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LEGAL STUDY MATERIAL FOR ALL

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Notes For CUET

Trade Marks Act

AN INITIATIVE BY-
UJJAWAL DIXIT
Advocate, Allahabad High Court
B.A.LLB (NLU NAGPUR)
LLM (RML NLU)
CLAT PG 2023- AIR 35
CLAT PG 2024-AIR 22
UGC NET Qualified

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Very Important Sections in the Trade Marks Act, 1999

Section Concept

Section 2 Definitions and interpretation of key terms used in the Act.

Absolute grounds for refusal of trademark registration (e.g., generic, descriptive,

Section 9
offensive marks).

Relative grounds for refusal (confusion with existing trademarks, deceptive

Section 11
similarity).

Section 12 Registration in the case of honest concurrent use or special circumstances.

Section 17 Trademark must be considered as a whole.

Section 28 Rights conferred by registration, including exclusive rights to use the trademark.

Section 29 Trademark infringement (likelihood of confusion).

Section 30 Limits on infringement (e.g., fair use, descriptive use).

Section 31 Registration to be prima facie evidence of validity.

Effect of acquiescence—prevents the proprietor of an earlier mark from opposing a

Section 33
later mark if they have knowingly allowed its use for five years.

Section 34 Prior user rights override later registration.

Section
Well-known trademarks enjoy broader protection.
11(2)

Section 27 No infringement action for unregistered marks, but passing off action is allowed.

Section
Jurisdiction for trademark infringement cases.
134

Section Remedies and reliefs available (injunctions, damages, destruction of infringing

135 goods).
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1. Trademark Taken as a Whole

Case Law Held

Trademarks must be viewed as a whole, not split

Micronix India vs. Mr. J.R. Kapoor (2003)
into parts.

Amritdhara Pharmacy vs. Satya Deo

Phonetic similarity should be judged holistically.
Gupta (1963)

Cadila Laboratories Ltd. v. Dabur India Dissection of words is not allowed in

Ltd. (1997) determining similarity.

2. Visual, Phonetic Similarity & Deceptive Similarity

Case Law Held

Both visual and phonetic similarity should be

Roche & Co. vs. Geoffrey Manners (1970)
tested.

Ruston & Hornby Ltd. v. Zamindara Phonetic similarity alone can establish
Engineering Co. (1970) infringement.

Cadila Healthcare Ltd. v. Cadila Stricter rules for pharmaceutical trademarks

Pharmaceuticals Ltd. (2001) due to health risks.

3. Prior Use vs. Registration

Case Law Held

Consolidated Foods Corporation v. Brandon & Prior commercial use prevails over later
Co. (1965) registration.
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Case Law Held

Neon Laboratories Ltd. v. Medical Technologies

First commercial user has superior rights.
Ltd. (2016)

First use in market applies over

ITC Ltd. v. Britannia Industries Ltd. (2016)
registration.

4. Passing Off

Case Law Held

DM Entertainment v. Baby Gift House Passing off occurs when a deceptive mark misleads
(2010) consumers.

Century Traders v. Roshan Lal

Prior use is the deciding factor in passing off claims.
Duggar & Co. (1978)

Reckitt & Colman Products Ltd. v. Established the three elements: goodwill,
Borden Inc. misrepresentation, and damage.

5. Well-Known Trademarks & Special Protection

Case Law Held

Toyota Jidosha Kabushiki Kaisha v. Prius Auto Global reputation must be proven in
Industries Ltd. (2018) India.

Well-known marks are protected even in

Bata India Ltd. v. Pyare Lal & Co. (1985)
unrelated goods.

Daimler Benz v. Hybo Hindustan (1994) Luxury brand dilution is not allowed.
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6. Likelihood of Confusion & Consumer Protection

Case Law Held

Similarity in broad and essential features can

Parle Products v. J.P. & Co. (1972)
cause confusion.

Corn Products v. Shangrila Food Confusion is judged from the point of view of an
Products (1960) average buyer.

Satyam Infoway Ltd. v. Sifynet Solutions Confusion arises if consumers assume an

Pvt. Ltd. (2004) association between brands.

7. Doctrine of Deceptive Similarity

Case Law Held

Phonetically similar names can mislead

Glucovita v. Gluvita
consumers.

Ruston & Hornby Ltd. v. Zamindara Minor spelling changes do not prevent
Engineering Co. confusion.

Phonetic resemblance is sufficient for

Pepsi v. Pipsi
deception.

8. Doctrine of First in the Market (Prior Use)

Case Law Held

S. Syed Mohideen v. P. Sulochana Bai

Prior use is superior to registration.
(2016)
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Case Law Held

Milmet Oftho Industries v. Allergan Foreign prior use may be recognized in India if
Inc. (2004) reputation exists.

Lal Babu Priyadarshi v. Amrit Pal

Honest prior use prevails over later registration.
Singh (2009)

9. Doctrine of Dilution

Case Law Held

Famous marks cannot be diluted by unrelated

Rolex SA v. Alex Jewellery Pvt. Ltd.
industries.

Bajaj Electricals Ltd. v. Metals & Allied Trademark dilution applies even without
Products confusion.

Daimler Benz v. Hybo Hindustan Luxury brands are protected from dilution.

10. Doctrine of Consumer Confusion

Case Law Held

Cadila Healthcare Ltd. v. Cadila Likelihood of confusion is enough; actual

Pharmaceuticals Ltd. (2001) confusion not required.

Amritdhara Pharmacy v. Satya Deo Gupta Phonetic similarity must be evaluated

(1963) holistically.

Domain names can infringe trademarks if they

Yahoo! Inc. v. Akash Arora (1999)
create confusion.
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11. Doctrine of Honest Concurrent Use

Case Law Held

Kores India Ltd. v. Whale Stationery Concurrent use of similar marks is permitted if
Products Ltd. used honestly.

