LL.B. IV Term
Paper : Intellectual Property Law-I
(General Principles,
Enforcement, Abuse of Intellectual Property Rights(IPR’s) and International
Conventions, Law of Trade Marks, Domain Names, Geographical Indications and
Designs)
1. Introduction to Intellectual
Property and its Abuse
1. General Principles of
Intellectual Property Rights
Nature and Concept of IPR ,
WTO/TRIPs
Brief evolution of IPR and
its importance in present context
Types of Intellectual
Property
Enforcement of Intellectual
Property Rights (Art. 9-39 TRIPs), by various national laws
2. Abuse of Intellectual
Property—Concept, Redress under Art.40 TRIPs and Competition Law
Refusal to license
Conditions of Exclusive
Grantback
Coercive Package Licensing or
tieing in
Market Power and Dominance
Horizontal and Vertical
Restraints on licencee Abuse of Dominant Positionby right holder
3. International legal
instruments relating to IPR
Reciprocity and Priority
Concept of Minimum Standards
Concept of National Treatment
Concept of Most Favoured
Nation (MFN)
Madrid Agreement, Madrid
Protocol, 1989 amended on Oct 3, 2006 and Nov 12, 2007, The Trade Marks
(Amendment) Bill, 2009
2. Trade Marks Law
[Legislation :Trade Marks
Act, 1999, in force from 15th Sep., 2003]
Note: Students should note
that some cases are decided under the previous Act of 1958 (the meanings
assigned to words and expressions under the old Act are to be understood and
may be applied to the provisions of new Act of 1999 also)
1. Introduction
1.1 Definitions/Meaning of:
‘Mark’ S.2(1)(m); - “mark” includes a device, brand, heading, lable, ticket, name,
signature, word, letter, numeral, shape of goods, packaging or combination of
colours or any combination thereof.
‘Trade mark’ S.2(1)(zb); - “trade mark” means a mark capable of being
represented graphically and which is capable of distinguishing the goods or
services of one person from choose of others and may include shape of goods,
their packaging and combination of colours , and
in relation to Chapter XII
(other than section 107), a registered trade mark or mark used in relation to
goods or services for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or services, as the case
may be, and some person having the right as proprietor to use the mark, and
in relation to other
provisions of this Act, a mark used or proposed to be used in relation to goods
or services for the purpose of indicating or so to indicate to a connection in
the course of trade between the goods or services, as the case may be, and some
person having the right, either as proprietor or by way of permitted user, to
use the mark whether with or without any indication of the identity of that
person, and includes a certification trade mark or collective mark.
‘Service’ S.2(1)(z); “service” means service of any description which is
made available to potential users and includes the provisions of services in
connection with business of any industrial or commercial matters such as banking,
communication, education, financing, insurance, chit funds, real estate,
transport, storage, material treatment, processing, supply of electrical or
other energy, boarding, lodging, entertainment, amusement, construction,
repair, conveying of news or information and advertising.
‘Goods’ S.2(1)(j); “goods” means anything which is the subject of trade
or manufacture.
‘Package’ S.2(1)(q); “package” includes any case, box, container,
covering, folder, recetacle, vessel, casket, bottle, wrapper, labler, band,
ticket, reel, frame, capsule, cap, lid, stopper and cork.
‘Well known trade mark’ S.2(1)(zg) “well-known trade mark” in relation to any goods or
service, means a mark which has becomes so to the substantial segment of the
public which uses such goods or receives such services that the use of such
mark in relation to other goods or services would be likely to be taken as
indicating a connection in the course of trade or rendering of services between
those goods or services and a person using the mark in relation to the first
mentioned goods or services.
Functions, General
Principles, Need for Protection of Trademarks, Registered and Unregistered
Trade Marks
1.2 Use of trade mark on goods/services– S.2(2)(b)
& (c), 29(6),
Section (2) In this Act,
unless the context otherwise requires, any reference- (a) to "trade
mark" shall include reference to "collective mark" or
"certification trade mark"; (b) to the use of a mark shall be
construed as a reference to the use of printed or other visual representation
of the mark; (c) to the use of a mark,- (i) in relation to goods, shall be
construed as a reference to the use of the mark upon, or in any physical or in
any other relation whatsoever, to such goods; (ii) in relation to services,
shall be construed as a reference to the use of the mark as or as part of any
statement about the availability, provision or performance of such services;
Section 29(6) For the purposes of this
section, a person uses a registered mark, if, in particular, he- (a) affixes it
to goods or the packaging thereof; (b) offers or exposes goods for sale, puts
them on the market, or stocks them for those purposes under the registered
trade mark, or offers or supplies services under the registered trade mark; (c)
imports or exports goods under the mark; or (d) uses the registered trade mark
on business papers or in advertising.
