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JAMIA MILLIA ISLAMIA

INFRINGEMENT OF TRADEMARK IN INDIA

SUBMITTED TO DR. S. Z. AMANI

SHARIQUE RAZA

5TH YEAR

ACKNOWLEDGEMENT

All Praise to ALLAH (swt).

I would like to express my profound sense of gratitude to Dr. S.Z. Amani for providing me

his invaluable support, encouragement, supervision and useful suggestions throughout this

research work. His moral support and continuous guidance enabled me to complete my work

successfully. His intellectual thrust and blessings motivated me to work rigorously on this

study. In fact this study could not have seen the light of the day if his contribution had not

been available. It would be no exaggeration to say that it is his unflinching faith and

unquestioning support that has provided the sustenance necessary to see it through to its

present shape.

I express my deep sincere gratitude towards my parents for their blessing, patience, and moral

support. I express my gratitude to my all teachers and friends who has supported and

encouraged me.

SHARIQUE RAZA

9TH SEMESTER

5TH YEAR

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TABLE OF CONTENTS

1. Procedure Of Registration Of Trademark In India

2. Trademarks Law In India

3. Introduction

4. Importance Of Trademark

5. Conclusion

6. Bibliography

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TRADEMARKS LAW IN INDIA

India’s obligations under the TRIPS Agreement for protection of trademarks, inter alia,

include protection to distinguishing marks, recognition of service marks, indefinite periodical

renewal of registration, abolition of compulsory licensing of trademarks, etc.

With the globalization of trade, brand names, trade names, marks, etc. have attained an

immense value that require uniform minimum standards of protection and efficient

procedures for enforcement as were recognised under the TRIPS. In view of the same,

extensive review and consequential amendment of the old Indian Trade and Merchandise

Marks Act, 1958 was carried out and the new Trade Marks Act, 1999 was enacted. The said

Act of 1999, with subsequent amendments, conforms to the TRIPS and is in accordance with

the international systems and practices.

The Trade Marks Act provides, inter alia, for registration of service marks, filing of

multiclass applications, increasing the term of registration of a trademark to ten years as well

as recognition of the concept of well-known marks, etc. The Indian judiciary has been

proactive in the protection of trademarks, and it has extended the protection under the

trademarks law to Domain Names as demonstrated in landmark cases of Tata Sons Ltd. v.

Manu Kosuri & Ors1, and Yahoo Inc. v. Akash Arora2.

India, being a common law country, follows not only the codified law, but also common law

principles, and as such provides for infringement as well as passing off actions against

violation of trademarks. Section 135 of the Trade Marks Act recognises both infringement as

well as passing off actions.

Trademark infringement is an infringement of exclusive rights attaching to a trademark

without the authorization of the trademark owner or any licensee. Trademark infringement

typically occurs when a person uses a trademark which may be either a symbol or a design,

with resembles to the products owned by the other party. The trademark owner may begin an

officially permitted proceeding against a party, which infringes its registration. There are two

types of remedies are available to the owner of a trademark for unauthorized use of its

imitation by a third party. These remedies are an action for passing off in the case of an

unregistered trademark and an action for infringement in case of a registered trademark. An

1 [90 (2001) DLT 659]2 [1999 PTC 201]

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infringement action and an action for passing off are quite different from each other, an

infringement action is a statutory remedy and an action for passing off is a common law

remedy.

Accordingly, in order to ascertain infringement with regard to a registered trademark, it is

necessary only to establish that the infringing mark is deceptively similar to the registered

mark and no further proof is required. In the case of a passing off action, proving that the

marks are deceptively similar alone is not sufficient. The use of the mark should be likely to

deceive confusion. Further, in a passing off action it is necessary to prove that the use of the

trademark by the defendant is likely to cause injury to the plaintiff's goodwill, whereas in an

infringement suit, the use of the mark by the defendant need not cause any injury to the

plaintiff. Trademark infringement laws are of assistance the trademark holders to keep

awareness about infringement of trademark.

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INTRODUCTION

A trademark in relation to goods conveys to the general public and specifically to the

consumers about the origin and quality of those goods, thereby acquiring reputation in the

course of business and time. Therefore the concept of a trademark is the foundation of one’s

business to distinguish from others. A good trademark is often the best salesman of the goods

and is a visual symbol of goodwill and stamp of quality.