London Rubber Co. Ltd. v. Durex Honest adoption and continuous use allow co-
Products existence.

Concurrent use must not cause confusion among

Tata Sons Ltd. v. Manu Kosuri
consumers.

12. Comparative Advertising & Disparagement

Case Law Held

Hindustan Lever Ltd. v. Colgate Comparative advertising must not mislead or degrade
Palmolive Ltd. competitors.

Reckitt Benckiser v. Hindustan False claims about a competitor's product amount to

Unilever disparagement.

Pepsi Co. v. Coca-Cola Co. Brand comparisons must be fair and backed by data.

13. Classic Trinity Test & Passing Off

Case Law Held

Harrods Ltd. v. Harrodian School Goodwill does not automatically extend to unrelated
Ltd. (1996) industries.

Reckitt & Colman Products Ltd. Established goodwill, misrepresentation, and damage as
v. Borden Inc. elements of passing off.
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Case Law Held

Established brand goodwill prevents misrepresentation by

Honda Motors v. Charanjit Singh
others.

Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) –

Supreme Court of India

Issue

• Whether the trademarks "Falcigo" and "Falcitab" were deceptively similar, leading to
likelihood of confusion among consumers in the pharmaceutical industry.

What Was Held

• The Supreme Court ruled in favor of Cadila Healthcare Ltd., stating that stricter
principles should apply in pharmaceutical trademark disputes due to the potential
health risks of confusion.
• Likelihood of confusion is sufficient for infringement, even if actual confusion is not
proven.

Key Legal Principles Established

1. Stricter Rules for Pharmaceutical Products – Confusing drug names can pose serious
health risks.
2. Likelihood of Confusion is Enough – No need to prove actual confusion; mere
likelihood is sufficient.
3. Public Interest Prevails Over Business Interests – Safety of consumers is prioritized
over commercial interests.

Relevant Sections
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• Section 29 (Trademark Infringement)

• Section 11 (Likelihood of Confusion as a Ground for Refusal)

Cadbury India Limited v. Neeraj Food Products – Delhi High

Court (2007)

Issue

• Whether the use of the name "Cadbury" by Neeraj Food Products was an
infringement and amounted to passing off.

What Was Held

• The Delhi High Court ruled in favor of Cadbury India, granting a permanent
injunction against Neeraj Food Products, preventing them from using the "Cadbury"
name on their products.
• It was held that well-known trademarks enjoy broader protection, even for unrelated
goods.

Key Legal Principles Established

1. Well-Known Trademarks Have Stronger Protection – The court recognized

"Cadbury" as a famous brand with exclusive rights.
2. Consumer Confusion in Passing Off – A strong brand’s reputation cannot be exploited
by competitors.
3. Deceptive Similarity is Sufficient – Even if the infringing product is different,
misleading consumers is enough for legal action.

Relevant Sections

• Section 29 (Trademark Infringement)

• Section 11(2) (Protection for Well-Known Trademarks)
• Section 27 (Passing Off)
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Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) – Supreme

Court of India

Issue

• Whether the use of similar domain names (sifynet.com & sifymall.com) amounted to
trademark infringement and passing off.

What Was Held

• The Supreme Court ruled in favor of Satyam Infoway Ltd., stating that domain
names function like trademarks and can be legally protected.
• A likelihood of confusion arises when an average consumer assumes an association
between the two brands.

Key Legal Principles Established

1. Domain Names as Trademarks – The court recognized that domain names can function as
trademarks.
2. Passing Off in Online Businesses – Even without identical names, online brand confusion
can lead to infringement.
3. Consumer Perception in Cyberspace Matters – The decision reinforced that consumer
confusion applies to online platforms just as in physical markets.

Relevant Sections

• Section 29 (Trademark Infringement)

• Section 27 (Passing Off)

Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) –

Supreme Court of India

Issue
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• Whether the similarity between "Falcigo" and "Falcitab" created a likelihood of

confusion that could affect public health.

What Was Held

• The Supreme Court ruled that stricter scrutiny should apply in pharmaceutical
cases to avoid medication errors due to similar names.
• Likelihood of confusion alone was sufficient to restrict use.

Key Legal Principles Established

1. Pharmaceutical Products Require Stricter Standards – Confusion between drug

names can be dangerous.
2. Likelihood of Confusion is Enough – Courts should prevent even potential confusion.
3. Public Interest is Paramount – Patient safety is more important than business interests.

Relevant Sections

Section 29: Infringement of Registered Trade Marks

Key Provisions:

1. Definition of Infringement
o If a person (not the registered proprietor or permitted user) uses an identical or
deceptively similar mark in trade concerning registered goods or services, it
constitutes infringement.
2. Likelihood of Confusion (Sub-section 2)
o A trademark is infringed if a person uses a mark that:
▪ Is identical to the registered mark and covers similar goods/services.
▪ Is similar to the registered mark and covers identical/similar
goods/services.
▪ Is identical to the registered mark and covers identical goods/services.
o The use must likely confuse the public or create an association with the registered
mark.
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3. Presumption of Confusion (Sub-section 3)

o If a mark is identical and used for identical goods/services, courts will presume
confusion.
4. Use for Dissimilar Goods/Services (Sub-section 4)
o Even for different goods/services, infringement occurs if:
▪ The registered mark is reputed in India.
▪ The unauthorized use unfairly takes advantage of or harms the mark’s
reputation.
5. Use in Trade Name (Sub-section 5)
o Using the registered trademark as part of a trade name for similar goods/services
is an infringement.
6. Forms of Infringing Use (Sub-section 6)
o A mark is considered "used" if:
▪ Affixed to goods/packaging.
▪ Offered for sale, stocked, or advertised under the registered mark.
▪ Imported/exported under the mark.
▪ Used on business papers.
7. Unauthorized Application (Sub-section 7)
o Infringement includes unauthorized application of the mark to materials intended
for labeling, packaging, or advertising.
8. Advertising Infringement (Sub-section 8)
o Advertising a registered mark amounts to infringement if:
▪ It takes unfair advantage.
▪ It harms the distinctive character or reputation of the mark.
9. Spoken Use (Sub-section 9)
o If a trademark consists of words, its spoken use can also be infringement, not just
its visual representation.

