Dharmashastra National Law University, Jabalpur

Session: 2020-2021 Project Submission: Criminal Law - I

NAME – Aayush Shrivastava

CLASS - III Semester

SECTION – B

ENROLMENT NUMBER – BAL/109/19

Counterfeiting of Trademark and Property Mark

Submitted To:
Mr Animesh Jha, Assistant Professor of Law, DNLU, Jabalpur

Date of Submission:
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08th December 2020

 Acknowledgement

I would like to express my special thanks and gratitude to the people who have helped me
throughout the project; Mr Balraj Singh Chauhan (Vice Chancellor), Dr Shilpa Jain (Head of
Department/Associate Professor of Law), Mr Animesh Jha (Assistant Professor of Law) who
gave me this opportunity to do research and write this project on the topic “Counterfeiting of
Trademark and Property Mark” and provided valuable advice regarding the project. I would
also like to thank my parents who have always supported me morally as well as financially,
and my friends who directly or indirectly helped me in finalising this project within the limited
time frame.
Any omission in this brief acknowledgement does not mean lack of gratitude

Aayush Shrivastava
BAL/109/19
B.A.LLB. (Hons.) Semester III
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 CONTENTS Page No.
1) Cover Page………………………….……………………...…….……….1
2) Acknowledgement………………….……………………...…….……….2
3) Contents………………………….……………………………….…...….3
4) Introduction…………………….……………………………….……...…4
5) History and Evolution…………….…………….……………….………4-6
6) Current Scenario.……………....…….……………………………….….6-7
7) Difference Between Trademark and Property Mark………………………8
8) Some Case Laws…………………………………………………………...9-12
9) Conclusion…………………………………………………………………12
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 Introduction

A trademark is a sign capable of distinguishing the goods or services of one enterprise from
those of other enterprises.1 It has been defined under Section 2 (1) (zb) of the Trademarks Act,
1999. Trademarks are protected by intellectual property rights.

Marketing of a good or service by the producer is much better off as by trademark because
recognition becomes easier and quality is assured. The owner of the mark can prevent the
use of similar or identical signs by competitors if such marks can lead to confusion. By this
way similar low-quality substitutes will be prevented from replacing good quality ones.
The distinctiveness is maintained as well as sales are much smoother as people can identify
with that commodity or service.
Trademark is one of the areas of intellectual property and its purpose is to protect the mark
of the product or that of a service. Hence a trademark is defined as a mark capable of being
represented graphically and which is capable of distinguishing the goods and services of one
person from those of others and may include shape of goods, their packaging and
combination of colours ,they include a device ,brand, heading ,label ticket ,name ,signature,
word ,letter ,numeral ,shape of goods, packaging or combination of colours or any
combination thereof.2

History and Evolution

Dating back to those barbarian times where majority of people could not read or write is when
symbols became a logical method of letting people know, what belonged to whom? The earliest
marks were that of marking of animals, so a farmer, rancher or lord could distinguish what
animals belonged to whom. As commerce developed, marks began to serve several purposes.
‘Potters mark’ of Greek and Roman times appeared on vessels to indicate the origin, destination
along with the identification of the maker. The ancient Egyptian Artefacts embraced various
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symbols carved on structures based on religious and superstitious reasoning. The usage of

1
WIPO, Trademarks, About IP, World Intellectual Property Organisation, https://www.wipo.int/trademarks/en/
(Dec. 7, 2020, 10:05 AM)
2
Sruthi Srinivasan, Evolution of Trademark Laws in India, Altacit Global
https://www.altacit.com/resources/trademark/evolution-of-trademark-laws-in-india/#i_2 (Dec. 7, 2020, 10:30
AM)
 stamps on bricks by the Roman brick maker for the purpose of identification began as early as
the 2nd Century BC. 3

One of the finest examples of both ancient and modern trademark use was the Barber’s pole
which was used to indicate the location of business. In medieval England, sword manufacturers
were required to use identification marks so that the defective weapons could be traced back to
the producer for a possible punishment.

Eventually, use of marks became a ground to prove ownership of goods. As merchandising and
trade picked up significantly during the 10th Century,’ merchants mark’ also referred to as
‘proprietary mark’ was used to prove ownership rights of goods.

