CUET Trade mark Act Notes
CUET Trade mark Act Notes
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
https://t.me/+OldBBBV1wq5hYTU1
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Section Concept
Section 28 Rights conferred by registration, including exclusive rights to use the trademark.
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
Ruston & Hornby Ltd. v. Zamindara Phonetic similarity alone can establish
Engineering Co. (1970) infringement.
Consolidated Foods Corporation v. Brandon & Prior commercial use prevails over later
Co. (1965) registration.
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4. Passing Off
DM Entertainment v. Baby Gift House Passing off occurs when a deceptive mark misleads
(2010) consumers.
Reckitt & Colman Products Ltd. v. Established the three elements: goodwill,
Borden Inc. misrepresentation, and damage.
Toyota Jidosha Kabushiki Kaisha v. Prius Auto Global reputation must be proven in
Industries Ltd. (2018) India.
Daimler Benz v. Hybo Hindustan (1994) Luxury brand dilution is not allowed.
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Corn Products v. Shangrila Food Confusion is judged from the point of view of an
Products (1960) average buyer.
Ruston & Hornby Ltd. v. Zamindara Minor spelling changes do not prevent
Engineering Co. confusion.
Milmet Oftho Industries v. Allergan Foreign prior use may be recognized in India if
Inc. (2004) reputation exists.
9. Doctrine of Dilution
Bajaj Electricals Ltd. v. Metals & Allied Trademark dilution applies even without
Products confusion.
Daimler Benz v. Hybo Hindustan Luxury brands are protected from dilution.
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.
Hindustan Lever Ltd. v. Colgate Comparative advertising must not mislead or degrade
Palmolive Ltd. competitors.
Pepsi Co. v. Coca-Cola Co. Brand comparisons must be fair and backed by data.
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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Issue
• Whether the trademarks "Falcigo" and "Falcitab" were deceptively similar, leading to
likelihood of confusion among consumers in the pharmaceutical industry.
• 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.
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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Issue
• Whether the use of the name "Cadbury" by Neeraj Food Products was an
infringement and amounted to passing off.
• 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.
Relevant Sections
Issue
• Whether the use of similar domain names (sifynet.com & sifymall.com) amounted to
trademark infringement and passing off.
• 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.
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
Issue
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• 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.
Relevant Sections
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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Key Provisions:
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
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.
• A composite trademark (logo + word) cannot be broken down into separate parts for
comparison.
• Visual, phonetic, and conceptual similarities are assessed together.
• 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
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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Section Concept
Section Protection for well-known trademarks even for unrelated goods if the mark is
29(4) deceptively similar.
• "Microsoft" and "Microchip" → Common word "Micro" does not make them similar.
• "Rolex" and "Rolax" (for footwear) → Different industry, unlikely confusion.
Concept
• 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
Section Concept
Section 31 Registration serves as prima facie evidence of ownership, but can be challenged.
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.
• 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.
• 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.
Passing Off
Concept
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.
Section Concept
Concept
Key Principles
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.
• 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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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.
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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Key Principles
Section Concept
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.
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.
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
Section Concept
Section
Even unrelated industries cannot use a well-known trademark deceptively.
29(4)
• "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.
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
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.
Section Concept
Doctrine of Dilution
Concept
Key Principles
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)
• 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.
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.
Section Concept
• 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.
• 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
Section Concept
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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• "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.
• "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.
Concept
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Key Principles
Section Concept
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
2. Criminal Remedies
• Selling duplicate products with a false brand name (e.g., fake "Nike" shoes).
• Producing labels, packaging, or advertisements that mislead consumers.
• 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
• 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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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.
Concept
Key Principles
Legal Basis
Types of Jurisdiction
• Territorial – Location-based.
• Pecuniary – Claim value.
• Subject Matter – Registered vs. unregistered marks.
Conclusion