Section 11 (Likelihood of Confusion): Relative Grounds for Refusal

of Registration
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Key Provisions:

1. Likelihood of Confusion (Sub-section 1)

o A trademark cannot be registered if:
▪ It is identical to an earlier trademark and relates to similar
goods/services.
▪ It is similar to an earlier trademark and relates to identical or similar
goods/services.
▪ If such similarity creates public confusion or association with the earlier
mark.
2. Protection of Well-Known Trademarks (Sub-section 2)
o A trademark cannot be registered if:
▪ It is identical/similar to a well-known trademark in India.
▪ Its use would unfairly exploit or harm the well-known mark’s reputation.
3. Protection Against Passing Off & Copyright Violation (Sub-section 3)
o Registration will be denied if:
▪ The trademark’s use can be prevented by law, such as:
▪ Passing off laws protecting unregistered trademarks.
▪ Copyright laws preventing misuse.
4. Consent-Based Registration (Sub-section 4)
o A trademark can be registered if:
▪ The proprietor of an earlier mark consents to the registration.
5. Definition of an Earlier Trademark (Explanation)
o An earlier trademark includes:
▪ Registered marks or pending applications with an earlier filing date.
▪ Well-known marks recognized in India.
6. Determining a Well-Known Trademark (Sub-sections 6-10)
o Factors considered:
▪ Public knowledge and recognition in India.
▪ Extent and duration of usage, advertising, and registrations.
▪ Previous enforcement and legal recognition.
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o No mandatory conditions such as prior use or registration in India.

o Well-known marks get priority protection against later registrations.
7. Registrar’s Role (Sub-section 10)
o The Registrar must protect well-known trademarks from similar or identical
marks.
o Must consider bad faith during application or opposition proceedings.

Trademark Taken as a Whole

Concept

• A trademark must be considered in its entirety and not split into individual elements
when assessing similarity or likelihood of confusion.
• The overall impression of the mark, including visual, phonetic, and structural
aspects, should be examined.

Key Principles

1. Holistic Approach to Trademark Comparison

o Trademarks should not be dissected into individual parts to determine
similarity.
o Courts assess the entire mark as it appears to consumers in the marketplace.
2. Avoiding Letter-by-Letter Comparisons
o Instead of comparing each component separately, the mark should be examined
as a whole to assess its distinctiveness.
o Even if a part of the mark is similar, the overall structure, design, and phonetic
sound are relevant.
3. Distinctiveness and Consumer Perception
o The distinctive elements of a trademark contribute to its recognition.
o Courts examine whether an ordinary consumer with imperfect recollection is
likely to confuse the marks.
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4. Essential Feature Rule

o If a part of the mark is generic or commonly used in trade, then the remaining
distinctive elements must be given weight.
o Generic terms cannot be monopolized, and only the unique parts of the mark
contribute to its identity.

Legal Basis Under the Trade Marks Act, 1999

Section Concept

Section
Protection extends to the entire mark as registered, not just individual components.
17

Section
Relative grounds for refusal if a mark is deceptively similar to an earlier mark.
11

Section Trademark infringement occurs if the overall impression of a mark is likely to cause
29 confusion.

Application in Trademark Law

✅ When a Trademark is Considered as a Whole

• A composite trademark (logo + word) cannot be broken down into separate parts for
comparison.
• Visual, phonetic, and conceptual similarities are assessed together.

❌ When a Trademark is NOT Considered as a Whole

• If a generic term is part of the mark (e.g., “Micro” in "Micronix" and "Microtel"), the
generic word alone cannot be monopolized.
• Commonly used descriptive words are often excluded when determining infringement.
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Practical Examples

✅ Allowed – Trademarks Evaluated as a Whole

• "AMUL" and "ANMUL" → Phonetically and structurally similar, leading to

confusion.
• "TANISHQ" and "TANISHKA" → Overall impression is similar, potential
infringement.

❌ Not Allowed – Trademarks Cannot Be Split

• "MICRONIX" vs. "MICROTEL" → "Micro" is a common term, so comparison must

consider full names.
• "APPLE COMPUTERS" vs. "APPLE GOLD JEWELLERS" → Different industry,
unlikely confusion.

Visual, Phonetic Similarity & Deceptive Similarity

Concept

• Visual, phonetic, and structural similarities between trademarks can lead to consumer
confusion and trademark infringement.
• Even if trademarks are not identical, if they are deceptively similar, they may cause
confusion in the minds of consumers.
• Courts use a holistic test to evaluate whether two marks look, sound, or give the same
commercial impression.

Key Principles

1. Visual Similarity
o The appearance, color scheme, design, typography, and layout of the
trademarks are compared.
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o If a trademark looks similar to another at first glance, there is a likelihood of

confusion.
2. Phonetic Similarity
o If two trademarks sound similar when spoken, it may lead to confusion among
consumers.
o Courts apply the phonetic test to determine if an average consumer with
imperfect recollection could confuse the brands.
3. Structural Similarity
o The syllabic structure, word length, and pronunciation patterns of the marks
are examined.
o Even if the spelling is different, if the pronunciation is similar, the trademark
may be deceptive.
4. Doctrine of Deceptive Similarity
o If a mark misleads consumers into believing that two products are from the same
company, it is deceptively similar.
o Courts assess whether a reasonable consumer could mistakenly associate the
two brands.