1.2.1 Use in Advertisements –declared as use and ground for protection even
without goods/services
N. R. Dongre v. Whirlpool Corporation, (1996) 5 SCC
714
Facts: The plaintiff was the
first to use the WHIRLPOOL trademark in the global market, and it advertised
the mark in international magazines having circulation in India India ,
except to the U.S. Embassy and US AID in India
Held:
- passing-off action was
maintainable in law even against the registered owner of the trade mark
- trans border reputation
extended to India
- that the mark “Whirlpool”
gave an indication of the origin of the goods as emanating from or relating to
Whirlpool Corporation
- refusal of an injunction could cause
irreparable injury to the reputation of Whirlpool Corporation in comparison
small injury to appellants as they simply have to remove a label and they can
still sell their goods.
Opinion of HC in this case
“In today’s world, it cannot
be said that a product, and the trademark under which it is sold abroad, does
not have a reputation or goodwill in countries where it is not available.”
Plausible Explanation of
Adoption / Honest Adoption
In the Whirlpool case, the
High Court considered “lack of plausible explanation of adoption” to be an
important factor in deciding the matter: “In the absence of any satisfactory
explanation by the appellants, the adoption of the mark by them cannot prima
facie be regarded as honest….” It is noteworthy that, despite the fact that
whirlpool” is a dictionary word, the court held the lack of plausible
explanation against the defendant when granting the injunction.
1.2.2 Protecting Domain Names as Trade Marks
Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd, AIR
2004 SC 3540
The appellant in
the Supreme Court action, Satyam Infoway Ltd., alleged that the respondent,
Sifynet Solutions Pvt. Ltd., had intentionally registered and operated a domain
name that was confusingly similar to one owned by Satyam Infoway. Satyam
Infoway claimed that it had in 1999, registered several domain names pertaining
to its business: sifynet.com, sifymall.com, sifyrealestate.com, with the
Internet Corporation for Assigned Names and Numbers (ICANN) and the World
Intellectual Property Organization (WIPO). It submitted that the word
"Sify" – which was an amalgam of elements of its corporate name
"Satyam Infoway" – was a "fanciful" term, and that it had
further garnered substantial goodwill in the market. Meanwhile, Sifynet
Solutions had started using the word "Siffy" as part of the domain
names under which it carried on internet marketing (namely siffynet.com and
siffynet.net), claiming to have registered them with ICANN in 2001.
Satyam Infoway
alleged that Sifynet Solutions was attempting to pass off its services as those
belonging to Satyam Infoway by using a deceptively similar word as part of its
domain name. Satyam Infoway claimed that this would cause confusion in the
minds of the relevant consumers, who would mistake the services of Sifynet
Solutions as belonging to Satyam Infoway.
Sifynet Solutions
contended that unlike a trade mark, the registration of a domain name did not
confer an intellectual property right in the name. It averred that a domain
name is merely an address on the computer, which allows communications from the
consumers to reach the owner of the business, and confers no comparable
property rights in the same.
Because of a
lacuna in the intellectual property laws of India Bombay Del )],
Dr. Reddy's Laboratories Ltd. v. Manu Kosuri [2001 PTC 859 (Del
City Civil Court
Satyam Infoway
filed suit in the City Civil Court ,
Bangalore
High Court
Sifynet Solutions
appealed to the Karnataka High Court, which heard the case. The High Court
based its decision on a consideration of where the balance of convenience lay.
The High Court stated that Sifynet Solutions had already invested heavily in
securing a customer base for the business (about 50,000 members), and would
consequently suffer immense hardship and irreparable injury if the court found
in Satyam Infoway's favour. It noted that the business that the two parties
were involved in were disparate, and therefore there was no possibility of the
customers being misled by similar domain names.[1] Further, since Satyam
Infoway also had that name to use in trade, the High Court believed that it
would not cause them considerable hardship to deny the temporary injunction.[2]
Supreme Court
The Supreme Court,
through a bench comprising Justices Ruma Pal and P. Venkatarama Reddi, set
aside the decision of the High Court, and ruled in favour of Satyam Infoway. It
declared that domain names are subject to the regulatory framework that is
applied to trade marks (i.e. the Trade Marks Act, 1999). The court stated that
though there is no law in India
In order to arrive
at the Holding, the Supreme Court analogized domain names to trade marks. After
an elaboration of sections 2(zb), 2(m), and 2(z), the court stated that a
domain name in the contemporary era has evolved from a mere business address to
a business identifier. Therefore, a domain name is not merely a portal for
internet navigation, but also an instrument which distinguishes and identifies
the goods or services of the business, while simultaneously providing the
specific internet location. This feature of domain names in the modern era
allows them to be likened to trade marks, and concomitantly to be included
within the purview of the Trade Marks Act.
