 MILMET OFTHO INDUSTRIES AND ORS. V.

ALERGAN INC

Facts - In this legal case, both the Appellant and the Respondent were pharmaceutical companies
engaged in manufacturing pharmaceutical products across various countries. The Respondents,
Allergan, filed a lawsuit against the Appellant, alleging that the Appellant was infringing on their
mark “OCUFLOX.” Allergan claimed that they were the prior users of this mark, having used it
for an eye care product containing OFLOXACIN and other compounds since September 9, 1992.
They had marketed the product in several other countries.

On the other hand, the Indian pharmaceutical company Milmet, the Appellant, sold a medicinal
product called “OCUFLOX,” which contained the compound CIPROFLOXACIN HCL for eye
and ear treatment. Milmet argued that they coined the term “OCUFLOX” by combining “OCU”
from “Ocular” and “FLOX” from “Ciprofloxacin.”

Initially, the Respondents were granted an ad interim injunction on December 18, 1996, but it
was later vacated on January 29, 1997. However, the Supreme Court, on appeal, held that the
Respondents were the first in the market and thus deserved an injunction.

Issue –

1.The central issue revolves around whether the Respondents were indeed prior users of the mark
“OCUFLUX.”.

2.whether the mark used by appellants are deceptively similar.

Analysis – the present case involved a passing-off action. The law of passing-off is considered as
a protection for the goodwill of business or goods/services established by a person over a period
of time.

While deciding the question of deceptive similarity in passing-off action the following
considerations must be considered.

1. Whether the mark is a word or a label mark or composite mark thus the nature of the mark
should be considered.
2. The nature of the goods/services for which the trademark is used.
3. The similarity in the nature, character , and performance of the goods of rival traders.
 4. The intelligence and degree of care that is likely to be exercised by those who are likely to
purchase or use the goods bearing the mark.

The Supreme Court observed:

• Issues may occur between the use of the mark by one entity in India and the user by another
entity overseas.

• If a mark in respect of a drug is associated with the Respondents worldwide it would lead to an
anomalous situation if an identical mark in respect of a similar drug is allowed to be sold in India.

• In the present case, the marks are the same. Respondents not using the mark in India would be
irrelevant if they were first in the world market.

Conclusion – the Supreme Court , in this case , relied on the doctrine of trans-border reputation
and based its decision by giving priority , protection , and recognition to a mark which was never
used in india but was adopted and used by the respondents in the international market first and
prior to an identical mark being adopted and used in India. Therefore the court laid emphasis on
‘who is first in the market’ test and in this case the court went a step further to ascertain the
presence of the company in international market , so as to grant them their right over the said
mark for the medicinal product.

 F.HOFFMANN-LA ROCHE AND CO. LTD. V. GEOFFREY MANNER AND CO. PVT.
LTD.

Facts – The appellant is a limited liability company incorporated under the laws of Switzerland
and carries on business in the manufacture and sale of pharmaceutical and chemical products. The
respondent is a company incorporated under the Companies Act in India and also carries on
business in the manufacture 'and sale of pharmaceutical products. In 1946 the trademark
‘PROTOVIT’ was registered for one of the vitamin preparations manufactured by the appellant
company. In 1957 the respondent company applied for registration of mark ‘DROPOVIT’ in
respect of medical and pharmaceutical preparation and substances and the application was
granted. When the appellant came to know about this he asked the respondent to alter it but the
respondent refused to do so . The appellant applied to the registrar for rectification of the register
of Trademarks by removal of therefrom of the respondent’s trademark. Later the appellant
amended its application and by adding the ground that ‘DROPOVIT’ was not an invented word.
The joint registrar rejected the applicants application for rectification. Thereafter the appellant
went to The Bombay High Court.

Issue - (i) whether the word 'DROPOVIT' was deceptively similar to the word 'PROTOVIT'
and thus offended the provision of s. 12(1) of the Trade and Merchandise Act, 1958;
(ii) whether the word 'DROPOVIT' was an invented or a descriptive word for the purpose of
s.9(1) of the Act.

Analysis – the present case involves whether the word DROPOVIT is deceptively similar to the
word PROTOVIT and whether it can be considered as invented or descriptive. The court laid
down that it is important to compare the marks as a whole and if it is deceptively similar it should
deceive and cause confusion. After hearing both sides the court came to conclusion that the word
‘DROPOVIT’ is not common and descriptive as ordinary person cannot interpret its meaning as a
drop of vitamin. It followed that the word ‘DROPOVIT’ being invented word was entitled to be
registered as a trademark and not liable to be removed from the register on which it already
existed.

 SHRI PANKAJ GOEL V. DABUR INDIA LTD.

Facts – Respondent filed a suit against the Appellant seeking a permanent injunction for
restraining the Appellant towards using the mark ‘RASMOLA’ for digestive tablets as the
mark ‘RASMOLA’ is similar to ‘HAJMOLA’. The Respondent obtained an ex parte
injunction in its favour. Th Appellant filed the present appeal.

Issue – Whether the suffix MOLA is an invented word by respondents , whether appellants
adoption of a similar mark was dishonest.
 Analysis -

• Registration of RASMOLA by the Appellant offers no complete defence to it.

• In the present case, marks are not only similar, but the products are identical and are
purchased by the same class of customers through the same trade channel. The trinity of
factors makes for a case for confusion and consequently for passing off. Passing off is a
recurring cause of action and delay being a defence in equity would not be available if the
Defendant’s conduct is fraudulent.

• Appellant’s subsequent adoption of a similar mark seems prima facie dishonest, and no
amount of user can cure it.

• As far as the argument that the word MOLA is common to the trade, Appellant has not been
able to prove that the said ‘infringers’ had significant business turnover, or they posed a
threat. In fact, the Respondent is not expected to sue all small type infringers who may not be
affecting Respondent.

• Keeping in view the Respondent’s advertisement budget and it’s scale it would be difficult
to presume, by a few isolated incidents that the Respondent was aware of the Appellant’s
product since 2005. Reliance was placed on, Automatic Electric Ltd. v. R.K. Dhawan; 1999
PTC (19) 81 wherein it was held that publication of Defendant’s advertisement in the same
magazine by itself is not sufficient to infer plaintiff’s awareness of use of a similar mark.

The appeal was dismissed.

 LONDON RUBBER CO. LTD. V. DUREX PRODUCTS

Facts
 The London Rubber Co. Ltd. lodged an opposition to the registration of the trademark "Durex"
claimed by Respondent 1, who was using it on the packaging of contraceptives manufactured and
marketed by them. The appellant claimed to be the proprietor of the trademark "Durex" in India,
which they had been using since 1932. The Deputy Registrar of Trade Marks, Calcutta, overruled
the objection and admitted the mark "Durex" to registration as sought by Respondent 1.

Issue

Whether the Deputy Registrar of Trade Marks was right in admitting to registration the trademark
"Durex" which Respondent 1 claims to own and is using on the packing of the contraceptives
manufactured and marketed by it.

Arguments

The main contention urged by Mr Pathak on behalf of the appellant was that as the marks are
identical, deception of various purchasers was inevitable and that, therefore, registration had to be
refused under Section 8(a) of the Act. The appellant's objection to the registration of the mark in
question would not fall under clause (b) or clause (c) of Section 8 but only under clause (a). Mr
Pathak also contended that sub-section (2) of Section 10 is merely a proviso to sub-section (1)
and as such it cannot apply to a case which squarely falls under Section 8(a).

