Trademark is a brand entity which has a capability to distinguish

your goods and services from any other persons goods and services.
Trademark includes word, design, logo, shape of goods, their
packaging and combination of colours. Trademark is used to indicate
a connection between the goods or services and the person who has
a right to use the mark as a proprietor. Trademarks indicate the
source of the goods, even if that source is unknown to the
consumer. In modern times, a consumer usually does not know
the manufacturer of the goods personally, unlike before the
beginning of the Industrial Revolution, when there was a limited
number of manufacturers and every consumer used to know
the manufacturer personally.

LEGAL DEFINITION: Section 2(1) (zb)

Functions of a trademark
The following functions are performed by a trademark:

 Firstly, a trademark indicates the source or origin of the goods,

products, or services. In this case, it is presumed that any particular
good can have only one origin.
 It assures the quality of the goods bearing the trademark to the
consumers.
 Apart from the quality which is related to the goodwill of the
product, the trademark also creates brand awareness and serves
the marketing purposes and advertising aspects. In other words,
companies put a great amount of resources into developing any
product, marketing it to customers, providing customer support and
backing up their products with warranties. Trademark assures that
the effort to serve the consumers pays back.
 Provides legal protection and guards against counterfeiting and
fraud of a particular brand.
 Finally, trademarks are used to differentiate the product from
others. This is the distinguishing factor that falls under
 distinctiveness. The idea is that trademarks would distinguish
marketed goods and services from those of competitors.

SUBJECT MATTER
A trade mark can be a device, brand, heading, label, ticket,
name, signa-ture, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination
thereof, ' capable of being represented graphically and which is
capable of distinguishing goods or services of one person from
those of others.? However, protection is limited to "distinctive"
marks which are capable of identifying and distinguishing the
goods of the trade mark owner from those of others.?? Some
non-distinctive terms belonging to the category of descriptive
terms, geographic terms, etc. becomes eligible for protection if
they become distinctive or acquire secondary meaning as a
result of the use made of it or if it is a well-known trade mark.
In the following case the question was if and when a
geographical name becomes capable of distinguishing the
goods or services of a particular trader and thus becomes
entitled to be registered under the Trade Marks Act.
The landmark case of **ITC Ltd. vs. Registrar of
Trademarks (1999)** highlights the principle that descriptive
marks can acquire distinctiveness through extensive and
continuous use. ITC Ltd. sought to register the mark "Welcome
Group" for its hospitality services, but the Registrar of
Trademarks initially rejected the application, deeming the mark
descriptive and lacking distinctiveness. ITC Ltd. challenged this
decision, arguing that the mark had gained distinctiveness
through its long-term use. The Intellectual Property Appellate
Board (IPAB) and subsequently the High Court ruled in favor of
ITC Ltd., affirming that public perception and market
recognition can transform a descriptive mark into a distinctive
one eligible for trademark protection. This case underscores the
significance of use, recognition, and public perception in
establishing the distinctiveness of a trademark under Indian
law.
The decision in ITC Ltd. vs. Registrar of Trademarks is a landmark in Indian trademark law,
particularly in the context of descriptive marks. It underscores the principle that a mark,
initially deemed descriptive, can acquire distinctiveness through extensive and continuous
use, making it eligible for trademark protection.

Distinctiveness of trademark
In India, distinctiveness is required to exclude marks that do not even
perform the basic function of distinguishing between two goods or products.

In the case of Hindustan Development Corporation v. The Deputy Registrar

Of Trade Marks (1955), the Calcutta High Court held that the word ‘Rasoi’ for
a hydrogenated groundnut oil had direct reference to the character or quality
of goods. The word ‘Rasoi’ means kitchen in common Hindi parlance. So it is
a descriptive mark and not a distinctive one in the case of a cooking oil
product, to the people in the trade and also to the ordinary consumer.

Therefore, the Court held the mark to be descriptive and not distinctive
enough to be registered as a trademark.