Passing off
The court
delineated the elements of an action for passing off that Satyam Infoway would
have to prove in order to succeed. Firstly, Satyam Infoway had to prove
accumulated goodwill in the name "Sify", such that it would be
apparent that the consumers associated the name "Sify" with the
services offered by Satyam Infoway.[5] Satyam Infoway discharged this burden by
demonstrating that the name "Sify" had acquired immense repute in the
market in association with their services. Satyam Infoway argued that it had
840 cyber cafés, five lakh (five hundred thousand) subscribers, and 54 units of
presence all over India
Secondly, Satyam
Infoway had to establish that Sifynet Solutions had misrepresented its services
to the consumers, such that a likelihood of confusion was created in the minds
of the consuming public that the services offered by Sifynet Solutions belonged
to Satyam Infoway.
Thirdly, Satyam
Infoway was required to prove that a likelihood of confusion in the minds of
consumers would inevitably be a result due to the use of a similar domain name
by Sifynet Solutions, and further, that such confusion would cause injury to
the public and definite loss to Satyam Infoway. The standard applied by the
court to assess likelihood of confusion was that of an unwary consumer of
"average intelligence and imperfect recollection".The court expressed
the opinion that in the field of internet services, the difference in the
nature of services offered by businesses may not be of much consequence due to
the method of operation on the internet. The court discussed this facet at
length and explained that the accessibility of domain names to a wide spectrum
of users underscores the point that similarity in domain names would lead to
confusion and also receipt of unsought for services.
Distinction
between trade mark and domain name
The court
proceeded to distinguish between the nature of a trade mark and a domain name.
It stated that the distinction is important to determine the scope of
protection available to the rights of an owner of either of the two. The court
indicated that they can be distinguished primarily on the basis of the method
of operation. While, a trade mark upon registration in a particular country
acquires rights which are purely national in character, the operation of a
domain name cannot be contained within a specific country. Thus, due to this
facet of domain names, the court expressed the opinion that it would be
difficult to protect them effectively under national laws. In this regard, the
court expressed that the International Registrars, i.e., WIPO, and ICANN, had
provided a modicum of effective protection to domain names.[1]
Balance of
convenience
The Supreme Court
disagreed with the High Court on the issue of where the balance of convenience
lay. The court stated that no irreparable injury would be caused to Sifynet
Solutions by proscribing him from using the domain name. It instead believed
that Satyam Infoway had garnered immense goodwill associated with its business,
and therefore denying it the use of its domain name would render injustice to
it.
The court also
ruled that the right to use similar domain names could not be conferred upon
both the parties in equal measure, since upon evidence adduced during the
proceedings it was reasonable to conclude that Sifynet Solutions had adopted
Satyam Infoway's mark with a dishonest intention to pass off its services as
those of Satyam Infoway's.
Subsequent
developments
While the decision
was appreciated for the finality it introduced in respect of the law regulating
domain name disputes, it was also criticized by some in the legal circles for
failing to notice the significant distinctions between trade marks and domain
names. The decision has also been criticized because it is believed that the
Trade Marks legislation is not equipped to deal with the myriad disputes that
arise in the domain name realm. Further, it is also believed that even the
Information Technology Act, 2000, has failed to fill in the lacunae in the
Trade Marks Act with respect to domain names.[7]
In late 2004, the
Indian legislature introduced a significant change in the administration of the
.INRegistry. The INRegistry is now the official .IN domain name Registry.'.in'
is India
1.2.3 Trade Mark for Services
Balakrishna Hatcheries v.
Nandos International Ltd, 2007(35) PTC 295(Bom)
Health and Glow Retailing
Pvt. Ltd v. Dhiren Krishna Paul, Trading as
Health and Glow Clinic,2007(35) PTC 471(Mad)
2. Registration of trade mark for goods/services -
Application for registration.
18. Application for
registration.-(1) Any person claiming to be the proprietor of a trade mark used
or proposed to be used by him, who is desirous of registering it, shall apply
in writing to the Registrar in the prescribed manner for the registration o his
trade mark.
(2) A single application may
be made for registration of a trade mark for different classes of goods and
services and fee payable therefore shall be in respect of each such class of
goods or services.