As 14th and 15th centuries observed dramatic emergence of merchant and craft guilds,
trademark- like symbols and logos began to appear as identification of goods and services.
Gradually as Industrial Revolution sparked, guild system disintegrated into free business and
thus establishing civil protection against those who replicated the mark of another.4

The dictum ‘nobody has any right to represent his goods as the goods of somebody else’ and
‘nobody has the right to pass off his goods as the goods of somebody else’ was established in
the case, Southern v How, 1617, where a clothier who had gained great reputation by putting
his marks on clothes made by him was used by another to deceive and make profits. The Courts
thereafter followed these principles as the law. They recognized such disputes and gave
remedies as ‘passing off’.

Before the enactment of a statutory law, trademarks prevailed as common law marks. The need
for a law on registration of trademark and protection against infringement was recognized
giving scope for the very first statutory enactment in Britain in the year 1875.

The British Trademark act of 1875 provided for a formal registration of trademark based on
the fulfilment of criterion whether the Trademark distinguished the goods of the trader or not.
Thus, Registration was considered prima facie evidence of ownership of a Trademark.
Eventually, the Trademark act, 1875 was repealed and substituted by the Patents, Designs and
Trademark Act, 1883 which included the facility to register ‘fancy words not in common use’
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3
BanalIP Reporter, History and Evolution of the Trademark System, BanalIP Counsels,
https://www.bananaip.com/ip-news-center/history-and-evolution-of-trademark/ (Dec. 7, 2020, 12:02 PM)
4
Supra note 3
 and ‘brands’ as new marks for the first time. This Act was further substituted by the Trademark
Act, 1905. The next re-enactment was the Trademark Act, 1938.

India borrowed the British Trademark Act, 1938 and prepared the first Act on the subject as
Trademark Act of 1940. Independent India moulded the Trade & Merchandise Mark Act, 1958.
The Act is now operative as Trademark Act, 1999 which came into force with effect from 30th
day of December 1999.5

Current Scenario

India's obligations under the TRIPS Agreement for protection of trademarks, among other
things, 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 Trademarks 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. 6

The Trademarks 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 trademark act 1999 and its
trademark rules 2002 presently govern Indian Trademark Laws in India. 7

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
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5
History of Indian Trademark Law, Trademark Filing in India,
http://www.bizandlegis.com/in/trademark/faq/history-indian-trademark-law/ (Dec 7, 2020, 01:46 PM)
6
Trademarks Law in India: Everything you must Know, Mondaq,
https://www.mondaq.com/india/trademark/127680/trademarks-law-in-india-everything-you-must-know (Dec. 7,
2020, 08:23 PM)
7
Ibid 6
 of trademarks. Section 135 of the Trademarks Act recognises both infringement as well as
passing off actions.

Under the Trademarks Act, both civil and criminal remedies are simultaneously available
against infringement and passing off.

Infringement of trademark is violation of the exclusive rights granted to the registered

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

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

Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action

against violation of trademarks in India. In India, a combined civil action for infringement of
trademark and passing off can be initiated.

Significantly, infringement of a trademark is a cognizable offence and criminal proceedings

can be initiated against the infringers. Such enforcement mechanisms are expected to boost the
protection of marks in India and reduce infringement and contravention of trademarks.

Madrid Protocol

When India became a member of the Madrid protocol, certain amendments had to be made to
the Indian Trademarks Law to comply with the Madrid system. The Trademarks (Amendment)
Act, 2010 was passed on 21st September 2010 to bring into force the Madrid Protocol in India.
The amendment led to the inclusion of Chapter IVA (containing sections 36A to 36G) in
the Trademarks Act 1999. This chapter specifically focuses on the "Special Provisions
relating to Protection of Trademarks through international registration under the Madrid
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Protocol." The Madrid system has not only eased the procedure of applying for the trademark
 but also simplified its subsequent management. Now applicants can designate India and get
trademark protection or get "international registration" in India based on a 'basic application'
or 'basic registration' in a Protocol member country. 8