In another case of J.L. Mehta And Anr. v. Registrar Of Trade Marks (1962), the
trademark “SULEKHA” is a Hindi word meaning “good handwriting”. But since
the word is used for fountain pens, inks, nibs, etc., it serves as a distinctive
trademark

Different types of trademarks

The term trademark also describes any of the following types of marks. While
trademarks identify products including physical goods and commodities,
there are also other types of trademarks that protect different aspects of any
product. However, the basic purpose of all types of trademarks is to help
consumers distinguish and differentiate between similar products. Following
are the main types of trademarks that can be registered:
#Service mark
Service marks are exactly the same in principle as trademarks. However, the
words, names, symbols, or devices identify and distinguish the source of a
service. Service mark serves as a brand identifier. Service marks are used in
services such as sponsorship, management and investment, various services
such as hotels, entertainment, real estate services, etc. Examples of service
marks include the golden arches of McDonald’s or the phrase “Just Do It.”
used by Nike.

#Certification mark
A certificate mark is verification or confirmation of matter by providing
assurance that some act has been done or some judicial formality has been
complied with. A certification mark indicates certain qualities of goods or
services with which the mark are used is certified, a certification mark is
defined in the Trademark Act, 1999.

Examples of certification marks include star ratings in electrical appliances

based on the consumption of energy or the ‘India Organic’ certification mark
for organically produced farmed products in India.

#Collective mark

A collective mark is used by employees and a collective group, or by

members of a collaborative association, or the other group or organization to
identify the source of goods or services. A collective mark indicates a mark
which is used for goods and services and for the group of organizations with
similar characteristics. The organization or group uses this mark for more
than one person who is acting in a group organization or legal entity for
dividing the different goods or services.

Collective marks are of two types: collective trade and service marks and
collective membership marks.

#Non-conventional trademarks

 Wordmark
 Color mark
  Shape mark
 Sound mark

Well known Trademark

Section 2(1)(zg) defines "well-known trade mark", in relation to
any goods or services, means a mark which has become so to
the substantial segment of the public which uses such goods or
receives such services that the use of such mark in relation to
other goods or services would be likely to be taken as indicating
a connection in the course of trade or rendering of services
between those goods or services and a person using the mark
in relation to the first-mentioned goods or services.

Registrar while determining whether a mark is well-known in a

relevant section of public shall take into account the actual number
of consumers, the number of people involved in the channel of
distribution of goods or services and the business circles dealing
with the goods or services.

When a person applies for well known trademark no one can use
that name for any other services. For example, Google has been
trademark by Alphabet Incorporation. They can only use Google for
any goods and service, and no one can use even if it is not related to
internet industry.

#Cases dealing with Well known Trademark

In the case of Daimler Benz V Hybo Hindustan the defendant

was using the logo and the word Benz for which plaintiff got an
injunction. The court recognised that plaintiff has this logo as a well
known trademark on the ground of transborder reputation and
Goodwill granted injunction against the use of logo and other things
by the defendant.

In the case of Rolex Sa V Alex Jewellery Private Limited & ors

is a similar case.

A company was using the trade name of “Rolex” for making artificial
jewellery which was a well known brand for watches. Plaintiff gave a
case against the defendant for using the trade name Rolex. The
court held that the people would get confused when they see the
name Rolex and also said that the watch company Rolex has a well
known Trademark. This will be affecting the business and goodwill of
the plaintiff. For this reason, the court considered Rolex to be a well
known Trademark and granted injunction against the act of the
defendant.

Trade dress
Trade dress is a term that refers to features of the visual appearance of a
product or design of a building or its packaging that denote the source of the
product to customers. It is a form of intellectual property. Trade dress
protection is implemented to protect consumers from packaging or
appearance of products that framed to imitate other products.

#Essential of trade dress

 Anything that makes an overall look or overall dress and feel of
brand in the market.
 The consumer believes that trade dress is the main indicator of
differentiation of one brand or goods from others.
 The requirement for the registration of trade dress is the same as
the registration of the logo, mark. The features in trade dress are
size, colour, texture, graphics, design, shape, packaging, and many
more.

Owner of the Trademark

Trademark gives protection to the owner by assuring them with the exclusive
rights to use a trademark, to identify the goods or services or permit others
to use it in results of payment. It is a weapon for the registered proprietor to
stop the others from illegal use of the trademark. Under Section 28 the rights
conferred by registration.