Legal Basis Under the Trade Marks Act, 1999

Section Concept

Section A trademark cannot be registered if it is similar to an earlier mark and causes

11(1) confusion.

Section A registered trademark is infringed if an identical or deceptively similar mark is

29(2) used for similar goods/services.

Section Protection for well-known trademarks even for unrelated goods if the mark is
29(4) deceptively similar.

Application in Trademark Law

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✅ When a Trademark is Considered Deceptively Similar

• "Glucovita" and "Gluvita" → Phonetically similar, likely to confuse consumers.

• "Amritdhara" and "Lakshmandhara" → Similar in pronunciation, likely confusion.
• "RUSTON" and "RUSTAM" → Minor spelling change, but same phonetic impact.

❌ When a Trademark is Not Considered Deceptively Similar

• "Microsoft" and "Microchip" → Common word "Micro" does not make them similar.
• "Rolex" and "Rolax" (for footwear) → Different industry, unlikely confusion.

Tests Used to Determine Similarity

1. The Eye Test (Visual Similarity Test)

o Compares the overall design, font, style, and color scheme of the marks.
o Example: "Tanishq" vs. "Tanshik" → Visually similar.
2. The Ear Test (Phonetic Similarity Test)
o Compares the sound and pronunciation of the marks.
o Example: "Pepsi" vs. "Pipsi" → Phonetically similar.
3. The Structural Test
o Examines the word construction and number of syllables in the marks.
o Example: "Haldiram’s" vs. "Haldikart" → Structurally similar.
4. The Consumer Confusion Test
o Assesses if an average consumer with imperfect recollection could confuse the
two brands.
o No need for actual confusion; the likelihood is enough.

Prior Use vs. Registration

Concept

• Prior use of a trademark has superior rights over later registration.

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• Even if a trademark is registered, an earlier user can continue using it if they prove
continuous and bona fide use.
• The "First in the Market" principle ensures that the first user retains exclusive
ownership, even against a registered proprietor.

Key Principles

1. First Use Trumps Registration

o Trademark ownership is established through use, not just registration.
o The first person to use a mark in commerce gets priority.
2. Continuous Use is Required
o The prior user must show uninterrupted and genuine commercial use.
o Intermittent or casual use does not establish ownership.
3. Mere Registration Does Not Grant Exclusive Rights
o If a registered proprietor was not the first to use the mark, they cannot stop
the prior user.
o Registration only serves as prima facie evidence of ownership, but it is not
absolute.
4. Doctrine of Prior User Protection
o A prior user’s rights cannot be affected by later registration by another party.
o Even a well-known mark cannot override an earlier bona fide user’s rights.

Legal Basis Under the Trade Marks Act, 1999

Section Concept

Section 34 Prior user rights override later registration.

Section 31 Registration serves as prima facie evidence of ownership, but can be challenged.

Section 11(5) Trademark applications can be opposed based on prior use.

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Section 31: Registration as Prima Facie Evidence of Validity

1. Legal Presumption
o A registered trademark is presumed valid in all legal proceedings.
o This applies to the original registration and any subsequent assignments or
transmissions.
2. Challenge to Validity
o A registered trademark cannot be declared invalid merely because it was not
registrable under Section 9.
o If distinctiveness was not established at the time of registration, it can be proven
later.
3. Burden of Proof
o The party challenging the validity must provide evidence to disprove
distinctiveness.

Section 34: Saving for Vested Rights

1. Protection of Prior Users

o A registered trademark owner cannot prevent a person from using an identical or
similar mark if they have been continuously using it before:
▪ The owner started using it.
▪ The trademark was registered.
2. Continuous Use is Key
o The earlier user must have been using the mark without interruption.
o If proven, the earlier user retains their rights despite later registration by another
party

Application in Trademark Law

✅ When Prior Use Supersedes Registration

• A small business using a name for 10 years cannot be stopped by a big company
registering it later.
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• A regional brand using a name earlier retains rights over a national brand
registering the same name.

❌ When Prior Use Does Not Apply

• If the prior use is not continuous, the later registrant may gain rights.
• If the prior use was sporadic, abandoned, or non-commercial, the later registrant
may prevail.

Tests to Prove Prior Use

1. Date of First Use

o Evidence such as invoices, advertisements, promotional materials, and sales
records proving use before the registered mark.
2. Extent of Use
o Geographical spread of use (local, regional, or national).
3. Genuine Commercial Use
o The mark must have been used in trade, not just reserved for future use.

Passing Off

Concept

• Passing off protects the goodwill of a business by preventing others from

misrepresenting their goods/services as those of another.
• Unlike trademark infringement, which applies only to registered marks, passing off
applies to both registered and unregistered trademarks.
• The core principle is that "No one should benefit from the reputation of another
business by misleading consumers."

Key Principles

1. Protection of Goodwill
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o The plaintiff must establish that their mark has gained reputation and
goodwill in the market.
2. Misrepresentation by the Defendant
o The defendant's use of a similar mark must create confusion among
consumers, making them believe the goods/services originate from the plaintiff.
3. Likelihood of Damage
o The plaintiff must show that they have suffered or are likely to suffer loss due
to the defendant’s misrepresentation.
4. No Need for Registration
o Even an unregistered trademark owner can sue for passing off if they can
prove goodwill, misrepresentation, and damage.

Legal Basis Under the Trade Marks Act, 1999

Section Concept

Section 27(1) No action for infringement of an unregistered mark.