(3) Every application under
sub-section (1) shall be filed in the office of the Trade Marks Registry within
whose territorial limits the principal place of business in India of the
applicant or in the case of joint applicants the principal place of business in
India of the applicant whose name is first mentioned in the application as
having a place of business in India, is situated: Provided that where the
applicant or any of the joint applicants does not carry on business in India,
the application shall be filed in the office of the Trade Marks Registry within
whose territorial limits the place mentioned in the address for service in
India as disclosed in the application, is situate.
(4) Subject to the provisions
of this Act, the Registrar may refuse the application or may accept it
absolutely or subject to such amendments, modifications, conditions or
limitations, if any, as he may think fit.
(5) In the case of a refusal
or conditional acceptance of an application, the Registrar shall record in writing
the grounds for such refusal or conditional acceptance and the materials used
by him in arriving at his decision.
Withdrawal of acceptance.
19. Withdrawal of
acceptance.-Where, after the acceptance of an application for registration of a
trade mark but before its registration, the Registrar is satisfied-
(a) that the application has
been accepted in error; or
(b) that in the circumstances
of the case the trade mark should not be registered or should be registered
subject to conditions or limitations or to conditions additional to or
different from the conditions or limitations subject to which the application
has been accepted, the Registrar may, after hearing the applicant if he so
desires, withdraw the acceptance and proceed as if the application had not been
accepted.
Advertisement of application.
20. Advertisement of
application.-(1) When an application for registration of a trade mark has been
accepted, whether absolutely or subject to conditions or limitations, the
Registrar shall, as soon as may be after acceptance, cause the application as
accepted together with the conditions or limitations, if any, subject to which
it has been accepted, to be advertised in the prescribed manner: Provided that
the Registrar may cause the application to be advertised before acceptance if
it relates to a trade mark to which sub-section (1) of section 9 and
sub-sections (1) and (2) of section 11 apply, or in any other case where it
appears to him that it is expedient by reason of any exceptional circumstances
so to do.
(2) Where- (a) an application
has been advertised before acceptance under sub-section (1); or (b) after
advertisement of an application,- (i) an error in the application has been
corrected; or (ii) the application has been permitted to be amended under
section 22, the Registrar may in his discretion cause the application to be
advertised again or in any case falling under clause (b) may, instead of
causing the application to be advertised again, notify in the prescribed manner
the correction or amendment made in the application.
Opposition to registration.
21. Opposition to
registration.-(1) Any person may, within three months from the date of the
advertisement or re-advertisement of an application for registration or within
such further period, not exceeding one month in the aggregate, as the
Registrar, on application made to him in the prescribed manner and on payment
of the prescribed fee, allows, give notice in writing in the prescribed manner
to the Registrar, of opposition to the registration.
(2) The Registrar shall serve
a copy of the notice on the applicant for registration and, within two months
from the receipt by the applicant of such copy of the notice of opposition, the
applicant shall send to the Registrar in the prescribed manner a counter-statement
of the grounds on which he relies for his application, and if he does not do so
he shall be deemed to have abandoned his application.
(3) If the applicant sends
such counter-statement, the Registrar shall serve a copy thereof on the person
giving notice of opposition.
(4) Any evidence upon which
the opponent and the applicant may rely shall be submitted in the prescribed
manner and within the prescribed time to the Registrar, and the Registrar shall
give an opportunity to them to be heard, if they so desire.
(5) The Registrar shall,
after hearing the parties, if so required, and considering the evidence, decide
whether and subject to what conditions or limitations, if any, the registration
is to be permitted, and may take into account a ground of objection whether
relied upon by the opponent or not.
(6) Where a person giving
notice of opposition or an applicant sending a counter-statement after receipt
of a copy of such notice neither resides nor carries on business in India, the
Registrar may require him to give security for the costs of proceeding before
him, and in default of such security being duly given, may treat the opposition
or application, as the case may be, as abandoned.
(7) The Registrar may, on
request, permit correction of any error in, or any amendment of, a notice of
opposition or a counter-statement on such terms as he thinks just.
Correction and amendment.
22. Correction and
amendment.-The Registrar may, on such terms as he thinks just, at any time,
whether before or after acceptance of an application for registration under
section 18, permit the correction of any error in or in connection with the
application or permit an amendment of the application: Provided that if an
amendment is made to a single application referred to in sub-section (2) of
section 18 involving division of such application into two or more
applications, the date of making of the divided applications so divided initial
application shall be deemed to be the date of making of the Registration.