 The registration of a trademark is valid if the right is given to the

certified owner of the trademark, the owner has the exclusive right
to use of the trademark in respect of goods or services in which the
trademark is registered and to claim maintenance in respect of
infringement of the trademark is given to the holder of the
trademark.
  Wherever more than two persons are certified proprietors of the
trademark which are same with or nearly identical with each other.
The exclusive right to use of each of those trademarks shall not
except if their own rights are related to any conditions or limitations
entered on the register be expected to be taken by one of those
persons as against of other persons only by registration of the
trademark, but each of those persons has the same rights as against
other persons.

REGISTRATION OF TRADEMARKS
The registration process in India is a first to file' basis.
Therefore, it is important to apply for registration as soon as
possible. A trademark usually takes 2-3 years to get
registered, if the trademark is not being opposed by a third
party.
Trademark applications are handled by the Office of the
Controller General of Patents, Trade Marks, Industrial Designs
and Geographical Indications. Branches for these offices are
available in Mumbai, Kolkata, Ahmedabad, Delhi and Chennai.
The application must be filled as per territorial jurisdiction.
And as per provisions of trademarks act,1999 SECTION 18.

To register a trademark in India the following steps must be

followed:

1. Application for registration: Under Section 18

Proprietors are only allowed to file a trademark
application if their place of business is in India. If this
is not the case, the right holder must file a trademark
application through an agent or attorney. The agent or
attorney usually takes care of the trivialities such as
searching, preparing, filing and prosecution of the
trademark.

If the Registrar believes that there is a ground for

refusal or conditional acceptance of the application
and can be the subject of amendments, modifications,
conditions or limitations etc, then it would depend on
valid grounds mentioned by the Registrar. Further, if
the Registrar believes that the application for
registration of a trademark has been accepted under
 i) in error or ii) in the circumstances of the case it
should not be accepted or is a matter of limitation,
conditions additional or different from the conditions
and limitations of the accepted application, can
withdraw the same application under Section 19

2. Advertisement or Notice in public for opposition:

After the application has been accepted, with conditions and
limitations, if any, should be advertised according to the
provisions of Section 20. If, within three succeeding
months from the application, any objection arises from the
part of any public the registrar must consider so and ask the
aggrieved party to make a counter application repealing the
previous application in the said manner and also permit any
correction of any error as it may follow.

3. Review by the trademark office: The trademark office

reviews the application to see if it is complete and
then allots the application a number. If the trademark
is registered, this number becomes the registration
number.

4. Preliminary approval and publication, show cause

hearing or rejection of the application: The trademark
association determines if the application is barred
from registration either on absolute or relative
grounds for refusal as prescribed in the Trade Marks
Act, 1999.

5. Objection
After the examiner has scrutinized the mark up for
registration he may object to its registration. In this
case, the status of the application will show Objected.

At this point, the applicant has the chance to put

forward his case to the examiner. Usually, the
 objection is either raised under Section 9 or 11 of the
Act.
6. Amendment and correction:
The Registrar, if feels fit, at anything, before or after
the acceptance of the said application for registration
under section 18[11], may permit the correction of
any error that may follow under the Section 22[12].

7. Registration:
Under the Section 23[13], the applications which 1.
are not opposed and time for notice of opposition has
expired or, 2. were opposed but the objection was in
favour of applicant, will be registered. According to
sub-clause 2, the applicants will be provided with a
certificate in the prescribed form of registration after
the trade mark registration. Unless the Registration of
trade mark is completed within 12 months of its
application, will be treated as abandoned. Under sub-
clause 4, the Registrar is allowed to permit an
amendment the register or the certificate for mending
the clerical mistakes.