Section 27(2) Passing off rights protect unregistered trademarks.

Section 135 Remedies available for passing off (injunction, damages).

Application in Trademark Law

✅ When Passing Off is Applicable

• An unregistered business name is copied by another competitor, leading to

consumer confusion.
• A small business with local goodwill is affected by a larger company adopting a
similar name.

❌ When Passing Off Does Not Apply

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• If there is no misrepresentation or confusion.

• If the plaintiff’s mark has no prior goodwill.

Tests to Prove Passing Off

1. The Goodwill Test

o The plaintiff must prove their brand is recognized by consumers.
2. The Misrepresentation Test
o The defendant must have deceptively misrepresented their goods/services as
being associated with the plaintiff.
3. The Damage Test
o There must be a real possibility of economic loss or harm to the plaintiff’s
reputation.

Well-Known Trademarks & Their Special Protection

Concept

• Well-known trademarks receive broad protection beyond their specific industry.

• These marks are recognized by a significant section of the public and enjoy stronger
legal safeguards.
• Even if another business operates in a completely different field, it cannot use a well-
known trademark in a misleading way.

Key Principles

1. Extended Protection Beyond Goods/Services

o A well-known mark is protected across all industries, not just its specific
category.
o Example: "Google" cannot be used for clothing, even though Google
primarily operates in tech.
2. Prevention of Free-Riding and Dilution
o Others cannot unfairly benefit from the goodwill of a well-known mark.
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o Dilution occurs when a similar mark weakens the reputation of a famous

brand, even if confusion does not exist.
3. Recognition in India is Required
o A trademark must be well-known to Indian consumers to claim special
protection.
o Foreign brands must prove awareness among Indian consumers before
asserting well-known status.
4. Not All Popular Marks Qualify as Well-Known
o A well-known mark is different from a famous brand; it requires legal
recognition by courts or the Trademark Registry.

Legal Basis Under the Trade Marks Act, 1999

Section Concept

Section
Protection of well-known trademarks beyond their industry.
11(2)

Section
Criteria for determining a well-known mark.
11(6)

Section Infringement occurs if a similar mark takes unfair advantage or damages the
29(4) reputation of a well-known mark.

Application in Trademark Law

✅ When a Trademark is Considered Well-Known

• Marks like "Google," "Apple," "Coca-Cola," and "Tata" are protected even in unrelated
industries.
• The Delhi High Court ruled that "BATA" is a well-known mark, preventing its use on
unrelated products.
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❌ When a Trademark is Not Well-Known

• If it lacks significant public recognition in India.

• If it has only been used in a niche market without widespread consumer awareness.

Tests to Determine a Well-Known Trademark

1. Degree of Public Recognition

o The mark must be widely known among consumers in India.
2. Geographical Extent of Use
o How long and in how many regions has the mark been used?
3. Extent of Promotion & Advertisement
o A well-known mark must be widely advertised and recognized.
4. Past Legal Protection or Enforcement
o Has the mark been legally enforced or recognized as well-known in past disputes?

Conclusion

• Well-known trademarks enjoy broader protection under Section 11(2) of the Trade Marks
Act, 1999.
• Even unrelated businesses cannot use a well-known mark in a misleading way.
• The test for well-known status considers consumer recognition, market presence, and
brand reputation.

Likelihood of Confusion & Consumer Protection

Concept

• Likelihood of confusion occurs when consumers might mistake one brand for
another due to similarity in trademarks.
• Trademark protection aims to prevent consumer deception and ensure fair
competition.
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• Confusion can arise from visual, phonetic, or structural similarities, leading to

mistaken identity.

Key Principles

1. Likelihood of Confusion is Enough; Actual Confusion is Not Required

o Even if no consumer has been misled yet, a likelihood of confusion is sufficient
for trademark infringement.
2. Consumer Perception Matters
o Trademarks are evaluated from the perspective of an ordinary consumer with
imperfect recollection.
o Courts assess how a layperson, not an expert, perceives the mark.
3. Stronger Protection for Essential Goods (e.g., Medicines)
o For pharmaceuticals and food products, stricter standards apply to avoid risks to
public health.
o A minor difference in spelling or design is not enough if consumers can still be
confused.
4. Comparison Should Be Holistic, Not Microscopic
o Marks should not be compared letter by letter; the overall impression
matters.
o Even if small differences exist, the similarity in trade dress, pronunciation, or
meaning can still cause confusion.

Legal Basis Under the Trade Marks Act, 1999

Section Concept

Section A trademark cannot be registered if it is similar to an earlier mark and causes

11(1) confusion.

Section
Trademark infringement occurs if a mark is similar enough to mislead consumers.
29(2)
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Section Concept

Section Even if there is no direct confusion, the unauthorized use of a well-known mark
29(4) can be unfair.

Application in Trademark Law

✅ When Likelihood of Confusion Exists

• "Glucovita" and "Gluvita" → Highly similar, likely to mislead buyers.

• "Amritdhara" and "Lakshmandhara" → Phonetic resemblance, leading to confusion.
• "RUSTON" and "RUSTAM" → Similar pronunciation, deceptive similarity.

❌ When Likelihood of Confusion Does Not Exist

• "Microsoft" and "Microchip" → Common prefix does not cause confusion.

• "Apple" for computers and "Apple" for a fruit market → Different industries, no
confusion.

Tests Used to Determine Likelihood of Confusion

1. Visual Test
o Looks, logos, color schemes, fonts, and packaging are compared.
o If two brands have similar trade dress, confusion is likely.
2. Phonetic Test
o Spoken pronunciation and sound similarities are assessed.
o Example: "Pepsi" vs. "Pipsi" → Phonetically similar.
3. Structural & Meaning Test
o Word structure, number of syllables, and implied meanings are analyzed.
o Example: "Goldstar" vs. "Goldster" → Structurally similar.
4. Consumer Confusion Test
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o Would an average consumer with imperfect memory mistake one brand for
another?
o No need for actual confusion; the likelihood is enough.