Analysis

The provisions of sub-section (2) of Section 10 are by way of an exception to the prohibitory
provisions of the Trade Marks Act. It has been held that a trade mark is not necessarily entitled to
protection because its use might deceive or cause confusion and, therefore, Section 11 does not
override Section 12(2) of the English Act. The High Court held that the burden was undoubtedly
on the respondent to establish that there was no reasonable probability of confusion, which was
discharged by the fact that throughout there has not been a single instance of confusion. In the
opinion of the court, there is hardly any likelihood of confusion or deception here because the
respondent's goods are confined to contraceptives for use by women which can only be used with
medical assistance while the appellant's contraceptives are essentially for men.

 LAXMIKANT V. PATEL V. CHETANBHAT SHAH AND ANR

 Facts - In this case, the plaintiff has expanded his business by incurring substantial expenditure
on advertisement and by incorporating the word ‘Muktajivan’ in all stationary materials, albums,
sign-board, etc. The defendant who was carrying on similar business in the name and style of
‘Gokul Studio’ is intending to commerce business through his wife by adopting the name and
style of ‘Muktajivan Colour Lab and Studio’. A passing-off action was initiated by the plaintiff.
The court held in favour of the plaintiff.

Issue - Did the trial court and the High Court err in refusing to grant the plaintiff an ad interim
injunction?

Did the defendants engage in passing-off by using a name similar to the plaintiff's business name?

Analysis - The trial court found that the plaintiff had been using the name Muktajivan as part of
their business name since at least 1995. The court also found that the defendants intended to use
the plaintiff's business name to divert business or customers to themselves. Based on this
evidence, the trial court was justified in granting the ex parte injunction to the plaintiff. However,
the trial court and the High Court erred in vacating the injunction. The plaintiff did not delay in
filing the suit, and the discretion exercised by the trial court and the High Court against the
plaintiff was neither reasonable nor judicious. Therefore, the appeals are allowed, and an ad
interim injunction shall issue in favor of the plaintiff to restrain the defendants from using the
word "Muktajivan" in their trade name associated with the business and services of color lab and
studio.

 CENTURY TRADERS V. ROSHAN LAL DUGGAR CO.

Facts:

The appellant filed Suit No. 381 of 1976 in this court claiming that the respondents were guilty of
passing off their goods bearing the appellant's trade-mark and in consequence praying for the
issue of a permanent injunction restraining respondents from using the trade mark of the appellant
and holding that they are liable to render accounts, pay damages and surrender all goods bearing
the appellant's trade mark. Pending the disposal of the suit, the appellant prayed for issue of
temporary injunction interms of its prayer for permanent injunction against the respondent. It is
also claimed by respondents that the said mark is common to the trade. As noticed earlier, the
proprietary interest in the aforesaid trade mark is claimed by the appellant by virtue of user.

Issue:

Whether the learned Single Judge erred in dismissing the appellant's application under Order 39,
Rules 1 and 2, read with Section 151 of the Code of Civil Procedure, and whether an interim
injunction should be granted against the respondents.

Rule of Law:

In a passing off action, registration of the trade mark is immaterial. Registration under the statute
does not confer any new right to the mark claimed or any greater right than what already existed
at common law and at equity without registration. Registration itself does not create a trade mark.
The use by the defendant of a trade mark of the plaintiff is not essential in an action for passing
off, but is the sine qua non in an action for infringement. Proof of actual damage or fraud is
unnecessary in a passing off action whether the relief asked for is injunction alone or injunction,
accounts and damages.

Analysis:

The learned Single Judge observed that the appellant had used the mark in question even prior to
1973 and that respondent No. 3 cannot be said to be the originator of the mark when it started
processing the goods of the appellant. The Supreme Court in Corn Products Refining Co. v.
Shangrila Food Products Ltd laid down the rule vis-a-vis user of a mark as opposed to registration
of mark. From a reading of the judgments in T. Oertli AG's case, it is clear that exclusive user
must be shown before a case can be said to have made out for issue of an interim injunction.
However, this decision arose out of a claim for infringement of a registered trade mark and also
of alleged passing off. Even the Supreme Court in Kaviraj Pandit Durga Dutt Sharma's case
observed that the use by the defendant of a trade mark of the plaintiff is not essential in an action
for passing off, but is the sine qua non in an action for infringement. The appellant has made out a
prima facie case and if the respondents are not restrained by means of an interim injunction they
would continue to market their goods with the offending mark.

Conclusion:

The appeal is directed against the order of a learned Single Judge of this court dismissing an
application under Order 39, Rules 1 and 2, read with Section 151 of the Code of Civil Procedure,
moved by the appellant in Suit No. 381 of 1976, filed by it in this court claiming that the
 respondents herein were guilty of passing off their goods bearing the appellant's trade-mark.
From a reading of the relevant sections of the Trade and Merchandise Marks Act, 1958, it is clear
that registration of mark in the trade mark registry would be irrelevant in an action for passing
off. The contention by the respondents that voiles is textile goods and the trade mark is registered
or accepted under the Act for textile goods is irrelevant, for the present suit is confined to an
action regarding voiles only. The appeal is disposed of with the above observations but no order
is made as to costs at this stage.

 KHODAY DISTILLERIES LIMITED V. THE SCOTCH WHISKY ASSOCIATION AND

ORS.

Facts

Khoday Distilleries Private Limited (appellant) filed an appeal against the order of the learned
Single Judge, which allowed the rectification application and directed the removal
of the registered trade mark 'PETER SCOT' from the register. The said trade mark was registered
by the appellant in 1971 on the basis of user claimed since 1968. The rectification application was
filed by Scotch Whisky Association (respondent) on the grounds that the use of the word 'Scot'
in the trade mark was likely to deceive or cause confusion, and that the trade mark should not
have been registered in the first place.

Issues

 Whether the rectification application was barred by limitation?

 Whether the use of the word 'Scot' in the trade mark was likely to deceive or cause confusion?
 Whether the appellant's adoption of the trade mark 'PETER SCOT' was dishonest?

Arguments

The appellant argued that the rectification application was barred by limitation, as it was not filed
within the prescribed time period. However, the respondents argued that the provisions
of the Limitation Act, 1963 do not apply to appeals or applications before bodies other than
Courts, such as quasi-judicial tribunals or executive authorities.

The respondents further argued that the use of the word 'Scot' in the trade mark was likely to
deceive or cause confusion, as it implied that the whisky was Scotch Whisky, which is distilled
and matured in Scotland. The appellant argued that there was no evidence to show that the device
of Rampant Lion was indicative of Scottish origin, and that the use of Lion Rampant
and the description by the appellant additionally resulted in the likelihood of deception and
confusion.

The appellant also argued that the adoption of the trade mark 'PETER SCOT' was not dishonest,
as it was named after an employee of the appellant who had the nationality of Scotland.
However, the respondents argued that there was no evidence to show that the appellant was
encouraged to believe that the respondents did not intend to rely upon their strict legal rights.