A trademark is one of the elements of Intellectual Property Right (IPR) and is represented by

the symbol ™ or ®. It is a distinctive sign, symbol or indicator which is used by an

individual, business organization or other legal entity to identify uniquely the source of its

products or services to consumers, and to distinguish its products or services from those of

other entities. It could typically be a name, word, phrase, logo, symbol, design, image, or a

combination of these elements. Trademarks are used to facilitate and enhance the marketing

of a commodity and is a sign that indicates to consumers the source and reputation of the

affixer of the mark and provides an important advertising and sales tool.

Every businessman who has spent considerable amount of money making his mark popular

will try to secure it from usage by unscrupulous competitors. Protection of trademark is

important not only from the business point of view but also for the protection of consumer

from fraud and imposition.

The Trademark Act of 1999, both in letter and spirit, lays down that, while it encourages fair

trade in every way and aims to foster and not to hamper competition, it also provides that no

one, especially a trader, is justified in damaging or jeopardizing another’s business by fraud,

deceit, trickery or unfair methods of any sort. This necessary precludes the trading by one

dealer upon the good name and reputation built up by another.

The first Trademark legislation was enacted in India in 1940, but before that, protection to

trademarks in the country was governed by the principles of common law based on English

cases. The law relating to protection of this form of industrial property is intricate and

complex.

The reputation of a business symbolized by a mark, under common law, can be protected

only by an action for Passing off. Registration of a trademark under the Trade Marks Act of

1999 gives statutory rights and slight infringement of it can invite an action for Infringement.

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However, even the unregistered trademarks are also protected as the Act itself provides that

an action of passing off remedy is available for unregistered trademark.

IMPORTANCE OF TRADEMARK

The importance of trademarks lies in their association with quality and consumer

expectations in a product or service. They can be seen as serving four main purposes:

First, identifying the product of its origin,

Secondly, advertising the product/service and lending it a brand name,

Thirdly, protecting the business’ reputation and goodwill, and

Fourthly, protecting consumers from deception, that is to prevent the buying public

purchasing inferior goods or services in the mistaken belief that they originate from or

are provided by another trader

INFRINGEMENT OF A TRADE MARK

Section 27(1) of the Trademarks Act, 1999 provides that a person shall be entitled to initiate

legal proceeding to prevent or recover damages for the infringement of a registered

trademark. Infringement occurs when someone else uses a trademark that is same as or

deceptively similar to registered trademark for the identical or similar goods or services as to

cause confusion in the mind of the public. This right of bringing an infringement action

against the defendant has been conferred by Section 28 of the Trademarks Act, 1999. Section

28 of the Act provides that the registration of a trademark gives to the proprietor of a

registered trademark an exclusive right to use the trademark in relation to the goods and

services in respect of which the trademark is registered and to obtain relief in respect of

infringement of the trademark.

Trademark infringement claims generally involve the issues of likelihood of confusion,

deceptive marks, identical marks and dilution of marks. Likelihood of confusion occurs in

situations where consumers are likely to be confused or mislead about marks being used by

two parties. The plaintiff must show that because of the similar marks, many consumers are

likely to be confused or mislead about the source of the products that bear these marks.

Dilution is a trade mark law concept forbidding the use of a famous trade mark in a way that

would lessen its uniqueness. In most cases, trade mark dilution involves an unauthorized use

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of another's trade mark on products that do not compete with, and have little connection with,

those of the trade mark owner. For example, a famous trade mark used by one company to

refer to hair care products, might be diluted if another company began using a similar mark to

refer to breakfast cereals or spark plugs.

WHAT CONSTITUTES INFRINGEMENT?

Section 29 of the Trademarks Act, 1999 deals with infringement. In this context, the

ingredients of Section 29 (1) are as follows:-

a. The plaintiff’s mark is registered.

b. The defendant’s mark is identical with, or deceptively similar to plaintiff’s registered

mark;

c. The defendant has taken any essential feature of the mark or has taken the whole of

the mark and then made a few additions and alterations.

d. The defendant’s use of the mark is in course of the trade in respect of goods/services

covered by the registered trademark.

e. The use of the infringing mark must be printed or usual representation of the marking

advertisements, invoices or bills. Any oral use of the trademark is not infringement.

f. The use by the defendant is in such manner as to render the use of the mark likely to

be taken as being used as a trademark.

g. The defendant’s use of the mark is not by way of permitted user and accordingly

unauthorised infringing use.