Difference Between Trademark and Property Mark

Trade Mark has been defined under Section 2 (1) (zb) of the Trade Marks Act, 1999 as a mark
capable of being represented graphically and which is capable of distinguishing the goods or
services of one person from those of others and may include shape of goods, their packaging
and combination of colour. The distinction between a trademark and a property mark has been
stated by the Supreme Court in the case of Sumat Prasad Jain v. Sheojanam Prasad and Ors.,
AIR 1972 SC 413. The Apex Court held: “…Thus, the distinction between a trade mark and a
property mark is that whereas the former denotes the manufacture or quality of the goods to
which it is attached, the latter denotes the ownership in them. In other words, a trademark
concerns the goods themselves, while a property mark concerns the proprietor. A property mark
attached to the movable property of a person remains even if part of such property goes out of
his hands and ceases to be his.” 9
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8
Madrid Protocol in India: Pros and Cons, Mondaq, https://www.mondaq.com/india/trademark/515986/madrid-
protocol-in-india-pros-and-cons (Dec 8, 2020, 09:10 AM)
9
Distinguish Between Trademark and Property Mark, Lecture Notes,
https://ask.lecturenotes.in/question/distinguish-between-trade-mark-and-property-mark-tk2hdv0gb (Dec. 8,
2020, 10:36 AM)
 Some Case Laws

Tata Sons Ltd. Vs. Mr Manu Kosuri & Ors 2001

• The Plaintiff was the Registered Proprietor of the trademark ‘TATA’ since 1917 and is one
of the oldest and largest business conglomerates in India and its reputation spilled globally.

• The Defendants’ misappropriated the Plaintiff’s trademark TATA as part of a series of

domain names that have been registered by them incorporating trademark TATA. The domain
names involved were jrdtata.com, ratantata.com, tatahoneywell.com, tatayodogawa.com,
tatateleservices.com, tatassl.com, tatapowerco.com, tatahydro.com, tatawestide.com,
tatatimken.com etc.

• Plaintiff instituted a suit seeking permanent injunction, restraining the defendants from
passing off, dilution of trademarks and for rendition of accounts, damages, delivery-up, etc.

• As the Defendants were duly served but did not enter appearance, they were proceeded ex-
parte.

The Plaintiff relied upon the judgments reported as Yahoo Inc! Vs. Akash Arora 1999; British
Telecom Plc. Vs. One in a Million 1999 & Rediff Communications Ltd. Vs Cyberbooth to
submit that the trademark law applies with equal force on the Internet as it does in the physical
world.

The entire series of domain names that have been registered by the Defendants incorporate the
trademark TATA of the Plaintiff and the Defendants cannot claim any rights in the trademark
TATA as the Plaintiff has not authorized it’s use by the Defendants in any manner.

The Defendant’s use of the impugned mark is aimed at diverting the business of the Plaintiff
and would irreparably damage the reputation and goodwill of the Plaintiff.
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 The court relied upon Yahoo Inc! v. Akash Arora; 1999 PTC 201 where it was held that
considering the vast import of Internet and its user, several Internet users are not sophisticated
enough to distinguish between the domain names of the parties. It was also held that Courts
should take a strict view of copying as the potentiality of the harm is far greater because of the
easy access and reach by any one from every corner of the globe.

A name which would by reason of similarly to the name of another, inherently leads to passing
off. Internet domain names are of importance and can be a valuable corporate asset and such
domain name is more than an Internet address and is entitled to protection in equal manner as
a trademark. With the advancement and progress in technology the services rendered by an
Internet site have also to be recognized and accepted and are being given protection from
passing off. It is a settled law that with the advent of modern technology particularly that
relating to cyberspace, domain names or Internet sites are entitled to protection as a trademark
because they are more than a mere address. The rendering of Internet services is also entitled
to protection in the same way as goods and services are, and trademark law applies to activities
on Internet.

Resultantly, an order of permanent injunction was passed in favour of the Plaintiff and against
the Defendants.

The Coca-Cola Company Vs. Bisleri International Pvt. Ltd 2009

The Maaza War.

The Delhi High Court held that if the threat of infringement exists, then this court would
certainly have jurisdiction to entertain the suit.

It was also held that the exporting of goods from a country is to be considered as sale within
the country from where the goods are exported and the same amounts to infringement of
trademark.