Decision

The Supreme Court held that the rectification application was not barred by limitation,
as the provisions of the Limitation Act, 1963 did not apply to appeals or applications before
bodies other than Courts. The Court also held that the use of the word 'Scot' in the trade mark was
likely to deceive or cause confusion, and that the appellant's adoption of the trade mark 'PETER
SCOT' was dishonest. Therefore, the Court dismissed the appeal and upheld the order
of the learned Single Judge.

Reasoning

The Court reasoned that the provisions of the Limitation Act, 1963 did not apply to appeals or
applications before bodies other than Courts, and therefore the rectification application was not
barred by limitation. The Court also reasoned that the use of the word 'Scot' in the trade mark was
likely to deceive or cause confusion, as it implied that the whisky was Scotch Whisky, which is
distilled and matured in Scotland. The Court further reasoned that the appellant's adoption
of the trade mark 'PETER SCOT' was dishonest, as there was no evidence to show
that the appellant was encouraged to believe that the respondents did not intend to rely upon their
strict legal rights.

Disposition

The appeal was dismissed, and there was no order as to costs

 A.C.L EDUCATION CENTRE PVT LTD V.ANGLO AMERICAN CENTRE FOR
LANGUAGES AND ORS

Facts

The plaintiffs have filed this suit against the defendants under Sections 134 and 135 of
the Trade Marks Act, 1999 as well as under Section 51 of the Copyright Act, 1957. The
plaintiffs seek a permanent injunction to restrain infringement and passing off of Trade
Marks and Copyright.

Plaintiffs' Case

Plaintiff No. 1 is a private limited company with its registered office in Lucknow (U.P.).
It is engaged in imparting, teaching, and training of languages to students. The plaintiff
claims to have rights and interests in the trade mark, trade name, and house mark
"American Centre for Languages" through a lawful transfer of intellectual property rights
from the original owner.

The plaintiff operates a center in Dwarka, New Delhi, which is claimed to be the
principal center of business. It also operates in Gurgaon, Haryana under the trade
name/trade mark "American Centre for Languages". The plaintiff alleges that the
defendants' adoption of a similar name and trade mark amounts to infringement and
passing off.

The plaintiffs have provided evidence of their long user and association with the trade
mark "American Centre for Languages".

Defendants' Case

The defendants contest the suit and argue that the court lacks territorial jurisdiction. They
claim that the plaintiffs' business activities are limited to the State of Uttar Pradesh and
they have no activities in Delhi.
 The defendants also argue that the plaintiffs' trade mark is not registered and therefore no
case of infringement is made out. They further contend that the word "American" is a
common name and not entitled to registration as per the Trade Marks Act.

The defendants claim that defendant No. 2, popularly known as "Anshu Sir", has
acquired a reputation as a trainer/teacher for the English language in Gurgaon. They
argue that customers would pay more attention to the uncommon features of the
defendants' centre and ignore the alleged common features.

The defendants admit that defendant No. 2 was previously associated with the plaintiff,
but offer no explanation for adopting the same name.

Court's Decision

The court finds that the plaintiffs have made a prima facie case for infringement and
passing off. The court rejects the defendants' argument of lack of territorial jurisdiction at
this stage.

The court grants the plaintiffs' request for a permanent injunction and dismisses the
defendants' applications seeking vacation of the injunction and rejection of the plaint on
the ground of territorial jurisdiction.

 CADILLA HEALTH CARE LTD V CADILA PHARMACEUTICALS LTD

Facts - Cadila Health Care Ltd. (appellant) and Cadila Pharmaceuticals Ltd.
(respondent) were the parties involved in the case. Both parties were engaged in the
pharmaceutical industry, and the trademarks in question were associated with
pharmaceutical products. Both companies got the right to use the word “Cadila” in their
names. The appellant brought a drug named “Falcigo” to cure malaria and got it
registered under Trade and Merchandise Marks Act, 1958. It later came to know that the
respondent is also selling a drug to treat malaria with similar name “Falcitab”. The
plaintiff claimed that the defendant's use of a similar trademark was causing confusion
 among consumers. District Court dismissed the plea of the appellant stating that both the
drugs differed in several factors including appearance, formulation and consideration
(price).

The High Court also dismissed the appeal of appellant hence he filed an appeal before the
Supreme Court.

Issues - Are ‘Falcigo’ and ‘Falcitab’ confusingly similar?

Does the Respondent’s action constitute passing off?

Analysis - SC did not interfere with the decision of the District Court and High Court
but gave several factors which needs to be determined while deciding the question of
deceptive similarity: The nature of the marks, i.e. whether the marks are word marks or
label marks or composite marks, i.e. both words and label works. The degree of
resembleness between the marks, phonetically similar and hence similar in idea. The
nature of the goods in respect of which they are used as trademarks. The similarity in the
nature, character and performance of the goods of the rival traders. The class of
purchasers who are likely to buy the goods bearing the marks they require; on their
education and intelligence and a degree of care they are likely to exercise in purchasing
and/or using the goods. The mode of purchasing the goods or placing orders for the goods
and Any other surrounding circumstances which may be relevant in the extent of
dissimilarity between the competing marks.

 CORN PRODUCTS REFINING COVS SHANGRILA FOOD PRODUCTS LTD

Case Summary -This appeal arises from an application made under the Trade Marks Act, 1940
for registration of a trade mark. The respondent, a manufacturer of biscuits, made the application,
which was opposed by the appellant. The Deputy Registrar found that the appellant had acquired
a reputation for their mark 'Glucovita' in respect of glucose powder mixed with vitamins but held
that the respondent's mark was not likely to cause deception or confusion. Desai, J. disagreed and
set aside the order of the Deputy Registrar. The appellate Judges of the High Court found that
there was no evidence that the appellant's trade mark had acquired a reputation among the public
 and that there was no reasonable apprehension of confusion or deception. The appellant appealed
to this Court, arguing that Section 8(a) prevents the registration of the respondent's mark.

Issues- Whether Section 8(a) prevents the registration of the respondent's mark

Ruling -The Court found that there was ample evidence to show that the appellant's mark had
acquired a reputation among the general buying public and that it would be wrong to say that
there was no reasonable apprehension of confusion or deception. The Court also found that the
learned appellate Judges were in error in deciding in favour of the respondent based on the series
marks with a prefix or suffix 'Gluco' or 'Vita'. The Court held that the marks conveyed the ideas
of glucose and life giving properties of vitamins and that a trade connection between glucose and
biscuits was established. The Court set aside the order of the appellate Judges of the High Court
and restored that of Desai, J. The appeal was allowed.

Reasoning -The Court found that the Deputy Registrar was wrong in holding that the
respondent's mark was not likely to cause deception or confusion. The Court held that the marks
were sufficiently similar so as to be reasonably likely to cause deception and confusion. The
Court also found that the learned appellate Judges were in error in deciding in favour of the
respondent based on the series marks with a prefix or suffix 'Gluco' or 'Vita'. The Court held that
the marks conveyed the ideas of glucose and life giving properties of vitamins and that a trade
connection between glucose and biscuits was established.

 SHRI PANKAJ GOEL V. DABUR INDIA LTD.