23. Registration.-(1) Subject
to the provisions of section 19, when an application for registration of a
trade mark has been accepted and either- (a) the application has not been
opposed and the time for notice of opposition has expired; or (b) the
application has been opposed and the opposition has been decided in favour of
the applicant, the Registrar shall, unless the Central Government otherwise
directs, register the said trade mark and the trade mark when registered shall
be registered as of the date of the making of the said application and that
date shall, subject to the provisions of section 154, be deemed to be the date
of registration.
(2) On the registration of a
trade mark, the Registrar shall issue to the applicant a certificate in the
prescribed form of the registration thereof, sealed with the seal of the Trade
Marks Registry.
(3) Where registration of a
trade mark is not completed within twelve months from the date of the
application by reason of default on the part of the applicant, the Registrar
may, after giving notice to the applicant in the prescribed manner, treat the
application as abandoned unless it is completed within the time specified in
that behalf in the notice.
(4) The Registrar may amend
the register or a certificate of registration for the purpose of correcting a
clerical error or an obvious mistake.
Absolute grounds for refusal
of registration.
9. 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; (KQ QIV GTO) (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 well-known 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.
Explanation.-For the purposes
of this section, the nature of goods or services in relation to which the trade
marks is used or proposed to be used shall not be a ground for refusal of
registration.
Prior/Vested Rights,
Rectification of register
(S.57 )
Section 57. Power to cancel
or vary registration and to rectify the register.—
(1) On application made in
the prescribed manner to the Appellate Board or to the Registrar by any person
aggrieved, the tribunal may make such order as it may think fit for cancelling
or varying the registration of a trade mark on the ground of any contravention,
or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by
the absence or omission from the register of any entry, or by any entry made in
the register without sufficient cause, or by any entry wrongly remaining on the
register, or by any error or defect in any entry in the register, may apply in
the prescribed manner to the Appellate Board or to the Registrar, and the
tribunal may make such order for making, expunging or varying the entry as it
may think fit.
(3) The tribunal may in any
proceeding under this section decide any question that may be necessary or
expedient to decide in connection with the rectification of the register.
(4) The tribunal, of its own
motion, may, after giving notice in the prescribed manner to the parties
concerned and after giving them an opportunity of being heard, make any order
referred to in sub-section (1) or sub-section (2).
(5) Any order of the Appellate
Board rectifying the register shall direct that notice of the rectification
shall be served upon the Registrar in the prescribed manner who shall upon
receipt of such notice rectify the register accordingly.
2.1 Absolute Grounds for
Refusal of Registration - S.9(1) Distinctive character in 9(1)(a) , 8 types of
Descriptive, laudatory marks or indications or words in S.9(1)(b), customary or
bonafide practices of trade- – clause 9(1)(c), Proviso to S.9(1) - Acquired
Distinctive character and well known marks
Section 9 (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 well-known trade mark.
1. M/s Hindustan Development Corporation Ltd v. The Deputy Registrar of
Trade Marks, AIR 1955 Cal
Held: The word
"Rasoi" has not become distinctive of the applicant's goods and as
such it is also ineligible for registration on the ground that no trader can
have ordinarily a monopoly of an ordinary word of the language.
2. The Imperial Tobacco Co. of India Cal
The Calcutta High Court held
that the trade mark “Simla” with the label is composite in character. It is a
well known hill– station of India
3. Geep FlashLight Industries v. Registrar of Trade Marks, AIR 1972 Del
Held
that although the appellant had led evidence to prove that its torches bearing
the name 'Janta' have acquired considerable reputation in the market, still the
word 'Janta' is in fact not adapted to distinguish or is in fact not capable of
distinguishing the appellant's goods.
Held
that it is open to the Registrar to decline to register the appellant's trade
mark in the exercise of his discretion under Section 18(4) of the Act.
2.2. S.9(2) -- Nature of mark
as to deceive the public or cause confusion’
Wide power – no mention of
marks or goods
Note, that under 1958 Act it
was covered under the expression Deceptive Similarity
Section 9 (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).
4. Sunder Parmanand Lalwani v. Caltex (India
An application for
registration of trademark Caltex in respect of clocks and watches was refused
registration, allowing an appeal against the decision of the Registrar, even
though the opponents mark ‘caltex’ was well-known only in respect of petroleum
products.
5. Sony Kabushuki Kaisha v. Samrao Masker, AIR 1985 Bom 327
The Bombay High Court refused
to interfere with an order of the registrar which allowed registration of the
mark SONI for nail polish. The court observed that: "where the trade
channels for sale of the two items are entirely different and there is no
common field of activity in the course of trade of the two items and also
classes of customers who purchase the two items are entirely distinct and
different, objection to registration of the impugned trademark cannot be
sustained, as there would be no likelihood of confusion or deception."