In the present matter, the defendant, Bisleri by a master agreement, had sold and assigned the
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trade mark MAAZA including formulation rights, know-how, intellectual property rights,
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 goodwill etc for India only with respect to a mango fruit drink known as MAAZA to Coca-
Cola.

In 2008, the defendant filed an application for registration of the trademark MAAZA in Turkey
started exporting fruit drink under the trademark MAAZA. The defendant sent a legal notice
repudiating the agreement between the plaintiff and the defendant, leading to the present case.
The plaintiff, the Coca Cola Company also claimed permanent injunction and damages for
infringement of trademark and passing off.

It was held by the court that the intention to use the trademark besides direct or indirect use of
the trademark was enough to give jurisdiction to the court to decide on the issue. The court
finally granted an interim injunction against the defendant (Bisleri) from using the trademark
MAAZA in India as well as for export market, which was held to be infringement of trademark.

Cadbury India Limited and Ors. v. Neeraj Food Products 2007

The Plaintiff is a well-known producer and manufacturer of chocolates and confections and
has a trademark ‘GEMS’ registered in its name. The Plaintiff approached the court for an
injunction against the Defendant who was allegedly selling a product under the mark ‘JAMES
BOND’ which resembled the ‘GEMS’ product of the Plaintiff in packaging and size. The
Plaintiff claimed that the product sold with mark of ‘JAMES BOND’ was deceptively like
‘GEMS’. The court held that the products of the Defendant were indeed deceptively like that
of the Plaintiff and granted an injunction restraining the Defendant from selling the said
product. Due to the peculiarity of the case, it is also known as The Notorious Case of Phonetic
Similarity.

Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors. 2018

The Plaintiff is a well-known chain of coffee outlets spread over the world including India. The
Plaintiff registered its trademark ‘STARBUCKS’ and logo representing a “long-haired
crowned maiden” in India in 2011. The Defendants started their venture in 2015 using a logo
with a black circular band saying ‘SARDARBUKSH COFFEE & CO.’ and the image of a
turbaned man and wavy lines behind him. This logo used the colour scheme of the logo of the
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Plaintiff. The Delhi High Court held that the trade-name as well as the logo of the Defendants
was deceptively similar to that of the Plaintiff and granted relief to the Plaintiff and ordered the
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 Defendants to adopt the name ‘SARDARJI-BAKHSH COFFEE & CO.’ for running their
business.

With each case, the scope of trademark infringement is being widened and further clarified by
the Indian courts. As more and more businesses go global, it is imperative that trademark
jurisprudence keeps evolving. The domestic scenario in India is also brimming with start-ups,
leading numerous big businesses to exercise their trademark rights against deceptively similar
products and brands. And this develops over a period.

Conclusion
Intellectual Property reflects the idea that its subject matter is the product of the mind or the
intellect. As it’s the product of a creative and artistic mind it is bound to changes. It can be
sold, bought, bequeathed and owned. As all this can be done there are bound to be issues
related that have to be dealt. Trademarks are a very important aspects of Intellectual
Property. Trademark Protection has become important in present day competitive world
because, every producer of a good or service will want his mark to be unique, eye catching
as well as it should be easily distinguishable from others. Creating a mark like this is quite
difficult and after all this when infringing of the mark takes place it will case utmost
difficulty to the manufacturer.
Intellectual Property is not an alien concept in fact it is a concept which is seen in everyday
life whether a movie, book, plant variety, food item, cosmetics, electrical gadgets,
software’s etc. It has become a concept of prevalence in everyday life. People have also
started celebrating World Intellectual Property Day on 26th April every year.

Many treaties and conventions have taken place in the field of Intellectual Property
particularly Patents and Trademarks. If India’s international affiliations’ are to be talked
about India is an active member of the International body WIPO (World Intellectual
Property Organisation).It is also part of two treaties namely Paris Convention 1883 where
Industrial Property is protected and Berne Convention 1886 where Literary and Artistic
Works are protected. India adheres to TRIPS and has modified its Trademark laws to
conform according to it. The purpose of all this is to protect individuality of the manufacture,
prevent infringement and improper usage of signs.
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So, every mark denotes an individualistic persona that must be respected and the goodwill
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to be maintained.