Doctrine of Deceptive Similarity

Concept

• Deceptive similarity occurs when two trademarks are so similar that they are likely to
mislead consumers into believing they come from the same source.
• Even if there are minor differences in spelling, pronunciation, or design, if the overall
impression is similar, the mark can be considered deceptively similar.
• This doctrine is applied to prevent confusion and protect brand identity.

Key Principles

1. Not Just Identical Marks—Similarity is Enough

o A mark does not need to be identical to infringe; even similar marks can
cause deception.
o Courts assess the overall impression rather than looking for exact matches.
2. Deception Can Be Visual, Phonetic, or Conceptual
o A trademark can be deceptively similar if it looks alike, sounds alike, or
conveys the same meaning.
3. Confusion is Judged from the Consumer’s Perspective
o The test is based on how an average consumer, with imperfect recollection,
perceives the mark.
o Minor varia tions do not matter if the overall impression remains the same.
4. Stricter Application in Pharmaceuticals and Essential Goods
o Deceptive similarity is more strictly enforced in life-saving industries (e.g.,
medicines) to prevent harm.
o A slight misspelling or phonetic resemblance in drug names can lead to life-
threatening confusion.
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Legal Basis Under the Trade Marks Act, 1999

Section Concept

Section Registration can be refused if a trademark is deceptively similar to an earlier

11(1) mark.

Section A registered trademark is infringed if a deceptively similar mark is used in the

29(2) same industry.

Section
Even unrelated industries cannot use a well-known trademark deceptively.
29(4)

Application in Trademark Law

✅ When a Trademark is Deceptively Similar

• "Glucovita" and "Gluvita" → Phonetic and structural similarity creates confusion.

• "Amritdhara" and "Lakshmandhara" → Phonetic resemblance makes it deceptively
similar.
• "RUSTON" and "RUSTAM" → Minor spelling difference but same pronunciation
leads to deceptive similarity.

❌ When a Trademark is Not Deceptively Similar

• "Microsoft" and "Microtek" → The marks are phonetically and visually distinct.
• "Apple" for computers and "Apple" for fruit vendors → No deceptive similarity
since industries are different.

Tests Used to Determine Deceptive Similarity

1. Visual Similarity Test

o Looks, logos, color schemes, fonts, and packaging are compared.
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o Example: "Tanishq" vs. "Tanshik" → Visually similar.

2. Phonetic Similarity Test
o Sound and pronunciation are compared.
o Example: "Pepsi" vs. "Pipsi" → Phonetically similar.
3. Conceptual Similarity Test
o If two marks convey the same idea, they may be deceptively similar.
o Example: "Lexus" (cars) vs. "Lexis" (software) → Different industries but
similar conceptual impression.
4. Consumer Confusion Test
o Would an average consumer, with imperfect memory, mistake one brand for
another?
o No need for actual confusion—likelihood is enough.

Doctrine of First in the Market (Prior Use)

Concept

• The first business to use a trademark in commerce holds superior rights over later
registrants.
• Even if a trademark is registered later by another party, the original user retains
the right to continue using it.
• This doctrine is crucial in resolving disputes between a prior user and a later
registrant.

Key Principles

1. First Use Trumps Registration

o Trademark rights arise from actual commercial use, not mere registration.
o A business that has continuously used a mark before another party’s
registration retains ownership.
2. Continuous and Genuine Use is Required
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o Prior use must be continuous and commercial—sporadic or inactive use does not
qualify.
o A company that stops using a mark for an extended period risks losing its rights.
3. Mere Registration Does Not Give Superior Rights
o If a prior user proves earlier adoption and use, the later registrant cannot claim
exclusive rights.
o The Trade Marks Act recognizes market reality over formal registration.
4. Burden of Proof on Prior User
o The party claiming prior use must provide documentary evidence, such as:
▪ Invoices, advertisements, product labels, promotional materials.
▪ Business contracts showing brand usage.
▪ Social media presence or online visibility.

Legal Basis Under the Trade Marks Act, 1999

Section Concept

Section 34 Prior user rights override later registration.

Section 31 Registration serves as prima facie evidence but can be challenged.

Section 11(5) Opposition to a trademark application can be based on prior use.

Doctrine of Dilution

Concept

• Trademark dilution occurs when the distinctiveness of a well-known trademark is

weakened, even if there is no direct confusion.
• Unlike trademark infringement, which requires consumer confusion, dilution focuses
on protecting a famous mark from being used in an unrelated industry.
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• The doctrine prevents businesses from free-riding on a well-known brand’s

reputation.

Key Principles

1. No Need for Confusion

o Dilution does not require the marks to be identical or similar in industry.
o Even if consumers are not confused, using a well-known trademark in an
unrelated field weakens its value.
2. Two Types of Dilution
o Blurring: When a famous brand’s distinctiveness is gradually weakened by
multiple, unrelated uses.
▪ Example: Using "Google" for a brand of clothes weakens its
uniqueness in the tech industry.
o Tarnishment: When a well-known mark is used in a negative or offensive way,
damaging its reputation.
▪ Example: Using "Rolex" for a cheap, low-quality watch damages its
exclusivity.
3. Only Well-Known Marks Can Claim Dilution
o Ordinary trademarks do not qualify for dilution protection.
o The mark must have substantial public recognition and be associated with
high quality or exclusivity.
4. Free-Riding on Reputation is Prohibited
o If a company uses a famous trademark to attract attention or legitimacy in
an unrelated market, it constitutes dilution.