3. Relative Grounds for Refusal – S. 11
Relative grounds for refusal
of registration.
11. Relative grounds for
refusal of registration.-(1) Save as provided in section 12, a trade mark shall
not be registered if, because of- (a) its identity with an earlier trade mark
and similarity of goods or services covered by the trade mark; or (b) its
similarity to an earlier trade mark and the identity or similarity of the goods
or services covered by the trade mark, there exists a likelihood of confusion
on the part of the public, which includes the likelihood of association with
the earlier trade mark.
(2) A trade mark which- (a)
is identical with or similar to an earlier trade mark; and (b) is to be
registered for goods or services which are not similar to those for which the
earlier trade mark is registered in the name of a different proprietor, shall
not be registered if or to the extent the earlier trade mark is a well-known
trade mark in India and the use of the later mark without due cause would take
unfair advantage of or be detrimental to the distinctive character or repute of
the earlier trade mark.
(3) A trade mark shall not be
registered if, or to the extent that, its use in India
(4) Nothing in this section
shall prevent the registration of a trade mark where the proprietor of the
earlier trade mark or other earlier right consents to the registration, and in
such case the Registrar may register the mark under special circumstance under
section 12. Explanation.-For the purposes of this section, earlier trade mark
means- (a) a registered trade mark or convention application referred to in
section 154 which has a date of application earlier than that of the trade mark
in question, taking account, where appropriate, of the priorities claimed in
respect of the trade marks; (b) a trade mark which, on the date of the application
for registration of the trade mark in question, or where appropriate, of the
priority claimed in respect of the application, was entitled to protection as a
well-known trade mark.
(5) A trade mark shall not be
refused registration on the grounds specified in sub-sections (2) and (3),
unless objection on any one or more of those grounds is raised in opposition
proceedings by the proprietor of the earlier trade mark.
(6) The Registrar shall,
while determining whether a trade mark is a well-known trade mark, take into
account any fact which he considers relevant for determining a trade mark as a
well-known trade mark including- (i) the knowledge or recognition of that trade
mark in the relevant section of the public including knowledge in India obtained
as a result of promotion of the trade mark; (ii) the duration, extent and
geographical area of any use of that trade mark; (iii) the duration, extent and
geographical area of any promotion of the trade mark, including advertising or
publicity and presentation, at fairs or exhibition of the goods or services to
which the trade mark applies; (iv) the duration and geographical area of any
registration of or any application for registration of that trade mark under
this Act to the extent they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark, in
particular, the extent to which the trade mark has been recognised as a
well-known trade mark by any court or Registrar under that record.
(7) The Registrar shall,
while determining as to whether a trade mark is known or recognised in a
relevant section of the public for the purposes of sub-section (6), take into
account- (i) the number of actual or potential consumers of the goods or
services; (ii) the number of persons involved in the channels of distribution
of the goods or services; (iii) the business circles dealing with the goods or
services, to which that trade mark applies.
(8) Where a trade mark has
been determined to be well-known in at least one relevant section of the public
in India
(9) The Registrar shall not
require as a condition, for determining whether a trade mark is a well-known
trade mark, any of the following, namely:- (i) that the trade mark has been
used in India; (ii) that the trade mark has been registered; (iii) that the
application for registration of the trade mark has been filed in India; (iv)
that the trade mark- (a) is well-known in; or (b) has been registered in; or
(c) in respect of which an application for registration has been filed in, any
jurisdiction other than India; or (v) that the trade mark is well-known to the
public at large in India.
(10) While considering an
application for registration of a trade mark and opposition filed in respect
thereof, the Registrar shall- (i) protect a well-known trade mark against the
identical or similar trade marks; (ii) take into consideration the bad faith
involved either of the applicant or the opponent affecting the right relating
to the trade mark.
(11) Where a trade mark has
been registered in good faith disclosing the material information to the
Registrar or where right to a trade mark has been acquired through use in good
faith before the commencement of this Act, then, nothing in this Act shall
prejudice the validity of the registration of that trade mark or right to use
that trade mark on the ground that such trade mark is identical with or similar
to a well-known trade mark.