Facts - The present appeal has been filed against the ex-parte injunction order passed by the
learned Single Judge. The trial court held that the Defendant's mark RASMOLA for the same
product was deceptively similar and likely to cause confusion in the minds of the customers of
these products, especially children. Consequently, the learned Single Judge restrained the
Appellant/Defendant from using the mark RASMOLA and in particular the suffix MOLA in
respect of the digestive tablets manufactured and sold by it.
 Issues -Whether the present appeal is maintainable as the learned Single Judge had not disposed
of either the injunction application or the Appellant's application for vacation of injunction within
thirty days?

Whether the Respondent/Plaintiff's suit is hit by law of acquiescence and delay?

Whether use of a similar mark by others could be a defence to an illegal act of passing off?

Whether the Respondent/Plaintiff's suit is either barred by delay or laches or acquiescence?

Decision - The present appeal being devoid of merits is dismissed. However, keeping in view the
facts of the case, the learned Single Judge is requested to expeditiously dispose of the present suit
preferably within six months from today. The observations made are on a prima facie view of
matter and would not prejudice either of the parties at the time of trial of the present suit.

Reasoning - An appeal against an ex-parte injunction lies only in such cases where the Single
Judge does not dispose of the application within thirty days, without assigning any reason. In the
present case, the appeal is maintainable as the learned Single Judge had not disposed of either the
injunction application or the Appellant's application for vacation of injunction within thirty days.
Use of similar marks by a third party cannot be a defence to an illegal act of passing off. The
Respondent/Plaintiff's suit is not barred by delay or laches or acquiescence. Consequently, delay
and so-called concurrent use, if any, cannot be a ground for refusing interim injunction. The use
of the same mark by the Appellant is likely to deceive the public at large. Therefore, the present
appeal is dismissed.

 Prem Nath Mayer Versus Registrar of Trademarks and another

Facts -On April 28, 1960, the second respondent filed an application for registration, in Part A of
the Register, of a trade mark consisting of a label containing the image of a Goddess seated on a
Lon and the words “Ma Durga Brand in class V, “in respect of agricultural implements specially
for chaffcutter blades”. The application for registration was opposed by the appellant, and the
opposition was based on the provisions in Sections 11 and 12(I) of the Trade and Merchandise
Marks Act, 1958, (hereinafter referred to as the Act). The appellants in their opposition claimed
that they were the prior users of a trade mark, which was duly registered, under the provisions of
the Act being trade mark No. 12301 registered in Class VII in respect of, inter alia, “Chaffcutter
Blades and Knives”. The substance of the appellant's contention in the opposition to the
 registration of “Ma Durga Brand” with the device mentioned above, was that the mark proposed
to be registered, resembled the registered trade mark of the appellant and such resemblance would
lead to confusion and deception.

Issues -Whether the mark proposed to be registered would deceive or confuse a buyer in the
market?

Whether the onus of proving that the use of a mark would not deceive or cause confusion lies on
the applicant?

Whether the onus shifts from one person to the other in the proceedings?

Decision -The Deputy Registrar of Trade Marks dismissed the appellant's opposition. The
Allahabad High Court held that there was no possibility of confusion and deception, and there
was no justification for refusal to register the trade mark “Lakshmandhara” for the whole of
India. The Supreme Court upheld the decision of the Division Bench of the Bombay High Court
and held that the burden of proving that the trade mark which a person sought to register was not
likely to deceive or cause confusion was upon the applicant. The Court further held that the onus
does not shift from the applicant to the opponent at any stage of the proceedings. The Court also
rejected the second respondent's claim of honest concurrent use.

Rationale -The Court relied on the provisions of the Trade and Merchandise Marks Act, 1958
and the Rules thereunder to determine the onus of proof. The Court found that the onus lies upon
the applicant to prove that the mark proposed to be registered would not lead to confusion or
deception. The Court also emphasized that the question of confusion or deception cannot be
decided by merely comparing the two marks side by side, but requires an examination of the
evidence adduced by the parties.

Analysis - The Court considered the provisions of Section 11(a) and Section 12(1) of the Act,
which prohibit registration of a mark that would deceive or cause confusion with a registered
mark. The Court also referred to relevant case law to support its decision.

Conclusion -The Court directed the Registrar not to register the mark of the second respondent.

 GUFIC LTD. VS CLINIQUE LABORATORIES.

Facts -The respondents/plaintiffs had filed IA No. 15425/2008 seeking interim relief. An ex parte
order had been passed on that application on 16.12.2008 restraining the appellants/defendants
from using the mark ‘CLINIQ’ or any other mark similar to the mark ‘CLINIQUE’ of the
respondents/plaintiffs till the disposal of the application. The defendants were further restrained
from marketing any goods or allowing any goods to be marketed under the impugned trademark
through their distributors or other agents or from advertising the same in any manner whatsoever.
The appellants/defendants had filed IA No. 217/2009 (under Order 39 Rule 4, CPC) for vacating
the said ex parte order dated 16.12.2008. The learned single Judge, by virtue of the impugned
order dated 09.04.2009, disposed of all the three said applications.

Issue -Whether the appellants/defendants' use of the mark ‘CLINIQ’ infringes upon the
respondents/plaintiffs' registered trademark ‘CLINIQUE’?

Ruling -The court held that the appellants/defendants' use of the mark ‘CLINIQ’ infringes upon
the respondents/plaintiffs' registered trademark ‘CLINIQUE’.

Reasoning- The court observed that the respondents/plaintiffs' mark ‘CLINIQUE’ is the most
distinguishing feature of its trademarks and has been in use worldwide since 1968 and in India
since 2007. The court further noted that the appellants/defendants were engaged in the same
business and a presumption could be raised regarding their knowledge of the
respondents'/plaintiffs' registered trademark. The court concluded that the appellants/defendants'
adoption of the mark ‘CLINIQ’ was not above board and constituted infringement under Section
29 of the Act.

Precedent -The court referred to the Supreme Court's decision in a similar trademark
infringement case involving the marks ‘RUSTON’ and ‘RUSTAM INDIA’. The Supreme Court
held that the addition of the word ‘INDIA’ did not prevent infringement, emphasizing that the
trademark as a whole must be considered. The court also cited the Supreme Court's ruling in an
infringement case involving the marks ‘GLUCOVITA’ and ‘GLUVITA’, where it was held that
the marks should be considered as a whole in determining similarity. Additionally, the court
referred to a Division Bench decision involving the marks ‘LAL QUILLA’ and ‘HARA
QUILLA’, where the court found the mark ‘HARA QUILLA’ to be deceptively similar to the
registered trademark ‘LAL QUILLA’ based on the essential feature of the word ‘QUILLA’.
 Conclusion -The court concluded that the learned single Judge erred in finding a prima facie case
of infringement. Therefore, the court allowed the appeal, setting aside the order of the learned
single Judge and vacating the injunction granted.

 NR DONGRE V WHIRLPOOL CORPORATION

Introduction -The case is related to the re-use of a trademark which is already attached to the
goodwill and reputation of an entity.

Facts - The Plaintiffs originally registered the "WHIRLPOOL" trademark for their electrical
appliances, including washing machines, found that the Defendants later began using the same
trademark for their washing machines. Furthermore, the Defendants managed to register this
mark in their own name. In response, the Plaintiffs filed an original lawsuit against the
Defendants, alleging a passing-off action. The Single Judge of the Delhi High Court issued an
interim injunction, preventing the Defendants from using the trademark until the final resolution
of the case. This decision was upheld by the Division Bench. The defendant then filed an appeal
before the Supreme Court for interim injunction.