In case of Superon Schweisstechnik India v. Modi Hitech

India Ltd.[14] (2018) 250 DLT 308, the question arises
whether trade mark over a abbreviated title can be
registered. The plaintiff, with distinct registered trade
mark “Superon” sells goods that of the same as the
defendant, which has very different primary trade mark
“GMM”. While the plaintiff used the “VAC PAC” as an
abbreviated form Vacuum Package and claimed to have
ownership on the same and demanded permanent
retainment order in the usage of the same. Under
Section 9(1)(a), which purports absolute grounds for
refusal of registration and Sec 11(3)(a), of the relative
grounds for refusal in addition to law of passing of, the
Court determined that merely abbreviation of words
cannot be claimed to have any trade mark ownership. In
the judgment, the Court also considered Godfrey Phillips
India Limited case and came to the conclusion that the
 primary trademarks were contrasting in this case and
the plaintiff having no real prospect to succeed, cannot
claim the ownership of trademark on the abbreviated
word.

#Opposition Proceedings
Section 21 of the Trade Marks Act, 19999 deals with
opposition to registration and is read in conjunction
with The Trade Marks Rules, 2002, rule 42 to 4710 deals
with the same.

Absolute grounds for refusal of

registration
Absolute grounds for the refusal of registration is defined in Section 9 of the
Act. The trademarks which can be lacking any distinctive characteristics or
which consists exclusively of marks or signals, which can be used in trade to
indicate the kind, fine, quantity, supposed grounds, values, geographical
origin or which have become customary in the current language or in
bona fide and established practice of trade.

And also a time of production of goods or rendering of the offerings or

different characteristics of the goods or offerings which consists solely of
marks or indications which have come to be average in the present language.
That marks are not entitled to registration. Except it is confirmed that the
mark has in fact acquired a new character as a result of use before the date
of application.

It gives that a mark shall not be registered as trademarks if:

 1. It frauds the public or causes confusion.
2. There is any matter to hurt religious susceptibility.
3. There is an obscene or scandalous matter.
4. Its use is prohibited. It provides that if a mark contains exclusively
of (a) the shape of goods which form the nature of goods or, (b) the
shape of good which is needed to obtain a technical result or, (c) the
shape of goods which gives substantial value of goods then it shall
not be registered as trademark.

Section 9(3) of the Trade Marks Act, 1999

A mark shall not be registered if it consists exclusively of:

a. The shape of goods which result from the nature of the goods
themselves.
b. The shape of goods which is necessary to obtain a technical
result.
c. The shape of goods which adds substantial value to the goods

In Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade

Marks case, the Imperial Tobacco Company manufactured and
distributed cigarettes with a label “SIMLA” all over the country. ITC
ltd. made an application to the Registrar for the registration in the
year 1960 and 1966. But both the times the registration application
was refused by the registrar. The Calcutta High Court rejected the
appeal on the ground that the term “SIMLA” is a famous
geographical place. This term cannot be registered as a trademark.

Test of similarity
For the conclusion, if one mark is deceptively similar to another the essential
features of the two are to be considered. They should not be placed side by
side to find out if there are any differences in the design and if they are of
such a character to prevent one design from being mistaken for the other. It
would be enough if the disputed mark has such an overall similarity to the
registered mark as it likely to deceive a person usually dealing with one to
accept the other if offered to him. Apart from the structural, visual, and
phonetic similarity or dissimilarity, the query needs to be viewed from the
factor of view of man typical intelligence and imperfect collection secondly.
It’s regarded as an entire thirdly it is the query of his impressions.

In Mohd. Iqbal v. Mohd. Wasim it was held that “it is common knowledge
that ‘bidis’ are being used by persons belonging to the poorer and illiterate or
semi-literate class. Their level of knowledge is not high. It cannot be expected
of them that they would comprehend and understand the fine differences
between the two labels, which may be detected on comparing the two labels
are common. In view of the above, there appears to be a deceptive similarity
between the two labels”.

Relative grounds for refusal of

registration
Under Section 11 of the Act, it gives relative grounds for the refusal of
registration of a trademark. A trademark cannot be registered if because of

11(1)(a)____ its identity with an earlier trademark and similarity of goods or

services covered by a TM;or

11(1)(b)____its similarity to an earlier trade mark and the similarity of the

goods creates a likelihood of confusion on the part of public.