While the above is the general proposition of law as per Section 29 (1), the various

circumstances in which the trademark is infringed are enumerated in sub-sections 29(2) to (9)

of Section 29.

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INFRINGEMENT- VARIOUS FACTORS

In the case of Wockhardt Ltd. Vs. Aristo Pharmaceuticals Ltd.3, Madras High Court, after

holding the defendant’s mark “SPASMO-FLEXON” deceptively and phonetically similar to

“SPASMO-PROXYVON”, summarised the law as follows:

1. The registered proprietor of a trademark has exclusive right to the use of the

trademark in relation to the goods and services in respect of which the trademark is

registered and to obtain relief in respect of infringement of the trademark in manner

provided by the Act.

2. Whether it is deceptively or has become publici juris is a question of fact to be

established.

3. When a number of marks, all have a common element, may it be prefix, suffix or root,

i.e. essential part or the core of the mark, they come to be associated in the public

mind as an indication of the same source, which misleads or causes deception or

confusion.

4. It is the common element that has to be identified in an impugned mark and the

registered trademark and if such common element is highly distinctive and is not just

a description or a commonly used word, the likelihood of deception or confusion

would be very much there, despite the fact that it might differ in similarity in certain

letters.

5. The nature of the commodity, the class of purchasers, the mode of purchase and other

surrounding circumstances must also be taken into consideration.

6. Marks must be looked at from the first impression of a person of average intelligence

and imperfect recollection.

7. Marks must be compared as a whole, microscopic examination being impermissible.

8. The broad and salient feature must be considered, for which the marks must not be

placed side by side to find out the differences in design.

9. Overall similarity is the touchstone.

10. It is not the colour of the container or the difference of the product, but it is the

statutory right to the word that has to weigh.

11. The plaintiff need not in general show prima facie case that is required to be shown

must be something more than a case that will avoid the action being struck out as

3 (1999) PTC 540

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frivolous or vexatious and even if the chance of success at the trial are only twenty per

cent, the statutory protection is absolutely necessary by way of an injunction in order

to prevent confusion or deception arising from similarity of marks.

FOLLOWING ARE THE INSTANCES WHERE THE ACTS CONSTITUTED INFRINGEMENT OF TRADEMARK

i. TAKING SUBSTANTIAL FEATURE OF THE MARK

a mark is infringed by another trader, if, even using the whole of it upon or in

connection with his goods, he uses one or more of the essential features.

ii. ADDITIONS

Addition of extraneous matter, inconspicuous additions is infringement. If a person

incorporates whole or part of a registered Trademark of another, the addition of other

or matter would not save him from the charge of infringement.

iii. WHEN A MARK IS COPIED

If the defendant absolutely copied the mark and made a facsimile representation of it,

no further evidence is required. When the similarities are so close as to make it

impossible to suppose that such marks were devised independently of each other, in

absence of evidence of common origin, the conclusion that one party copied the mark

of another.

iv. MARKS LIKELY TO CAUSE CONFUSION

Likelihood of confusion occurs in situations where consumers are likely to be

confused or mislead about marks being used by two parties. The plaintiff must show

that because of the similar marks, many consumers are likely to be confused or

mislead about the source of the products that bear these marks. Where the visual,

aural and conceptual similarities is caused by the defendant’s trademark which causes

confusion in the minds of the public as to its origin, then the mark is held to be an

infringing mark. Furthermore, if the association between the marks causes the public

to wrongly believe that the respective goods comes from the same or economically

linked undertakings, there is a likelihood of confusion.4

v. USE OF RECONDITIONED OR SECOND ARTICLES

4 Compass Publishing BV vs. Compass Logistics Ltd., (2004) RPC 41

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The use of plaintiff’s mark on reconditioned goods may constitute infringement even

if it is clarified that goods are not original but reconditioned.5

vi. PRINTING OF LABELS

Unauthorised printing of labels of the plaintiff will constitute infringement. Moreover,

if a copyright subsists in labels, it will constitute infringement of copyright as well.

vii. GOODS MANUFACTURED BY THIRD PARTY WOULD CONSTITUTE

INFRINGEMENT

When the owner of a mark gets the goods manufactured by a third party under a

contract, solely for the mark, sale of the goods bearing the mark by such a

manufacturer to other person would constitute infringement.

viii. MARKS USED ALONG WITH OTHER’S MARK

Use of the plaintiff’s mark along with the defendant’s name even if prominently

displayed constitutes infringement.6

ix. SIMILAR MARKS IN MEDICINAL PRODUCTS

When the goods or products involved are medicinal products, confusion of sources or

drugs or medicinal preparation caused by similar marks of the defendant would

constitute infringement, although similarity in the marks would have been very less.

x. MARKS WITH INTERNATIONAL REPUTATION USED

UNAUTHORISEDLY

In case of marks which have acquired international reputation, an action for its

protection against un-authorised use will lie even if the owner of the trademark does

not have any business activity in India.7

WHO CAN SUE FOR INFRINGEMENT?