Issues Involved - Whether a non-registered prior user of a trademark can obtain an injunction
against a competing business that is the registered proprietor of the same or similar trademark in
India?

Whether Whirlpool was a well-known mark and had acquired a trans-border reputation?

Observation - The Delhi HC's Single Judge and Division Bench both favored Whirlpool
Corporation. The Whirlpool Corporation secured a temporary injunction due to presented
documents affirming prior use. The Division Bench upheld this decision, emphasizing the
petitioner's extensive pre-existing trademark use. Evidence of widespread advertisements in
publications supported the conclusion that 'Whirlpool' attained recognition and goodwill in India.

The Division Bench asserted that a trademark could extend beyond geographical boundaries
through both importation and advertising. At the SC, the defendants, claiming registered
ownership, argued for maintaining their trademark status as it is, during the passing-off action.
However, the Supreme Court disagreed, noting irreparable harm to Whirlpool Corporations
reputation and goodwill, given the long association of 'Whirlpool' with their products.
 Conclusion- Finding no compelling reasons to overturn the Delhi HC's decision, the SC ruled in
favor of Whirlpool Corporation.

 KAVIRAJ PANDIT DURGA DUTT SHARMA V NAVARATNA PHARMACEUTICALS

LABORATORIES

Facts - Respondent manufactured medical items under the registered trademarks

‘NAVARATNA’ and ‘NAVARATNA pharmaceutical laboratories,’ while appellant sold
Ayurvedic pharmaceutical products under the name ‘NAVRATNAKALPA.’ The Appellant
appealed the District Court’s decision and also filed an Original Petition in the High Court of
Travancore Cochin, claiming that because the term ‘Navaratna’ is commonly used by Ayurvedic
physicians for medicines made from the nine precious stones and is a generic term used
throughout the Ayurvedic system of treatment, plaintiff cannot claim monopoly over it.

Held- Respondent manufactured medical items under the registered trademarks

‘NAVARATNA’ and ‘NAVARATNA pharmaceutical laboratories,’ while appellant sold
Ayurvedic pharmaceutical products under the name ‘NAVRATNAKALPA.’ The Appellant
appealed the District Court’s decision and also filed an Original Petition in the High Court of
Travancore Cochin, claiming that because the term ‘Navaratna’ is commonly used by Ayurvedic
physicians for medicines made from the nine precious stones and is a generic term used
throughout the Ayurvedic system of treatment, plaintiff cannot claim monopoly over it.

 SONY KABUSHIKI KAISHA VERSUS MAHALUXMI TEXTILE MILLS

Facts

The Plaintiff/Appellant, Sony Kabushiki Kaisha, was a Japanese Co. (also known as Sony
Corporation) engaged in manufacturing and selling diverse range of electronic goods including
video and audio equipment, televisions, etc. under the trademark ‘SONY’ logo
Defendant/Respondent (M/S. Mahaluxmi Textile Mills) was selling the products (hosiery goods,
briefs and underwear) under the same trademark “SONY” without Plaintiff’s consent. As a result,
Plaintiff filed a suit against the Defendant and also applied for an interim injunction. The
application for interim injunction was rejected by the Trial Court. On appeal, the Division Bench
referred the matter to a larger bench, as the Division Bench was unable to decide due to a
judgment (Rustom Ali Molla & Ors. v. Bata Shoe Company Ltd.; AIR 1957 Cal 120) contrary to
its views.

Issue - Whether the similarity of the goods of rival traders is an essential requisite for
maintaining an action for passing off?

Appellant’s Contentions - ‘SONY’ is a world famous mark which has reached such a high level
of distinctiveness that even if it is applied to briefs and underwear, the consumers are likely to
believe that these products are sold by the Appellant.

Appellant mainly relied on the Supreme Court’s decision in the case of ‘Mahendra & Mahendra
Paper Mills Ltd. v. Mahindra & Mahindra Ltd.; 2002 (24) PTC 121 (SC)’

Respondent’s Contentions- There can be monopoly in a trademark only in respect of goods on

which the mark is used, and the rights cannot extend to the entire range of goods available in the
market. It also questioned the applicability of ‘Mahendra & Mahendra Paper Mills Ltd. (supra)’
to the facts of the present case. It submitted that in this judgment, the issue was the misuse of
corporate name, which is different from the application of a trademark on goods.

Held -No, similarity of the goods of the rival traders is not an essential requisite for maintaining
an action for passing off.

Court’s Observations -The meaning of ‘passing off’ was analysed and it was differentiated from
‘infringement’. The main ingredient of passing off is misrepresentation by a trader as regards the
source of his goods, which is likely to deceive the consumers. Whereas, infringement is only
concerned with the improper use of other’s trademark, irrespective of its ability to deceive the
consumers. The submission of the Respondent was rejected. The decision of the Supreme Court
in the case of ‘Mahendra and Mahendra Paper Mills Ltd.’ is on the principle of passing off. A
passing off action lies on the allegations of misuse of both corporate name and trademark. All the
authorities considered in the case of ‘Rustom Ali Molla’ proceeded on an underlying reasoning
that if the goods of the rival traders were different, there would be no possibility of confusion in
the mind of consumers as regards the source or origin of the goods. But from the days of “one
company one product” in the nineteenth century, the commercial world has considerably
 changed. Today, the large corporations operate with multiple products across the globe, where a
trademark is not restricted to only those goods in which its proprietor is directly engaged in.

Therefore, it was held that the decision in the case of ‘Rustom Ali Molla’ was no longer good law
and the views expressed by the Division Bench were agreed with

 MAHENDRA & MAHENDRA PAPER MILLS LTD V MAHINDRA & MAHINDRA LTD

Facts

The plaintiff is a “company” incorporated and registered under the Indian Companies Act, 1913
and is an existing company under the Companies Act, 1956.The annual turnover of the plaintiff
and some of its group companies exceeds Rs 3000 crores. The plaintiff alleges that the name and
trade mark of “Mahindra” is extremely popular in India and is associated with the products and
services of the plaintiff. The defendant has been doing business since 1974 using the trade name
“Mahendra” in a wide range of products. The defendant pleads that it has a reputation of its own
in the name of “Mahendra & Mahendra” and cannot derive any benefit by the name which is
alleged to be similar to that of the plaintiff.

Issues

Whether on the facts and circumstances of the case, the High Court committed an error in
granting the plaintiff's prayer for interim injunction.

Ruling

The object of the interlocutory injunction is to protect the plaintiff against injury by violation of
his rights for which he could not adequately be compensated in damages recoverable in the action
if the uncertainty were resolved in his favour at the trial. The interlocutory remedy is intended to
preserve in status quo, the rights of parties which may appear on a prima facie case. An appeal
against exercise of discretion is said to be an appeal on principle. The appellate court would
normally not be justified in interfering with the exercise of discretion under appeal solely on the
ground that if it had considered the matter at the trial stage it would have come to a contrary
conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial
manner the fact that the appellate court would have taken a different view may not justify
interference with the trial court's exercise of discretion. On the discussions made in the preceding
 paragraphs and for the reasons noted therein, the orders passed by the High Court do not call for
interference. Therefore, the appeal is dismissed with costs.

