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Trade Mark Act, 1999

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      Tina DU
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      (a) passing of is a common law remedy an action of deceit. (b) An action of infringement is a statutory remedy conferred on registered proprietor (c) Where the similarity between plaintiff’s and defendant’s mark is too close either visually, phonetically or otherwise the court reaches the conclusion that there is imitation, no further evidence is required to establish the right of the plaintiff is violated.

      REFERRED TO

      1. Rich Products Corporation and another vs. Indo Nippon Food Ltd., 2010 42 PTC 660 (Delhi).
      2. Marico Limited vs. Agro Tech Foods Limited, 174 (2010) DLT 279.
      3. Puma Stationer P. Ltd. and another vs. Hindustan Pencils Ltd., 2010 (43) PTC 479 (Delhi).
      4. Nestle India Limited vs. Mood Hospitality Private Limited, 2010 (42) PTC 514 Delhi.
      5. Cadila Healthcare Ltd. v. Gujrat Co-operative Milk Marketing Federation Ltd. and Ors. 2009 (VIII) AD 350.
      6. Ishi Khosla vs. Anil Aggarwal and another, 2007 (34) PTC 370 Delhi.
      7. The Gillette Company and others vs. A.K. Stationery and others, 2001 (21) PTC 513 (Delhi).
      8. Sunder Nagar Association vs. Welfare Club (regd.) and another, 1995 PTC 270.
      9. J.R. Kapoor vs. Micronix India, 1994 (14) PTC 260 SC.
      10. Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980.

        In Cadila Healthcare Ltd. v. Gujrat Co-operative Milk
        Marketing Federation Ltd. and Ors. 2009 (VIII) AD 350 it was held:

      11. In our view, at this juncture i.e. at the interim stage, even
        assuming distinctiveness claimed by the appellant in its favor qua
        its artificial sweetener, the appellant has rightly been declined an
        injunction by the learned Single Judge since it is evident and has
        indeed been found by the learned Single Judge that the use of the
        term ‘Sugar Free’ by the respondent is not in the trademark
        sense but as a common descriptive adjective. The learned Single
        Judge has found and in our view rightly that the respondent has
        not used the expression in a trademark sense but only in a
        descriptive sense in the following passage:
      12. It is important to be borne in mind that use of a
        descriptive expression as a trade mark by a trader,
        irrespective of the said trade mark having acquired a
        secondary meaning and distinctiveness in relation to the
        trader’s products, does not entitle such trader from
        precluding other traders from using the said expression
        for the purposes of describing the characteristic features
        of their products. I have no hesitation in stating, albeit
        without prejudice to the rights and interests of the plaintiff
        in the present suit, that by adopting such a purely
        descriptive and laudatory expression ‘Sugar Free’ as its
        trade mark, the plaintiff must be prepared to tolerate some
        degree of confusion which is inevitable owing to the wide
        spread use of such trade mark by fellow competitors.
        Simply because the plaintiff claims to be using the
        expression ‘Sugar Free’ as a trade mark much prior to
        the launch of the defendant’s product Pro Biotic Frozen
        Dessert in the market does not give this Court a good
        ground for imposing a blanket injunction on the defendant
        from using the expression ‘Sugar Free’, especially when
        the defendant intends to use this expression only in itsdescriptive sense and not as a trade mark, and even
        otherwise, when the use of this expression is widespread
        in relation to foods and beverages.
        We fully agree with and reaffirm the said finding.
      13. We are unable to hold that the appellant’s trademark ‘Sugar
        Free’ is a coined word; at best it is a combination of two popular
        English words. The mere fact that the appellant’s product cannot
        be directly consumed or eaten and merely is an additive does not
        detract from the descriptive nature of the trade mark. Once a
        common phrase in the English language which directly describes
        the product is adopted by a business enterprise, such adoption
        naturally entails the risk that others in the field would also be
        entitled to use such phrases provided no attempt is made to ride
        on the band wagon of the appellant’s indubitably market leading
        product ‘Sugar Free’. In this connection, merely because the
        attributes of ‘sugar free’ can be described by other phrases
        cannot detract from the common usage of the phrase ‘Sugar
        Free’ as denoting products which do not contain sugar and any
        trader which adopts such mark in the market place, does so with
        the clear knowledge of the possibility of other traders also using
        the said mark. That is precisely the reason for the denial of
        protection to such marks by refusing registration as envisaged
        by Sections 9, 30 and 35 of the Act. The said Sections read as
        follows: –
      14. Absolute grounds for refusal of registration.-(1) The trade
        marks-
        (a) which are devoid of any distinctive character, that is to say,
        not capable of distinguishing the goods or services of one person
        from those of another person;
        (b) which consist exclusively of marks or indications which may
        serve in trade to designate the kind, quality, quantity, intended
        purpose, values, geographical origin or the time of production of
        the goods or rendering of the service or other characteristics of
        the goods or service;
        (c) which consist exclusively of marks or indications which
        have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered:
        Provided that a trade mark shall not be refused registration if
        before the date of application for registration it has acquired a
        distinctive character as a result of the use made of it or is a wellknown trade mark.
        (2) A mark shall not be registered as a trade mark if-
        (a) it is of such nature as to deceive the public or cause confusion;
        (b) it contains or comprises of any matter likely to hurt the
        religious susceptibilities of any class or section of the citizens of
        India;
        (c) it comprises or contains scandalous or obscene matter;
        (d) its use is prohibited under the Emblems and Names (Prevention
        of Improper Use) Act, 1950 (12 of 1950).
        (3) A mark shall not be registered as a trade mark if it consists
        exclusively of-
        (a) the shape of goods which results from the nature of the
        goods themselves; or
        (b) the shape of goods which is necessary to obtain a technical
        result; or
        (c) the shape which gives substantial value to the goods.
      15. Limits on effect of registered trade mark.-(1) Nothing in
        Section 29 shall be construed as preventing the use of a registered
        trade mark by any person for the purposes of identifying goods
        or services as those of the proprietor provided the use-
        (a) is in accordance with honest practices in industrial or
        commercial matters, and
        (b) is not such as to take unfair advantage of or be detrimental
        to the distinctive character or repute of the trade mark.
        (2) A registered trade mark is not infringed where-
        (a) the use in relation to goods or services indicates the kind,
        quality, quantity, intended purpose, value, geographical origin,the time of production of goods or of rendering of services or
        other characteristics of goods or services;
        (b) a trade mark is registered subject to any conditions or
        limitations, the use of the trade mark in any manner in relation
        to goods to be sold or otherwise traded in, in any place, or in
        relation to goods to be exported to any market or in relation to
        services for use or available or acceptance in any place or country
        outside India or in any other circumstances, to which, having
        regard to those conditions or limitations, the registration does not
        extend;
        (c) the use by a person of a trade mark-
        (i) in relation to goods connected in the course of trade with the
        proprietor or a registered user of the trade mark if, as to those
        goods or a bulk or which they form part, the registered proprietor
        or the registered user conforming to the permitted use has applied
        the trade mark and has not subsequently removed or obliterated
        it, or has at any time expressly or impliedly consented to the use
        of the trade mark; or
        (ii) in relation to services to which the proprietor of such mark
        or of a registered user conforming to the permitted use has
        applied the mark, where the purpose and effect of the use of the
        mark is to indicate, in accordance with the fact, that those
        services have been performed by the proprietor or a registered
        user of the mark;
        (d) the use of a trade mark by a person in relation to goods
        adapted to form part of, or to be accessory to, other goods or
        services in relation to which the trade mark has been used without infringement of the right given by registration under this Act or
        might for the time being be so used, if the use of the trade mark
        is reasonably necessary in order to indicate that the goods or
        services are so adapted, and neither the purpose nor the effect
        of the use of the trade mark is to indicate, otherwise than in
        accordance with the fact, a connection in the course of trade
        between any person and the goods or services, as the case may
        be;
        (e) the use of a registered trade mark, being one of two or more
        trade marks registered under this Act which are identical or
        nearly resemble each other, in exercise of the right to the use of
        that trade mark given by registration under this Act.
        (3) Where the goods bearing a registered trade mark are lawfully
        acquired by a person, the sale of the goods in the market or
        otherwise dealing in those goods by that person or by a person
        claiming under or through him is not infringement of a trade by
        reason only of-
        (a) the registered trade mark having been assigned by the registered
        proprietor to some other person, after the acquisition of those
        goods; or
        (b) the goods having been put on the market under the registered
        trade mark by the proprietor or with his consent.
        (4) Sub-section (3) shall not apply where there exists a legitimate
        reason for the proprietor to oppose further dealings in the goods
        in particular, where the condition of the goods, has been changed
        or impaired after they have been put on the market.
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