The plaintiff in an infringement suit may be either:

1. The proprietor of the registered trademark or his legal successor.

2. A registered user of a trademark subject to a prior notice to the registered proprietor

and consequent failure of the registered proprietor to take any action against the

infringer.

5 Rolls-Royce vs. Dodd, 1981 FSR 5176 Levi vs. Shah (1985) RPC 3717 Torrent Pharmaceuticals Ltd. Vs. Wellcome Foundation Ltd. (Guj. H.C) 2001 (2) CTMR 158

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3. An applicant for registration of a trademark. He can file an infringement suit to

protect his right to continue with the suit which will sustain only if his trademark is

registered before hearing the suit.

4. Legal heirs of the deceased proprietor of a trademark.

5. Any one of the joint proprietors of a trademark.

6. A foreign proprietor of a trademark registered in India when Infringement occurs in

India.

WHO CAN BE SUED?

1. The infringer who directly by his action causes infringement or who uses or

contemplates or threatens to use a trademark infringing plaintiff’s right.

2. The master responsible for his servant’s act of infringement. For example, a worker

who is engaged in the business of making false labels is a servant of the master who

orders the making of such labels. It is the master in such a case who is to be sued.

3. The agents of an infringer.

4. Directors and promoters of a limited company cannot be joined as co-defendants

unless they have personally committed or directed infringing acts.

JURISDICTION

Suit for infringement or for passing off is to be filed in the court not inferior to a District

Court having jurisdiction to try the suit.8 District Court having jurisdiction includes a District

Court within the local limits of whose jurisdiction, at the time of the institution of the suit or

other proceedings, the person instituting the suit or other proceedings, or where there are

more than one person, any of them who:-

a. Actually and voluntarily resides; or

b. Carries on business; or

c. Works for gain; can bring in an action against the defendant.

8 Section 134 of the Trademarks Act, 1999

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PERIOD OF LIMITATION

Under the Limitation Act, 1963, the period of limitation for filing a suit for infringement of a

trademark is three years from the date of infringement. Where the infringement is a

continuing one, a new course of action arises every time an infringement occurs. For

example, a continued sale of infringing article would give rise to a fresh cause of action.

ISSUES IN INFRINGEMENT SUITS

The issues that arise in an infringement action are the following:-

a. Whether the plaintiff is entitled to file a suit; i.e. whether he is proprietor of a

registered trademark or a registered.

b. Whether the use or proposed use of the mark by the defendant is an infringement of

the registered trademark.

c. Whether the defendant has succeeded in establishing one or more of the defences set

up by him.

d. If the plaintiff’s succeeds in the suit, what reliefs he is entitled to?

e. Whether the plaintiff is entitled to any interlocutory relief?

f. Whether there has been an actual instance of deception and confusion amongst the

public?

EVIDENCE IN INFRINGEMENT ACTIONS

The fact of registration of the plaintiff’s mark is to be proved by production of a copy of the

entry on the register certified by Registrar and sealed with the Trademark Registry.9 The

certified copy will contain all the entries in the register relating to the mark including the

conditions, if any, subject to which a mark is registered. In all legal proceedings relating to a

registered trademark, the original registration of a trademark and all subsequent assignments

and transmissions will be prima facie evidence of the validity. The plaintiff must establish

that the use of the mark complained of comes within the scope of definition of infringement.

Where the defendant has absolutely copied the mark and made a facsimile representation of

it, no further evidence is required. Where the mark used by the defendant is not identical with

the registered trademark, the court has to determine the two marks are deceptively similar.

9 Section 137 of the Trademarks Act, 1999

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Opinion evidence is not admissible, but statement of witnesses to the effect that they

themselves would be deceived is admissible. Evidence as what constitutes the essential

feature of the mark is admissible.10

ACTS NOT CONSTITUTING INFRINGEMENT (SECTION 30)

Following acts do not constitute infringement of the right to the use of a registered trademark:

1. Where the plaintiff has no title to sue;

2. Where the registration of the trademark is not valid and liable to be expunged;

3. When the use of the mark by the defendant is not an infringement under Section 29;

4. When a person uses a trademark in accordance with honest practices in industrial and

commercial matters that do not take unfair advantage.