 BRIHAN KARAN SUGAR SYNDICATE V LOKRANJAN BREWERIES PVT LTD.

Facts- The plaintiff has filed a suit for trademark infringement and passing off. The plaintiff has
also filed a petition for leave under Clause XIV of the Letters Patent, which is currently pending.
The plaintiff has filed a Notice of Motion seeking interim injunctive relief. The plaintiff alleges
that the defendant has been selling its own distillations in bottles that are embossed with the
plaintiff's trademark. The plaintiff's claim is based on the registration of the trademark "TANGO
PUNCH," with "TANGO" being the essential feature of the mark. The defendant has a rival mark
called "TANGO CHARLIE," which the plaintiff argues is distinguishable and distinguished by
consumers. The court has granted the injunction sought by the plaintiff.

Issue - Whether the defendant's use of a mark that is similar to the plaintiff's registered trademark
"TANGO PUNCH" constitutes trademark infringement and passing off.

Arguments - the plaintiff argues that the word "TANGO" is a leading, essential, and memorable
feature of its trademark. The plaintiff's sales for the year 2013-14 alone amount to nearly Rs. 300
crores, with expenses of about Rs. 2.5 crores. The plaintiff discovered that some country liquor
manufacturers were using second-hand bottles embossed with the plaintiff's trademark
"TANGO." The plaintiff issued a Cease and Desist Notice to the defendant. The plaintiff
contends that any product with the same or a deceptively similar mark is likely to confuse and
deceive consumers regarding the manufacturing origin. This, according to the plaintiff, is
detrimental to the distinctive character and reputation of its trademark. The plaintiff's claim is
based on the registration of its trademark, with "TANGO" being an essential, leading, and
memorable feature. The defendant argues that the word "TANGO" is descriptive of the plaintiff's
products' lime or orange flavor and, therefore, cannot be exclusively claimed by the plaintiff. The
defendant further argues that the plaintiff's registration is for a composite label mark and not a
word mark, and, therefore, the plaintiff does not have a monopoly in the word "TANGO. “The
defendant also argues that a defendant cannot complain if they are sued for using a mark without
being aware that it is registered to someone else. The defendant further contends that the plaintiff
itself is a trademark pirate and, therefore, cannot claim any proprietary rights or complain of
infringement. The defendant argues that the plaintiff's marks are a slavish imitation of the
globally renowned cigarette brand State Express 555.vThe defendant relies on Section 28(3) of
the Trade Marks Act, 1999, which confers exclusive rights to the registered proprietor of a
trademark. The defendant argues that the plaintiff cannot rely on this section as it does not have a
valid registration. The defendant also argues that the word "TANGO" is not essential, distinctive,
or unique.

Ruling -The court finds that the word "TANGO" is a leading, essential, and memorable feature of
the plaintiff's trademark. Although the plaintiff's registration is for a composite label mark, the
court holds that the plaintiff is entitled to protection and enforcement of the word "TANGO" as it
is distinctive and not common to the trade. The court rejects the defendant's arguments and grants
the injunction sought by the plaintiff. The court stays the operation of the order for a period of
two weeks.

 RAMDEV FOOD PRODUCTS V ARVINDBHAI RAMBHAI PATEL AND

OTHERS

Facts -The present case involves the interpretation of the provisions of the Trade and
Merchandise Marks Act, 1958 (hereinafter referred to as "the 1958 Act"). The appellant is a
company incorporated under the Companies Act, 1956. In the year 1965, one Rambhai Patel
started a business of grinding and selling spices under the name and style of “Ramdev”. The
registered trade mark was assigned by “Ramdev Masala Stores” in favour of the appellant by
a deed dated 20-5-1990. A “user” agreement was also entered into by the same parties
permitting the firm “M/s Ramdev Masala Stores” to use the said trade mark subject to the
terms and conditions stipulated therein. Indisputably, the firm “Ramdev Masala Stores” was
dissolved on 4-11-1991. Whereas M/s Ramdev Masala was allowed to manufacture and trade
in spices, the business of M/s Ramdev Exports was limited to export of the spices
manufactured by the appellant Company. The first respondent has a right to use the mark as a
concurrent user. However, the defendants were given liberty to manufacture spices in their
factory and sell the same in seven outlets under the trade mark “Ramdev Masala”. The
packings and labels adopted by them were also held to be deceptively similar to the trade
mark “Ramdev” of the appellant. They were held to be at liberty to run business of spices
 under the trade name “Ramdev Masala” without using the registered trade mark “Ramdev
Masala” except in seven outlets.

Issues-Whether the respondents can use the trade mark "Ramdev Masala" without infringing
the appellant's registered trade mark "Ramdev"?

Arguments-The appellant argued that the trade mark “Ramdev Masala” used by the
respondents being deceptively similar with that of the registered trade mark, the same would
interfere with the quality control product of the appellant and, thus, an order of injunction as
was prayed for should have been passed. The respondents argued that they were only allowed
to carry on the existing trade and thereby the respondents were not permitted to start
manufacturing spices under the name and style of “Ramdev Masala” as would be evident
from the fact that they were only entitled to carry on retail business from the seven outlets for
the purpose of selling only the end products upon printing the words “not for resale” which is
a clear pointer to the fact that merely a right to trade therefrom and not manufacture of spices
in the said name had been granted in terms thereof.

Decision - The court held that the respondents in the instant case have adopted a part of the
appellant's registered trade mark as a part of its corporate name. Even under the common law,
licence has to be interpreted to subsume the law and prevent the mischief which is deceptive
having regard to the fact that trafficking in trade mark is not permitted. Even a common law
licence, it is well settled, cannot result in the dilution of the trade mark. The respondents were
restrained from using the trade mark including the trade name “Ramdev Masala” on any of
their products.

 ALAKNANDA CEMENT PRIVATE LIMITED V ULTRATECH CEMENT LIMITED

Facts -By the impugned Judgment and Order dated 20th June, 2011, the learned single Judge (S.J
Kathawala, J.) has allowed the Notice of Motion No. 1183 of 2009 filed by the respondent-
plaintiff in terms of prayer clauses (a) and (b).The plaintiff/respondent has obtained registration
of its trade mark with word mark "ULTRATECH CEMENT". The word mark being used by the
defendant is "ULTRATUFF".
Issues -Whether the defendant's use of the word mark "ULTRATUFF" infringes upon the
plaintiff's registered trade mark "ULTRATECH CEMENT"?