Under 11(2) It also gives that a trademark cannot be registered which is

identical or similar to an earlier trademark. And also which is to be registered
for goods and services which are not similar to those for which earlier
trademark is registered in the name of a different proprietor if, or to the
extent, the earlier trademark is well known in India. It further gives that a
trademark is cannot be registered if, or to the extent that, its use in India is
liable to be prevented by virtue of any law.

In very famous case of Amritdhara Pharmacy v Satyadeo court

established degrees of comparison between sets of similar word
marks. ‘Amritdhara’ and ‘Lakshmandhara’ were held similar words.
Wherein instead of the words being subjected to a side-by-side
comparison or to a punctilious individual analysis, some structural
examination of the words is permitted, particularly with the object of
establishing if either possesses any outstanding characteristic that
will unavoidably cause a more or less lasting imprint on the hearers’
mind.

It also provides that objections are often raised just in case of any
similarity between the sooner marks. However, an applicant can
register such trademark if the proprietor of the sooner mark has
given his/her approval or the mark is registrable under Section 12
by virtue of honest concurrent use.

Advantages of Registering a Trademark

 Trademarks make it easier for your customer base to find you:
Trademarks distinguish your services and products from those of
your competitors. This identifies you as the source and indicates
a consistent level of quality of your services and products.
Trademarks also increase brand awareness and goodwill.
 Trademarks help prevent marketplace confusion: Trademarks
prevent confusion as to the source of the goods and services.
 Trademarks are economically efficient tools: Trademarks create a
face value in the market among competitors. Furthermore, they
give your business a monopoly over the brand name.

EFFECT OF REGISTRATION
What are the benefits of registering a Trade Mark
The registration of a Trade Mark confers upon the owner the
exclusive right to the use of the registered Trade Mark and
indicate so by using the symbol (R) in relation to the goods or
services in respect of which the mark is registered and seek
the relief of infringement in appropriate Courts in the country.
The exclusive right is, however, subject to any conditions
entered on the register such as limitation of area of use, etc.
Also, where two or more persons have registered identical or
nearly similar mark due to special circumstances such
exclusive right does not operate against each other.

No action for an unregistered trade mark

This is defined under Section 27 of the Act, which states that no infringement
will lie concerning an unregistered trade mark but recognises the common
law rights of the trade mark owner to take action against any person for
passing off goods as the goods of another person or as the services of
another person or the remedies thereof.
#Rights of an Unregistered Trademark Owner
Under Common Law Rights, an unregistered trademark violation can be
prevented. The owner of an unregistered trademark can prevent any third
party from using an identical trademark. Such unauthorized use by rivals
results in trespassing the product marks. These are the essential factors
to bring action against trespassing:

 The trademark owners earned goodwill in the market.

 Affirmation of the Defender's Act.
 The loss suffered by the owner or likely to be sustained by the
owner.

#Rights of a Registered Trademark Owner

It is optional for your trademark registration. It is an inconvenient process.
However, registering it provides more comprehensive rights in comparison
with the rights of an unregistered trademark. But once registered, the
owner gains some valuable rights. Let us describe them.

The Right to Exclusive Use: The exclusive right to use the trademark
register regarding the products and goods for which it enlists under some
conditions. If there is more than one owner whose name the trademark is
registered with, each of them will have the same rights as other
unregistered users.
The Right to Statutory Remedy for Any Infringement: The owner
has exclusive rights over the registered trademark. They can seek legal
solutions to any violation of their registered trademark as required by
law.
Right to Assign: The owner has the right to transfer ownership by way of
license. They can provide efficacious permits for such charges.
Right to Register Correction: The owner can apply for correction of the
register concerning the registered owner's name, address, or description.
He has the right to cancel out any entry of trademark on the record or
cross out any class of goods and services from the register.

Assignment and Transmission of

Trademarks in India Section 37 to 45
The assignment of a trademark takes place when the ownership of such
trademark is transferred from one entity to another, which may either be
along with or without the goodwill of the trademarked business and which
has to be recorded in the register of trademarks.