5. When a person uses a trade mark in relation to goods or services indicating character,

quality or geographical origin

6. When a person uses a trade mark in relation to services to which the proprietor has

already applied the mark or registered user the object of the use is to indicate that the

proprietor or the registered user has performed the services.

7. When a person uses a trademark, which is subject to any conditions or limitations,

beyond the scope of such conditions or limitations will not constitute infringement.

8. When a person uses a mark in relation to goods to which the mark has been lawfully

applied, or where the registered proprietor has consented to the use of the mark. This

applies to cases where goods are purchased in bulk and sold in retail applying the

mark.

9. When a person uses a mark in relation to parts of a product or accessories to the goods

in respect of which the mark is registered if the use is reasonably necessary to indicate

that the goods so adapted.

10. When a person uses a mark or a similar mark in the exercise of a right conferred by

independent registration.

11. When a person assigns a trademark to another, this will not affect the right of that

person to sell or deal in the goods bearing that mark.

10 Prem Nath vs. Registrar, AIR 1972 Cal 261

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CASE ANALYSIS ON INFRINGEMENT

Castrol Limited Vs P.K. Sharma11

Facts of the case

Plaintiff is the registered owner of the trade marks Castrol, Castrol Gtx And Castrol Gtx 2 in

respect of oils for heating, lighting and lubricating. During the month of December 1994,

plaintiffs came to know that the defendant was carrying on business of selling multigrade

engine oil and lubricants under the trade mark 'Castrol Gtx & Castrol Crb' IN IDENTICAL

containers as used by the plaintiffs. Plaintiff filed a suit for perpetual injunction.

Held

Hon’ble Delhi High Court while passing an ex parte decree held that the user of the said trade

marks by the defendants, who have no right whatsoever to use the same is clearly dishonest

and is an attempt of infringement. The prayer of the plaintiff is accepted and they are

restrained by a decree of injunction from selling, advertising directly or indirectly in

multigrade engine oil with the aforesaid trade marks in containers which are similar to the

containers being used by the plaintiffs.

Ranbaxy Laboratories Ltd. Vs. Dua Pharmaceuticals Ltd.12

Facts of the Case

The plaintiff company manufactured drugs under the trade name "Calmpose". The defendant

company subsequently floated its similar product under the trademark "Calmprose".

Held

The Hon’ble Delhi High Court held that the two trademarks having appeared phonetically

and visually similar and the dimension of the two strips being practically the same including

the type of packing, the colour scheme and manner of writing, it is a clear case of

infringement of trade mark and the ad interim injunction granted in favour of the plaintiff.

No one can use the trademark which is deceptively similar to the trademark of other

company. As in the case of Glaxo Smith Kline Pharmaceuticals Ltd. v. Unitech

11 2000 (56) DRJ 70412 AIR 1989 Delhi 44

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Pharmaceuticals Pvt. Ltd.13, the plaintiff claimed that defendants are selling products under

the trademark FEXIM that is deceptively similar to the plaintiff’s mark PHEXIN, which is

used for pharmaceutical preparations. The defendants are selling anti-biotic tablets with the

trademark `FEXIM' with the packing material deceptively similarly to that of the plaintiff,

whereby intending to not only to infringe the trademark but also to pass off the goods as that

of the plaintiff as the two marks are also phonetically similar. The Court restrained the

defendant from using the trademark `FEXIM' or any trademark deceptively similar to the

trademark of the plaintiff `', any label/packaging material deceptively similar and containing

the same patter PHEXIN n as that of the plaintiff.

If a party using the deceptively similar name only for a single shop and not spreading its

business by use of that particular name then also that party could be stopped from using the

trade name of other company. This is given in the case of M/s Bikanervala v. M/s Aggarwal

Bikanerwala14 where the respondent was running a sweet shop in with the name of

AGGARWAL BIKANERVALA and the plaintiff was using the name BIKANERVALA

from 1981 and also got registered it in the year 1992. hence they applied for permanent

injunction over the use of the name AGGARWAL BIKANERWALA for the sweet shop by

the defendant. Court held in favour of the plaintiff and stopped defendant from

manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in food

articles for human consumption under the impugned trade mark/trade name/infringing artistic

label 'AGGARWAL BIKANER WALA' or from using any trade mark/trade

name/infringing artistic work containing the name/mark 'BIKANER

WALA/BIKANERVALA' or any other name/mark/artistic work which is identical or

deceptively similar to the plaintiff's trademark 'BIKANERVALA'.

