time for notice of opposition has expired
(b) the application has been opposed and the opposition has been decided in favour of the applicant,
• the Registrar shall register the trademark within eighteen months from the filing date of the application. The date of
registration will be the date on which the application was filed. The applicant gains priority rights from the date of
the original application. If there is a dispute with another party over the trademark, the applicant’s rights are
deemed to have commenced from the filing date, not the registration date. This ensures that the applicant’s
trademark rights are protected from the time the application was filed, rather than from the date of registration,
which may be delayed.
• Upon registration, the Registrar shall issue a certificate of registration to the applicant.
• Where registration of a trademark is not completed within twelve months from the date of the application by
reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the
prescribed manner, treat the application as abandoned, unless it is completed within the specified time frame.