Legal Basis Under the Trade Marks Act, 1999

Section Concept

Section Trademark infringement occurs if a similar mark takes unfair advantage of a well-
29(4) known mark, even without confusion.
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Section Concept

Section
Well-known trademarks receive protection beyond their registered category.
11(2)

Application in Trademark Law

✅ When Dilution Applies

• Using "Mercedes" for clothing (Blurring).

• Using "Nike" for a nightclub (Blurring).
• Using "BATA" for low-quality products (Tarnishment).

❌ When Dilution Does Not Apply

• If the mark is not well-known.

• If the goods/services are closely related and there is a likelihood of confusion (which
would be a case of trademark infringement, not dilution).

Honest and Concurrent Use in Trademark Law

1. Concept of Honest and Concurrent Use

• The Doctrine of Honest and Concurrent Use allows two similar or identical
trademarks to co-exist if both have been used independently, honestly, and without
intent to deceive.
• It is an exception to the rule that similar trademarks cannot co-exist.
• This doctrine balances the rights of prior users and later registrants, ensuring fair
competition without causing consumer confusion.

2. Key Principles of Honest and Concurrent Use

1. Honest Adoption of the Trademark

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o The trademark must have been adopted in good faith and without knowledge
of the earlier mark.
o No intention to deceive or take unfair advantage of another brand’s
reputation.
2. Independent and Continuous Use
o Both parties must have used the mark separately, without interference, for a
significant period.
o Intermittent or abandoned use does not qualify for honest concurrent use.
3. Absence of Malicious Intent
o A party cannot claim honest concurrent use if they copied the mark
knowingly.
o The doctrine applies only if both businesses developed their marks
independently.
4. Fair Competition and Consumer Welfare
o Courts ensure that allowing concurrent use does not create confusion among
consumers.
o If co-existence benefits market competition without misleading consumers,
concurrent use may be allowed.

3. Legal Basis Under the Trade Marks Act, 1999

Section Concept

Section 12 Allows registration of similar marks if honest concurrent use is established.

Section 28 Rights conferred by registration, subject to limitations.

Section 34 Prior user rights override later registration.

4. Application in Trademark Law

✅ When Honest Concurrent Use Applies

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• Two businesses unknowingly use similar trademarks in different geographical areas for
years.
• Both companies have built goodwill and reputation independently.
• No evidence of consumer deception or bad faith.

❌ When Honest Concurrent Use Does Not Apply

• If one party copied the mark knowingly.

• If there is substantial evidence of consumer confusion.
• If one business is trying to take unfair advantage of another’s reputation.

Comparative Advertising and Disparagement in Trademark Law

1. Concept of Comparative Advertising

• Comparative advertising occurs when a company compares its product or service with
that of a competitor to highlight its advantages.
• It is permitted under Indian trademark law as long as the comparison is truthful, fair, and
does not mislead consumers.
• Comparative advertising should not defame, degrade, or create false impressions about a
competitor’s brand.

2. Concept of Disparagement

• Disparagement occurs when an advertisement unfairly criticizes or belittles a

competitor’s product, damaging its reputation.
• False or misleading claims that harm the goodwill of another brand constitute product
disparagement.
• While competitive marketing is allowed, making defamatory or unsubstantiated negative
claims is prohibited.
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3. Key Principles of Comparative Advertising and Disparagement

1. Honest and Truthful Comparison

o Comparative advertisements must be fact-based and should not misrepresent
facts.
o A business can highlight its strengths but cannot spread falsehoods about a
competitor.
2. No Misleading Information
o Comparative claims should be based on genuine market research, scientific data,
or provable facts.
o Misleading half-truths or selective data comparisons violate fair advertising laws.
3. No Disparagement or Defamation
o Advertisements cannot degrade, ridicule, or insult a competitor’s brand.
o Words like "worst," "useless," or "harmful" in a misleading way may amount to
disparagement.
4. Consumer Protection Against False Advertising
o Regulatory bodies monitor advertisements to prevent consumer deception.
o Any misleading claims that influence purchasing decisions unfairly can be
challenged.

4. Legal Basis Under the Trade Marks Act, 1999

Section Concept

Section Trademark infringement occurs if an advertisement takes unfair advantage of a

29(8) competitor’s trademark.

Section
Comparative advertising is permitted if it is fair and non-misleading.
30(1)

Section 35 Fair use of a trademark is allowed for descriptive and comparative purposes.
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5. Application in Trademark Law

✅ When Comparative Advertising is Allowed

• "Our detergent removes 50% more stains than Brand X (proven by tests)."
• "Brand Y has 10% less sugar than Brand Z (based on nutritional labels)."
• A car company claiming its model has better mileage than a competitor’s, backed by
factual data.

❌ When Comparative Advertising Becomes Disparagement

• "Our shampoo is 100% better than Brand X, which causes hair fall" (without proof).
• Using a competitor’s logo to create confusion or imply association.
• Stating "Brand X is harmful to health" without any scientific evidence.

6. Tests to Determine Fairness in Comparative Advertising

1. Truthfulness and Accuracy Test

o Are the claims based on factual, verifiable data?
2. Non-Disparagement Test
o Does the advertisement unfairly degrade or insult the competitor?
3. Consumer Misrepresentation Test
o Would an average consumer be misled by the advertisement?
4. Trademark Fair Use Test
o Is the competitor’s trademark used only for factual comparison, without implying
affiliation?

Remedies for Trademark Infringement (Civil & Criminal)

Concept
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• Trademark infringement occurs when a registered trademark is used without permission

in a way that causes consumer confusion or dilutes the brand's reputation.
• The Trade Marks Act, 1999, provides both civil and criminal remedies to protect
trademark owners.
• Remedies aim to prevent unauthorized use, compensate the rightful owner, and penalize
counterfeiters.