If the trademark is not registered by any party but one party started using it before the other

then first one would have the legal authority on that particular mark. As in the case of

Dhariwal Industries Ltd. and Anr. v. M.S.S. Food Products15, where appellants were using

the brand name MALIKCHAND for their product and the respondents were using the name

MANIKCHAND which is similar to the previous one and both parties have not registered

their trademarks. Court held in this matter that even though plaintiff have not registered their

trademark they are using it from long time back and hence court granted perpetual injunction

against the respondents.13 [MANU/DE/2840/2005]14 [117 (2005) DLT 255]15 [AIR 2005 SC 1999]

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Even if a company is not doing business in country, but it is a well-known company or well-

known goods, then also it would be entitled to get authority over its trademark. As given in

case of N.R. Dongare v. Whirlpool Corp. Ltd.16, where the defendants have failed to renew

their trademark ‘WHIRLPOOL’ and in the meantime the plaintiffs have got registration of

the same. In this case court said that though there was no sale in India, the reputation of the

plaintiff company was travelling trans-border to India as well through commercial publicity

made in magazines which are available in or brought in India.

The “WHIRLPOOL” has acquired reputation and goodwill in this country and the same has

become associated in the minds of the public. Even advertisement of trade mark without

existence of goods in the mark is also to be considered as use of the trade mark. The

magazines which contain the advertisement do have a circulation in the higher and upper

middle income strata of Indian society. Therefore, the plaintiff acquired transborder

reputation in respect of the trade mark “WHIRLPOOL” and has a right to protect the

invasion thereof.

WHAT THE PLAINT SHOULD CONTAIN?

There is no special form of pleading prescribed for an action for infringement. The pleadings

must contain a clear and conscience statement of all material facts relied upon by the

plaintiff, but not evidence. It should specifically allege what the defendant has infringed or

threatened to infringe in case of registered mark. In case of passing-off, the plaintiff must

specifically allege the wrong that has been done to his goodwill or business and also the act

of misrepresentation committed by the defendant. Particulars of the acts committed by the

defendant which form the basis of allegation must be given. Where the fraud is desired to be

raised, it must be clearly pleaded, and particulars of fraud must be stated. Where both the

infringement and passing off are combined in the suit, the plaintiff should state that by virtue

of such user the mark has become distinctive of his goods.

RELIEFS IN SUIT FOR INFRINGEMENT

16 [(1996) 5 SCC 714]

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Under Section 135 of the Trademarks Act. 1999, the reliefs which a Court may grant for

passing off and for infringement includes the following:-

1. Accounts of Profit

Account of profits are the actual profits which the defendant has made by infringing

the legal rights of the plaintiff. Sub-section (1) of Section 135 provides for grant of

relief which includes, at the option of the plaintiff, either damages or an account of

profit. In taking account of profits, the damage the plaintiff have suffered is totally

immaterial. The object of account of profit is to give to the plaintiff the actual profits

the defendant has made and of which it is established that the profits were improperly

made.17 Section 135 (3) expressly enacts that where the court is satisfied that it is a

case of innocent infringement, it shall grant only nominal damages. Further, in such

situation, the Court shall not grant an account of profits.

2. Damages

Damages are the compensation awarded to the Plaintiff by the defendant for the legal

injury caused by him to the plaintiff. Damages are the notional compensation paid to

the plaintiff irrespective of the actual amount of loss suffered by the plaintiff.

FOLLOWING ARE THE MATTERS WHICH ARE GENERALLY TAKEN INTO

ACCOUNT IN AWARDING DAMAGES INCLUDE THE FOLLOWING

i. Any loss of trade actually suffered by the plaintiff directly from the acts complained

of, or properly attributable to injury to the plaintiff’s reputation, business, goodwill

and trade and business connection caused by the acts complained of.

ii. Damages may be awarded even though there is no deception.

iii. Where the defendant’s goods are similar in quality to the plaintiff’s goods, the

defendant’s wrongful act may cause injury to the plaintiff’s business reputation.