Analysis -Learned Senior Advocate Mr. Chagla relied upon Section 17 of the Trade Mark Act,
1999 and submitted that Section 17(2) carves out an exception. Relying upon Judgment of the
Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories
AIR 1965 Supreme Court 9801, Mr. Chagla submitted that there is difference between an action
for passing off and action for infringement of trade mark. While an action for passing off is a
common law remedy being in substance an action for deceit, the action for infringement is a
statutory remedy conferred on the registered proprietor of a registered trade mark for the
vindication of "the exclusive right to the use of the trade mark in relation to those goods”.
According to the defendants, the plaintiff has been granted registration only for the trade mark
type "Device" but is not granted registration as a "Word Mark". According to the defendants,
many other trade marks having the word "ULTRA" or "TECH" have been registered. In fact in
paragraphs 22 to 24 of the Judgment of the learned Single Judge a finding has been recorded that
the invoices relied upon by the defendants are fabricated and the word "ULTRATUFF" is
superimposed on the said invoices. According to Mr. Chagla, since the registration granted to the
plaintiff is a limited registration, the provisions of section 17 are attracted and, hence, the
injunction as claimed could not have been granted as, on account of Section 17(2) of the Trade
Mark Act, 1999, the registration does not confer any exclusive right in respect of only part of the
trade mark namely the word "ULTRA" .The trade mark of the plaintiff which is registered is
"ULTRATECH CEMENT The Engineer's Choice" which is clear from the certificate issued by
the Trade Marks Registrar. If the two marks are identical and the goods and services are similar
or if the two marks are similar and the goods and services are identical, the court has to weigh the
likelihood of confusion or assess whether the defendant's mark is likely to have an association
with the plaintiff's registered mark. The right that the owner of a device or label mark obtains is,
loosely speaking, somewhat similar to copyright. But in view of Section 17(2)(a) of the 1999 Act,
such assertion has to be as in passing off and may not be made in aid of a case of infringement.
Section 17(2) and the world beyond the statute that is recognised in Section 27 of the 1999 Act
has a combined effect of permitting the registered owner to claim exclusivity of a part of the
whole of the registered mark, but only on a cause of action of passing off. But it would appear
that an infringement action may not be run on the basis of an unregistered part of the registered
whole of a trademark. If a registered mark is capable of being broken in parts, the registered
owner may not sue for infringement upon a part being copied by another. On a visual comparison
 of the rival marks, similarity is absolutely striking and, hence, even though the words "ULTRA"
or "ULTRA TECH" are not subject matter of a separate application, in our considered opinion,
the present case is covered by Sub-Section (1) of Section 17 of the Trade Marks Act, 1999.In our
opinion, the registered mark of the plaintiff is not capable of being broken in parts as argued by
Mr. Chagla and atleast at the interlocutory stage it is not possible to accept his submission that the
case in hand is governed by sub-section (2) of section 17. This takes us to the third submission of
Mr. Chagla that without prejudice to his submissions regarding Section 17, in fact there is no
similarity between the plaintiff's registered trade mark and the mark used by the defendants. It is
no doubt true that the words "The Engineer's Choice" as used by the plaintiff are absent in the
mark used by the defendants. Mr. Chagla submitted that the words "The Engineer's Choice" were
not part of the mark being used by the defendants. It is well known that the question whether the
two marks are likely to give rise to confusion or not is a question of first impression. We also
agree with Desai J. that the idea of the two marks is the same. Grant or refusal of injunction is an
equitable relief and the defendants have not approached the Court with clean hands as they have
sought to produce invoices/receipts which are prima facie fabricated invoices/receipts. The
learned Judge has considered the factual aspects and the provisions of law in proper perspective.
There is no merit in the Appeal and the same is accordingly dismissed with cost.

 UNITED BIOTECH PVT LTD. V ORCHID CHEMICALS AND PHARMACEUTICALS

Issue - Whether the registration of the trademark FORZID should be removed or rectified due to
its similarity to the earlier registered trademark ORZID.

Summary-The appellant obtained registration of the trademark FORZID on October 18, 2002.
The respondent filed an application for removal of the trademark or rectification of the register
under Sections 9, 11, 18, 57, and 125 of the Trademarks Act, 1999. The respondent claimed that
the trademark FORZID was deceptively similar to their earlier registered trademark ORZID. The
Intellectual Property Appellate Board (IPAB) accepted the respondent's plea and directed the
Registrar of Trademarks to remove the trademark FORZID from the register. The appellant filed
a Writ Petition challenging the IPAB's decision, but it was dismissed by the learned Single Judge.
The respondent also filed a civil suit seeking injunction against the appellant's use of the
trademark FORZID. The IPAB held that the trademark FORZID was deceptively similar to the
earlier trademark ORZID. The applicant argued that the dosages of FORZID and ORZID were
not the same, but the court held that the reasoning and conclusion of the IPAB did not require
interference. The court also held that the appellant adopted the trademark FORZID with dishonest
 and mala fide intention and had set up a false claim of user date. The court further held that the
respondent, being the subsequent adopter of the mark, cannot claim to be the proprietor of the
impugned trademark. The court dismissed the appellant's argument that the respondent's
registration was only for a label mark. The court also discussed the provisions of Section 124 of
the Trademarks Act, 1999 regarding the stay of proceedings in a civil suit where the validity of
the registration of a trademark is questioned. The court concluded that the IPAB and the learned
Single Judge applied the correct test in determining that the two marks were deceptively similar
and likely to cause confusion. The court found no cause to interfere with the findings of fact.

Outcome - The court affirmed the decision of the IPAB and dismissed the appellant's Writ
Petition.

 RUSTON V HORNSBY LTD V THE ZAMINDARA ENGINEERING COMPANY

Facts- The appellant, a limited liability company incorporated under the English Companies Act,
has a subsidiary in India called Ruston Hornsby (India) Ltd. The appellee, Ruston Hornsby
(India) Ltd., was sued by the appellant for infringement of its trademark "RUSTAM INDIA."
However, the High Court held that the use of the words "RUSTAM INDIA" was not an
infringement because the plaintiff's engines were manufactured in England and the defendant's
engines were manufactured in India.

Issues -Whether the use of the words "RUSTAM INDIA" by the appellee constituted trademark
infringement and whether the appellant is entitled to an injunction and damages.

Rules -The distinction between an infringement action and a passing off action is important. The
action for infringement is a statutory right. The common law courts, however, adhered to their
view that fraud was necessary until the Judicature Acts, by fusing law and equity, gave the
equitable rule the victory over the common law rule.

Analysis -The High Court held that the use of the words "RUSTAM INDIA" by the appellee did
not constitute trademark infringement. The appellant has not appealed this decision and,
therefore, cannot challenge it. However, the appellant is entitled to an injunction restraining the
appellee and its agents from selling or advertising for sale of engines, machinery or accessories
under the name of "RUSTAM" or "RUSTAM INDIA." The appellant is also granted a decree for
nominal damages to the extent of Rs 100.
 TOYOTA JIDOSHA KABUSHIKI KAISHA . . Versus PRIUS AUTO INDUSTRIES
LIMITED AND OTHERS

Facts -The plaintiff is an automobile manufacturer incorporated under the laws of Japan. They
launched the world's first commercial hybrid car called 'Prius' in Japan in 1997, and in other
countries like U.K., Australia, the U.S.A. etc. during the year 2000-2001. However, the car was
not released in India until 2009, and until that point, the plaintiff had not obtained registration of
the mark 'Prius' in India. The car was displayed in car shows in Delhi and Bangalore held in 2009
and formally launched in India in 2010. The defendants claimed to be the first in India to
manufacture add-on chrome plated accessories and had conceptualized their attempt as 'pehela
prayas' (Hindi word meaning first attempt). The plaintiff was regularly supplying auto accessories
to various automobile giants like Hyundai Motors and General Motors. The learned trial Judge
held that the mark 'Prius' had satisfied the definition of a "well-known trade mark" under Section
2(1)(zg) read with Section 11(6) & 11(9) of the Act and that the defendants were guilty of passing
off their goods under the mark, of which the plaintiff was the first user. Consequently, permanent
injunction restraining the use of the mark 'Prius' by the defendants in order to prevent passing off
the defendants' goods as the plaintiffs' was issued and damages quantified at 0.25% of the total
sales, amounting to Rs.10 lakhs, was awarded.