3.1 Later trade mark similar
with Earlier Trade Marks –S.11(1)
Identity or similarity of
Marks resulting -- in likelihood of confusion or – Association with earlier
Mark ( Dilution ) and Identitiy or similarity of goods/services- Overlap with s
9(2)
Determination of Similarity
of goods/services (See Jelineks Appln, (1946) 63 RPC and Panda Case)
6. K. R. Krishna Chettiar v. Sri Ambal
& Co, AIR 1970 SC 146
(Source: IndianKanoon.Org)
Facts: The
appellant was the sole proprietor of a concern known as Radha & Co. The
respondents Ambal & Co. were a partnership concern. The respondents as also
the appellant were manufacturers and dealers in snuff, carrying on business at Madras Madras
Held that:
(i) The Registrar had expert knowledge and
his decision should not be lightly disturbed. But both the courts had found
that he was clearly wrong and that there was deceptive similarity between the
two marks. In an appeal under Art. 136 of the Constitution the onus was upon
the appellant to show that the concurrent finding of the courts below was
erroneous and that the conditions of s. 12(1) had been satisfied.
(ii) The question in issue was whether if
the appellant's mark was used in a normal and fair manner in connection with
the snuff and if similarly fair and normal user was assumed of the existing
registered marks, will there be such a likelihood of deception that the mark
ought not to be allowed to be registered ? The court had to decide the question
on a comparison of the competing marks as a whole and their distinctive and essential
features. So considered there could be no doubt that the word 'Ambal' was the
distinguishing feature of the trade mark of the respondent and the word 'Andal'
was the distinguishing feature of the appellant's trade mark. There is a
striking similarity and affinity of sound between the words 'Andal' 291 and
'Ambal' Giving due weight to the judgment of the Registrar and bearing in mind
the conclusions of the Single Judge and the Divisional Bench it must be held
that there was real danger of confusion between the two marks,
(iii) There was no visual resemblance
between the two marks but ocular comparison is not always the decisive test.
The resemblance between the two marks must be considered with reference to the
ear as well as the eye.
(iv) The argument that on account of the
different ideas 'conveyed by the words 'Ambal' and 'Andal' the accidental
phonetic resemblance' could not lead to confusion was not acceptable because it
lost sight of the realities of the case. The Hindus in the South of India may
be well aware that the words Ambal and Andal represent the names of two
distinct goddesses. But the respondent's customers were not confined to the
Hindus of the South of India alone and they were not likely to remember the
fine distinctions between a Vaishnavite goddess and a Shivaite deity. The
appeal, accordingly, must be disallowed.
3.2 Earlier Trade mark – if a Well Known Trade Marks -
S.11(2)
Prohibition of registration
even for different goods/ services
Factors for determination -
11(6) to 11(9)
Effect of Trade marks
registered or used in good faith – S.11(11), effect of Acquiescence
7. Carrefour v. V. Subburaman, 2007(35) PTC 225
Facts
Carrefour, a company incorporated
in France and one of the country's largest retailers, applied for an injunction
to restrain the defendant from infringing the trade name and mark CARREFOUR by
using it for its products.
One of the defendant's key
arguments was that (i) the mark CARREFOUR was not well known in India because: the plaintiff owned hypermarkets in other
countries, and the reputation of the mark was not based on the actual products
sold by those hypermarkets, which might have been familiar to Indian consumers;
(ii) the trade name and mark
CARREFOUR did not have the status of a well-known mark under Section 11 of the
Trademark Act 1999; and
(iii) the plaintiff was not
involved in the manufacture and marketing of furniture in India
Decision
The court, holding that the
acquisition of a transborder reputation is a question of fact, stated that the
plaintiff had established a prima facie case. It adopted the trade name and
mark in 1960 and owned a total of 2,500 registrations worldwide for a variety
of products, including furniture. In India ,
the trade name and mark was registered in respect of several products
(excluding furniture) in 1995, and the plaintiff had a presence in India
On the issue of the status of
the trade name and mark under the act, the court stated that as Section 11
deals with the grounds for refusal to register a trademark, and the sole consideration
in this case was the alleged passing off of goods, Section 11 could not be
invoked. However, the court stated that the concept of a well-known trademark,
as distinguished from a normal trademark, aims not only to protect a mark that
is identified with a particular type of goods or services, but also to protect
that mark from being used in relation to other goods and services if a
substantial sector of the public would be led to believe that there is a
connection between the two sets of goods and services. Thus, a well-known mark
should be protected to safeguard consumer interests, even if the unauthorized
use of that trademark relates to products that are dissimilar to the products
bearing the well-known mark.
The court relied on the
ruling in Rob Mathys India Pvt Ltd v Synthes Ag Chur (1977 (17) PTC 669 (DB)).
It held that in such cases, the Indian courts would do well to follow the
middle path rather than the hardline, national approach of the English courts
or the liberal, international approach of the Commonwealth countries. Following
the middle path would help to discourage unethical trade practices which lead
Indian consumers to presume franchise-like connections between foreign products
and confusing or deceptively similar Indian products.
The court granted the
injunction requested by the plaintiff.