**COLA COMPANY VS. BISLERI INTERNATIONAL PVT. LTD.

(2009)**
case is a significant decision regarding the assignment of trademarks in
India. In this case, Bisleri assigned the trademark "Maaaza" along with
the formulation rights, intellectual property rights, and goodwill for
India to The Cola Company. However, Bisleri continued to use the
"Maaaza" trademark for its products in international markets. The Cola
Company filed a lawsuit against Bisleri for trademark infringement and
passing off, claiming that the assignment included worldwide rights
and that Bisleri's actions caused confusion and diluted the brand.

The Delhi High Court granted an interim injunction in favor of The Cola
Company, preventing Bisleri from using the "Maaaza" trademark
internationally. The Court held that a complete and absolute
assignment of a trademark includes the transfer of all rights associated
with it, including international rights, unless explicitly excluded. This
judgement underscored the importance of clear and comprehensive
agreements in trademark assignments, ensuring that all rights and
territories are explicitly mentioned to avoid disputes. The case
reinforced the principle that the assignee gains exclusive rights to the
trademark, and any use by the assignor post-assignment can constitute
infringement.

On the other hand, the transmission of a trademark typically refers

to the transfer of ownership rights in situations where the original
owner passes away or there is a change in the ownership due to
legal proceedings, inheritance or other circumstances. Transmission
may occur through the distribution of assets in a will, the settlement
of an estate or a court order.
Transfer of rights by operation of law, devolution on the personal
representative of a deceased person and any other mode of transfer, not
being assignment, is also as transmission of trademarks under Section 2
(1) (zc) of the Act.

Various ways in which assignment

agreements can be executed
 1. Complete Assignment – All rights in the trademark as transferred
to another entity including the rights to earn royalties etc.
2. Assignment with respect to specific products or services also
known as Partial Assignment – The transfer of ownership is
restricted to the type of goods or services agreed upon by the
parties.
3. Assignment with goodwill – All rights and value of the trademark
as associated with the goods or the services are transferred. Herein,
the assignment is such that the rights and value are transferred not
only with respect to the class of goods the trademark was previously
benign used for. The party receiving the ownership of such
trademark is free to use the such trademark for any class of goods.
(under Section 39 of the Act).
4. Assignment without goodwill also known as gross
assignment – All rights and value of trademark are transferred to
the assignee (buyer) without the transfer of right to use such
trademark for the class of goods it was previously being used for by
the original owner of the trademark. For e.g., Where the trademark
“LOVEKART” was being used for gift box delivery services, any
assignment without goodwill of the same would not allow the
assignee to use such trademark “LOVEKART” for gift box delivery
services. The assignee may use with respect to any other class of
goods or services and has to create a separate goodwill in the same.
(under Section 39 of the Act).
Unregistered trademarks assigned without goodwill restrict the assignee’s
right to protect the trademark against passing off actions. Unless, there is a
registration of the trademark, no enforceable rights shall be within the scope
of the assignee.

Limitations of trademark assignment

1. Creation of exclusive rights in more than one person with respect to
same or similar goods or services including allied and cognate class
of goods and services is restricted since it would create confusion in
the minds of the general public with average memory.
2. Assignment to different people to use the marks in different parts of
the country is also restricted.
3. Assignment to different people using the mark in different parts of
the country together is also restricted.

Restrictions on Assignment of Trademarks

The Trademark Act imposes certain restrictions on the assignment
and transmission of trademarks to prevent confusion among users
or the general public. These restrictions include
  Restriction on assignment or transmission that would create
multiple exclusive rights.
 Restriction on assignment or transmission that would create
exclusive rights in different parts of India.

Structural Waterproofing and ORS v. Amit Gupta ORS [93

(2001) DLT 496]

In this case, a dispute arose regarding the assignment and

transmission of a trademark. The court highlighted that the registrar
has the authority to refuse the registration of the assignment and
transmission until a decision is made by the competent court. The
plaintiff claimed ownership of the trademark based on a
Memorandum of Understanding (MoU) between the parties.

However, the court rejected the plaintiff’s request for an injunction

against the defendant. The court emphasised that a change in the
name of the registered proprietor does not automatically render the
trademark unsuitable.