Issues -Whether the plaintiff had acquired a substantial goodwill for its car under the brand name
'Prius' in the Indian market. Whether the trade mark 'Prius' was a well-known mark. Whether the
defendants were guilty of passing off their goods under the mark, of which the plaintiff was the
first user.

Ruling -The learned trial Judge held that the mark 'Prius' had satisfied the definition of a "well-
known trade mark" under Section 2(1)(zg) read with Section 11(6) & 11(9) of the Act and that the
defendants were guilty of passing off their goods under the mark, of which the plaintiff was the
first user. Consequently, permanent injunction restraining the use of the mark 'Prius' by the
defendants in order to prevent passing off the defendants' goods as the plaintiffs' was issued and
damages quantified at 0.25% of the total sales, amounting to Rs.10 lakhs, was awarded. The
Division Bench of the High Court held that the plaintiff was aware of the defendants' mark at
least from April, 2003. The court also held that the trade mark 'Prius" did not have transborder
reputation permeating into India. The court further stated that the plaintiff had not led any
 evidence to show that any section of the consuming public was misled by the use of the trade
mark 'Prius' by the defendants.

Reasoning -The territoriality principle must govern the matter, and there must be adequate
evidence to show that the plaintiff had acquired a substantial goodwill for its car under the brand
name 'Prius' in the Indian market. The car itself was introduced in the Indian market in the year
2009-2010. The overwhelming judicial and academic opinion all over the globe is in favour of
the territoriality principle. A passing off action can even lie against a registered proprietor of the
mark sued upon. However, a rule of law dealing with this situation has to avoid the opposite
scenario of bona fide domestic traders finding themselves open to litigation at the suit of
unknown or barely known claimants from almost anywhere in the world. To give effect to the
territoriality principle, the courts must necessarily have to determine if there has been a spillover
of the reputation and goodwill of the mark used by the claimant who has brought the passing off
action.

 M/s. Nandhini Deluxe v. M/s. Karnataka Co-operative Milk Producers Federation Ltd

Facts- The respondent has been using the 'NANDINI' trademark since 1985 for milk and milk
products. The appellant began using the 'NANDHINI' trademark in 1989 for foodstuffs. The
respondent objected to the appellant's trademark, claiming it was deceptively similar to their own
and would cause confusion among the public. The Deputy Registrar granted registration to the
appellant, with the exception of milk and milk products. The respondent appealed this decision to
the IPAB, which affirmed the Deputy Registrar's decision. The respondent then appealed to the
High Court, which reversed the decision and denied registration to the appellant. The appellant
appealed this decision to the Supreme Court.

Issue- Whether the appellant's 'NANDHINI' trademark is deceptively similar to the respondent's
'NANDINI' trademark and whether the appellant is entitled to registration of their trademark.

Holding- The Supreme Court set aside the decisions of the IPAB and High Court and restored the
Deputy Registrar's decision, granting registration to the appellant with the exception of milk and
milk products.

Reasoning- The Court found that the appellant's 'NANDHINI' trademark was not deceptively
similar to the respondent's 'NANDINI' trademark, and that the appellant was entitled to
registration of their trademark. The Court also noted that the appellant had been using their
 trademark since 1989, soon after the respondent began using their own trademark, and that it
appeared to be a case of concurrent use. The Court ultimately granted registration to the
appellant, with the exception of milk and milk products.

Rule of Law -Section 9 of the Trade Marks Act prohibits the registration of generic words as
trademarks, unless they have acquired distinctiveness and are associated with the
person/company using the mark. Where a trademark has been determined to be well-known in at
least one relevant section of the public in India by any court or Registrar, the Registrar shall
consider that trademark as a well-known trademark for registration under the Act. Section 11 of
the Trade Marks Act prohibits the registration of a mark and the goods in which it is sought for
registration if it is likely to deceive or confuse. Section 12 of the Trade Marks Act prohibits the
registration of identical or deceptively similar trademarks in respect of goods and description of
goods which is identical or deceptively similar to the trademark already registered. Disposition -
The Supreme Court set aside the decisions of the IPAB and High Court and restored the Deputy
Registrar's decision, granting registration to the appellant with the exception of milk and milk
products. Outcome The appellant was granted registration of their 'NANDHINI' trademark, with
the exception of milk and milk products.

 PATEL FIELD MARSHAL AGENCIES AND ANOTHER Versus P.M DIESELS

LIMITED AND OTHERS

Facts - A question of importance in Intellectual Property Rights jurisdiction has arisen in this
case. The defendant, P.M. Diesels Ltd., is the registered owner of three trade marks with the
common feature of the words "Field Marshal." The plaintiff filed an Interlocutory Application for
interim injunction, which was dismissed by the Delhi High Court on the grounds of lack of
jurisdiction. The plaintiff has challenged this order in Civil Appeal Nos.4767-4769 of 2001.

Issue -The issue is whether the right to seek rectification under Sections 46 and 56 of the 1958
Act exists in a situation where in a suit for infringement, the plea of invalidity is found to be
prima facie, not tenable.

Ruling -The Full Bench of the Delhi High Court held that where registration of a trade mark is
questioned after initiation of a suit for infringement, it is open for the party setting up the plea of
invalidity to apply to the IPAB under Sections 47 and 57 of the 1999 Act for rectification. The
right to seek rectification under Sections 47 and 57 of the 1999 Act does not stand extinguished in
a situation where in a suit for infringement, the plea of invalidity is found to be prima facie not
tenable. The only difference is that while under Sections 47 and 57 of the 1999 Act, the aggrieved
party can move the Registrar for rectification, in the latter situation i.e. where a suit is pending, it
is the IPAB which alone acquires jurisdiction to the exclusion of the Registrar.

Analysis -The provisions of Section 124(3) of the 1999 Act should be interpreted to mean that if
rectification proceedings are not filed within the period stipulated under Section 124(2) of the
1999 Act, or any extended period, the issue of invalidity of the registered trade mark would not
survive to be decided and the said plea would be deemed to have been abandoned. The defendant
by operation of Section 111(3) of the 1958 Act is deemed to have abandoned the plea of
invalidity. If the right under Section 46/56 of the 1958 Act is to subsist even in such a situation,
the possible uncertainty and possible anarchy may well be visualized. The mandate of the 1958
Act, particularly, Section 111 thereof, appears to be that if an aggrieved party does not approach
the Tribunal for a decision on the issue of invalidity of registration as provided for under Section
111(2) and (3), the right to raise the issue (of invalidity) would no longer survive between the
parties to enable the concerned party to seek enforcement of the same by recourse to or by a
separate action under the provisions of Section 46/56 of the 1958 Act.

Conclusion -The Court dismissed all the appeals under consideration and affirmed the order
passed by the High Courts.