Key Principles

1. Civil Remedies Focus on Stopping Unauthorized Use

o Civil courts grant injunctions to prevent further infringement.
o Damages and accounts of profits can be awarded to compensate the trademark
owner.
2. Criminal Remedies Focus on Punishment
o Deliberate and willful infringement, especially counterfeiting, is punishable under
the Act.
o Fines, imprisonment, and seizure of goods serve as deterrents against
infringement.
3. Customs Protection Against Counterfeit Imports
o Trademark owners can request customs authorities to stop counterfeit goods from
entering India.
4. Burden of Proof in Infringement Cases
o The trademark owner must prove that the infringer used the mark in a manner
likely to confuse consumers.
o In criminal cases, intent to deceive is also considered.

Legal Basis Under the Trade Marks Act, 1999

Section Concept

Section 29 Defines trademark infringement.

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Section Concept

Section Punishment for applying false trademarks (imprisonment up to 3 years & fine up to
103 ₹2 lakh).

Section
Punishment for selling goods with false trademarks.
104

Section
Civil remedies (injunctions, damages, seizure of infringing goods).
135

1. Civil Remedies

✅ When Civil Action is Taken

• A company misuses another brand’s logo to mislead customers.

• A shop sells duplicate products with a fake brand name.
• A business uses a deceptively similar trademark for its product.

Available Civil Remedies

• Injunction (Temporary or Permanent):

o Court orders the infringer to stop using the trademark.
• Damages & Account of Profits:
o Compensation for loss of reputation and market share.
• Seizure & Destruction of Infringing Goods:
o Counterfeit goods can be confiscated and destroyed.

2. Criminal Remedies

✅ When Criminal Action is Taken

• A person deliberately counterfeits a brand’s trademark to deceive customers.

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• Selling duplicate products with a false brand name (e.g., fake "Nike" shoes).
• Producing labels, packaging, or advertisements that mislead consumers.

Punishments for Trademark Infringement

• Imprisonment:
o Up to 3 years for applying false trademarks (Section 103).
• Fine:
o Up to ₹2 lakh (Section 103 & 104).
• Seizure of Goods:
o Counterfeit products can be confiscated.

3. Customs Remedies

✅ When Customs Protection is Needed

• A company imports goods with a fake brand name to sell in India.

• A trademark owner wants to block counterfeit products at the border.

Available Customs Remedies

• Record the trademark with the Indian Customs Department.

• Customs authorities can seize and destroy counterfeit imports.

Anton Piller Order, Mareva Injunction, and John Doe Order

1. Anton Piller Order

• Definition: A court order allowing the plaintiff to enter the defendant’s premises to
search, inspect, and seize evidence before it is destroyed.
• Purpose: Prevents destruction or concealment of crucial evidence in intellectual
property (IP) and trade secret cases.
• Essentials:
o Strong prima facie case.
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o Risk of evidence destruction.

o Balance of convenience favors the plaintiff.
• Key Cases: Originated in Anton Piller KG v. Manufacturing Processes Ltd. (1976) in the
UK.
• Application in India: Used in IP infringement cases, especially copyright and
trademark disputes.

2. Mareva Injunction

• Definition: A freezing order that restrains the defendant from disposing of assets that
could prevent enforcement of a court decree.
• Purpose: Ensures availability of assets to satisfy a future judgment.
• Essentials:
o Strong prima facie case.
o Defendant may dispose of assets to evade liability.
o Balance of convenience in favor of the plaintiff.
• Key Case: Mareva Compania Naviera SA v. International Bulkcarriers SA (1975) in the
UK.
• Application in India: Granted in fraud, banking disputes, IP cases, and commercial
litigation.

3. John Doe Order (Ashok Kumar Order in India)

• Definition: A preliminary injunction against unknown defendants who might infringe

the plaintiff’s rights.
• Purpose: Used when the identity of the infringer is unknown but infringement is
anticipated.
• Essentials:
o Strong prima facie case.
o Infringement is ongoing or imminent.
o Balance of convenience favors the plaintiff.
• Key Cases:
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o John Doe v. Richard Roe (UK & US concept).

o India: Taj Television v. Rajan Mandal (2003) – First Indian John Doe order in
broadcasting piracy.
• Application in India:
o Copyright & Trademark infringement.
o Media & Entertainment cases (movie/music piracy).
o Cyber law cases (blocking infringing websites).

Jurisdiction in Trademark Disputes

Concept

• Determines which court can hear trademark disputes.

• Governed by the Trade Marks Act, 1999.
• Based on plaintiff’s business location, place of infringement, or defendant’s
residence.

Key Principles

• Trademark Owners Can Sue in Their Business Location

o Unlike general civil cases, owners can file suits where they operate.
• Jurisdiction for Infringement (Registered Trademarks)
o Suit can be filed where:
▪ The owner conducts business.
▪ The infringement occurred.
▪ The defendant resides.
• Jurisdiction for Passing Off (Unregistered Trademarks)
o Follows general civil rules:
▪ File where the defendant resides or misrepresentation happened.
• Online Trademark Cases
o Can be filed where affected customers are located.
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Legal Basis

• Section 134 – Infringement suits.

• Section 20, CPC – Passing off suits.
• Section 135 – Remedies (injunctions, damages).

Types of Jurisdiction

• Territorial – Location-based.
• Pecuniary – Claim value.
• Subject Matter – Registered vs. unregistered marks.

Conclusion

• Trademark owners can sue in their business location.

• Online infringement broadens jurisdiction scope.
• Courts prevent forum shopping to ensure fairness.