Infringement of trademark
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

Basically, Trademark infringement means the unapproved use of a trademark

on regarding products and benefits in a way that is going to cause confusion,
difficult, about the trader or potentially benefits.

Hearst company Vs Dalal avenue verbal exchange Ltd.

The courtroom held that a trademark is infringed when a character in the

course of trade makes use of a mark which is same with or deceptively
similar to the trademark in terms of the goods in respect of which the
trademark is registered. Use of the mark by using such man or woman needs
to be in a manner which is more likely to be taken as getting used as a
trademark.

#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:-

1. The plaintiff’s mark is registered.

2. The defendant’s mark is identical with, or deceptively similar to

plaintiff’s registered mark;

3. 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.

4. The defendant’s use of the mark is in course of the trade in

respect of goods/services covered by the registered trademark.
5. 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.

6. 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.

7. 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.

#No action for an unregistered trade mark

This is defined under Section 27 of the Act, which states that no infringement
will lie concerning an unregistered trade mark but recognises the common
law rights of the trade mark owner to take action against any person for
passing off goods as the goods of another person or as the services of
another person or the remedies thereof.

Concept of Passing Off

The term “passing-off” is not defined in the Trade Marks Act, 1999. Section
27 of the Trade Marks Act, 1999 acknowledges the trade mark owner’s
common law rights to pursue legal action against anybody who
misrepresents his goods or services as those of a third party or seeks to
exploit such rights.

In Cadila Healthcare Ltd v. Cadila Pharmaceuticals Ltd, (2001) the Supreme

Court of India defined “passing-off” as a type of unfair commercial
competition or actionable unfair dealing in which one person, by deceit, seeks
to get an economic benefit from the reputation earned by the other in a
particular trade or company.

A few key elements must be proven for a passing off action, as maintained by
courts in a series of judgements, which are listed below:
 1. Misrepresentation,
2. The defendant must do the conduct in the course of his or her
business.
3. The plaintiff’s goods and services have been misrepresented to
prospective or final clients.
4. Such deception is intended to harm the plaintiff’s company or
reputation, and
5. Such conduct creates genuine harm to the plaintiff’s company or
reputation.
The defendant’s motive is irrelevant in a passing-off suit. Once the plaintiff
has created a reputation, no additional proof of the defendant’s fraudulent
intent is necessary to be proven or established.

Remedies for infringement of

trademarks
In the event of any trademark infringement, the aggrieved party may
approach the court for remedies. Remedies available for infringement of
trademarks are usually of three types.

#Civil remedies
Civil remedies for infringement of trademark usually include the following.

 The plaintiffs may request the court to issue an order of injunction

that directs the infringer to cease all activities, including the use of
the infringing trademark. Injunctions can be permanent, banning the
infringing party from using the trademark forever; temporary, which
means the injunction is valid for a certain period or interim
injunction meaning for the specific duration while the trademark
infringement lawsuit is going on.
 The Court may also order for payment of damages caused due to
the infringing of the trademark. The cost of damages may also cover
the cost of a lawsuit paid to the plaintiff.

#Criminal remedies
The court may also decide on criminal remedies for the infringement of
trademarks. Criminal remedies include imprisonment, fine or both, depending
on the gravity of the infringement.
#Administrative remedies
Along with civil and criminal remedies, there are also administrative
remedies. The parties, if they think their trademark is being infringed, may
file for an opposition soon after the publication of the other party’s
application took place in the official gazette. The administrative remedies
also include the deletion or correction of an infringed trademark from the
register.

The court may order seizure, forfeiture or destruction of the infringing goods.

#Case laws on Infringement

Hearst company Vs Dalal avenue verbal exchange Ltd.

The courtroom held that a trademark is infringed when a character in the

course of trade makes use of a mark which is same with or deceptively
similar to the trademark in terms of the goods in respect of which the
trademark is registered. Use of the mark by using such man or woman needs
to be in a manner which is more likely to be taken as getting used as a
trademark.

Expanding boundaries of the scope of

trademark

 Domain name
A domain name, also known as a domain, is the friendly version of the
physical IP address on the Internet. It is a unique name which appears after
the @ sign in email addresses or after www. in web addresses. The use of
signs over the internet mostly consists of domain names. The domain name
system (DNS) is the automatic process that converts the domain name to its
corresponding IP address.