In Yahoo Inc. vs. Sanjay V. Shah18, the Delhi High Court held that he defendants passed off

their goods as if the goods were manufactured by the plaintiff using the deceptively similar

“Yahoo”. The Hon’ble High Court not only granted permanent injunction restraining the

defendants from the use of the trademark “Yahoo”, but also decreed for damages amounting

Rs. 5, 05,000/- in favour of the plaintiff.

3. Injunction17 Graham vs. Plate, Seb. P. 208.18 2006 (32) PTC 157 (Del.)

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Injunction is one of the reliefs which an aggrieved person may obtain in any suit for

infringement of a registered trademark or for passing off of the registered trademark

or unregistered trademark. The remedy of injunction is an effective remedy in

preventing the infringement of registered trademark or unregistered trademark.

Section 135 of the Trademarks Act, 1999 grants the relief of injunction. While

granting an injunction, the Court should always rely on the fact that whether the

balance of convenience lies with the plaintiff and whether an irreparable damage or

injury would occur to the plaintiff if injunction is not provided for against the

defendant.

Section 135 (2) further provides for ex parte injunction or any interlocutory order for

any of the following matters, namely:-

i. For discovery of documents;

ii. Preserving of infringing goods, documents or other evidence which are related

to the subject-matter of the suit;

iii. Restraining the defendant of or dealing with his assets in a manner which may

adversely affect plaintiff’s ability to recover damages, costs or other pecuniary

remedies which may be finally awarded to the plaintiff.

In the case of Prabhu Shankar Aggarwal vs. Anand Kumar Deepak Kumar,19 the Delhi

High Court held as follows:-

“Whenever a court considers it necessary in a particular case to pass an order of injunction

without notice to the other party, it must accord the reason for doing so, and also how the

object of granting injunction itself would be defeated if ex parte order is not passed, due to

delay. An order passed without such reasons is liable to be vacated.”

INJUNCTION MAY BE OF FOLLOWING TYPES

I. Anton Piller Order

These are ex parte orders to inspect defendant’s premises. A Court may grant such an

order to the plaintiff where there is a possibility of the defendant destroying or

disposing of the incriminating material.

II. Mareva Injunction

19 2002 (24) PTC 292 (Del.)

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In such an order, the Court has the power to freeze defendant’s assets where there

exists a probability of the assets being dissipated or cancelled so as to make

judgement against him worthless or un-enforceable.

III. Interlocutory Injunction

It is the most commonly sought and most often granted form of injunction. It serves to

take action against the defendant on the basis of past infringement. The interlocutory

injunction is an order restraining the defendant from continuance of the acts which

amount to infringement. It serves the purpose of preventing further infringement.

IV. Perpetual Injunction

It is an order restraining the defendant totally, for all times to come, from doing any

act which infringes the right of the proprietor of the trademark. Perpetual injunction is

generally granted when the suit is finally decided.

CONCLUSION

Thus, from the above discussion it can be said that protection of trademark is important not

only from the business point of view but also for the protection of consumer from fraud and

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imposition. However, it is beneficial if combined action for infringement and passing off is

brought in one suit as incorporating a plea of infringement, if the mark gets registered can

always amend the plaint. But in an action for infringement alone the plaintiff may not be

allowed to include a fresh cause of passing off in order to save the action. Since the scope of

passing off action is wider than an infringement action, if an action fails, there is a chance of

other succeeding. As stated in the preamble of the Trademarks Act, 1999, the law provides

for a better protection of trademarks, the fact that the trademark law provides protection to

trademarks has come out to be a reality. The present Act expressly recognises the common

law remedy and thus saves both the registered and unregistered trademarks from being

misused.

BIBLOGRAPHY

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BOOKS REFERRED

Kailasam and Vedaraman Law of Trademarks and Patent Geographical-indications

Act-Intellectual Property Rights (Pocket Size Edn.)

Intellectual Property Rights in India by VK Ahuja

Venkateswaran on Law of Trademark law and Passing off by Kapil Wadhwa, Dr.

Abhishek Manu Singhvi

Law Relating to Intellectual Property Rights by Dr. M.K Bhandari

JOURNALS REFERRED

India Law Journal

Indian Society of International Law

Journal of Law and Economics

WEBSITES VISITED

www.wikipedia.org

www.cll.com

www.tm-india.com

http://www.academia.edu/7795675/TRADEMARK_LAW_IN_INDIA_-

A_Critical_and_Comparative_Study

www.thomsonreuters.com

www.indlii.org

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