Every company on the internet has a domain name with a different address
in cyberspace at which the website is located. Nowadays companies have
internet pages as the producer and consumer are far away located as well as
every company is going global. The other purpose is that the Internet has
become an essential tool in marketing. The rule came to be revealed as IP
numbers are hard to remember therefore they came up with the Domain
Name System.

A user of the internet will find the domain name very useful in finding the
goods or services that he expected to find. But sometimes a distinct name of
a highly commended business may be allowed and passed off as the original
one, For example, Tata, Google and Maruti. People visit a website or domain
name through a website or a URL. Cybercrime generally means the
registration of another party’s mark as a domain name for the purpose of
misuse.

In the English case of Marks & Spencer Plc v. One in a Million Ltd (1997), the
defendant dealt in domain names, specialising in registering well-known
names and trademarks and offering those names for sale. The plaintiffs,
Marks & Spencer, objected to the defendants’ registration of
“marksandspencer.com” and “marksandspencer.co.uk”.

It was held that there was enough evidence for the plaintiff to show that the
defendant intended to infringe the plaintiff’s rights in the future. The Court
further ruled that threats to infringe had been established by the mere fact
that the defendant registered the domain name without having any intention
of doing business.

 Cybersquatting
The term ‘cybersquatting’ refers to an individual or a company who
intentionally purchases a domain and holds it until they can sell it at a
premium price. It is also referred to as “domain squatting” or
“typosquatting.” The cyber squatter could offer the domain to the person or
company that owns the trademark at an inflated price.

The first case of cybersquatting in India is the case of Yahoo!, Inc. v. Akash
Arora & Anr. (1999). In the mentioned case, the plaintiff was the owner of the
trademark ‘Yahoo!’ and the domain name ‘Yahoo.Com’ and the defendant
adopted the name ‘Yahooindia’ for similar internet services.

The issues raised in the case were whether a domain name is protected
under trademark laws and whether the action of the defendant amounts to
infringement.

The court granted an ad interim injunction in favour of the plaintiffs and

restrained the defendants and their partners from operating any commercial
purpose or dealing in services or goods on the internet or under the
trademark or domain name ‘Yahooindia.com’ or any other trademark/domain
name which is deceptively similar to the plaintiff’s trademark.

Yahoo!, Inc. v. Akash Arora and Anr,1999

For the first time ever in India, the Delhi High Court ruled in the case
of Yahoo!, Inc. v. Akash Arora and Anr (1999), that a domain name serves the
same purpose as a trade mark and is entitled to the same level of protection.
The accused’s domain name was “Yahoo India!” This was the same as the
plaintiff’s trade mark “Yahoo!” and was phonically comparable. According to
the court, internet users would be misled and duped into thinking that both
domain names originated from the same source. The argument used by the
defendant was that a disclaimer had been posted on its website.

However, it was revealed that a mere disclaimer was insufficient since the
internet is structured in such a way that the use of a similar domain name
cannot be corrected by a disclaimer, regardless of whether ‘yahoo’ is a
dictionary term. The appellation has gained distinctiveness and originality,
and it is strongly associated with the plaintiff.

Sony Corporation v. K. Selvamurthy, 2021

In the case of Sony Corporation v. K. Selvamurthy (2021), Sony Corporation
filed a lawsuit for trade mark infringement against a sole owner operating a
tours and travel company under the name Sony Tours and Travels, alleging
dilution of its well-known ‘SONY’ trade mark. The District Court concluded
after considering the available evidence that Defendant had not unfairly
exploited or damaged Plaintiff’s SONY mark’s unique character or reputation.
The Court reached this determination because Sony Corporation’s business is
restricted to electronics and media, which may be distinguished from the
defendant’s tours and trips business.

The Court further recognised that there was no misunderstanding among

consumers as a result of Defendant’s usage of the phrase “Sony.”
Additionally, it noted the plaintiff’s excessive delay in contacting the court
and awarded the defendants Rs. 25, 000 as costs.