In addition to the court
equating the unauthorized use of well-known trademarks to "a
franchise-like connection causing confusion", another interesting aspect
of the case was the defendant's contention that it had adopted the trademark
honestly. Refuting this argument, the court pointed out the shortcomings in the
defendant's interpretation of the statute and emphasized that the respondent
had established only adoption, and not 'honest adoption'.
The defendant's final
argument that infringement would arise only if the trademark were used in
relation to the same or similar goods was rejected. The court held that as this
was a case of passing off, such issues were irrelevant.
(Source: http://www.internationallawoffice.com/newsletters/detail.aspx?g=f1594709-d5c1-4ce4-b3f0-e8bb56208ae2
)
3.3 Refusal of registration
on grounds of passing off or under law of copyright – S.11(3)
3.4 Prior/ Vested Rights
Honest and Concurrent user –
S.12, Prior user of mark and vested rights– S. 34, Name, Place of Business,
Address or Description of Character or Quality of Goods or Services– S.35, Acquiescence
– S. 33
S.12: Registration in the case of honest concurrent
use, etc.-
In the case of honest
concurrent use or of other special circumstances which in the opinion of the
Registrar, make it proper so to do, he may permit the registration by more than
one proprietor of the trade marks which are identical or similar (whether any
such trade mark is already registered or not) in respect of the same or similar
goods or services, subject to such conditions and limitations, if any, as the
Registrar may think fit to impose
Prior user of mark –
S. 34: Saving for vested
rights.
Nothing in this Act shall
entitle the proprietor or a registered user of registered trade mark to
interfere with or restrain the use by any person of a trade mark identical with
or nearly resembling it in relation to goods o services in relation to which
that person or a predecessor in title of his has continuously used that trade
mark from a date prior- (a) to the use of the first-mentioned trade mark in
relation to those goods or services be the proprietor or a predecessor in title
of his; or (b) to the date of registration of the first-mentioned trade mark in
respect of those goods or services in the name of the proprietor of a
predecessor in title of his; whichever is the earlier, and the Registrar shall
not refuse (on such use being proved) to register the second mentioned trade
mark by reason only of the registration of the first-mentioned trade mark.
Other rights –
S. 35: Saving for use of
name, address or description of goods or services.
Nothing in this Act shall
entitle the proprietor or a registered user of a registered trade mark to
interfere with any bona fide use by a person of his own name or that of his
place of business, or of the name, or of the name of the place of business, of
any of his predecessors in business, or the use by any person of any bona fide
description of the character or quality of his goods or services
Acquiescence –
S. 33: Effect of
acquiescence.
(1) Where the proprietor of
an earlier trade mark has acquiesced for a continuous period of five years in
the use of a registered trade mark, being aware of that use, he shall no longer
be entitled on the basis of that earlier trade mark- (a) to apply for a
declaration that the registration of the later trade mark is invalid, or (b) to
oppose the use of the later trade mark in relation to the goods or services in
relation to which it has been so used, unless the registration of the later
trade mark was not applied in good faith.
4. Passing off, Infringement and Exceptions to
Infringement Action
4.1 Enlargement of
Infringement protection – S. 29
Section 29. Infringement of registered trade marks.-
(1) A registered trade mark
is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which is
identical with, or deceptively similar to, the trade mark in relation to goods
or services in respect of which the trade mark is registered and in such manner
as to render the use of the mark likely to be taken as being used as a trade
mark.
(2) A registered trade mark
is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which
because of- (a) its identity with the registered trade mark and the similarity
of the goods or services covered by such registered trade mark; or (b) its
similarity to the registered trade mark and the identity or similarity of the
goods or services covered by such registered trade mark; or (c) its identity
with the registered trade mark and the identity of the goods or services
covered by such registered trade mark, is likely to cause confusion on the part
of the public, or which is likely to have an association with the registered
trade mark.
(3) In any case falling under
clause (c) of sub-section (2), the court shall presume that it is likely to
cause confusion on the part of the public.
(4) A registered trade mark
is infringed by a person who, not being a registered proprietor or a person
using by way of permitted use, uses in the course of trade, a mark which- (a)
is identical with or similar to the registered trade mark; and (b) is used in
relation to goods or services which are not similar to those for which the
trade mark is registered; and (c) the registered trade mark has a reputation in
India and the use of the mark without due cause takes unfair advantage of or is
detrimental to, the distinctive character or repute of the registered trade
mark.
(5) A registered trade mark
is infringed by a person if he uses such registered trade mark, as his trade
name or part of his trade name, or name of his business concern or part of the
name, of his business concern dealing in goods or services in respect of which
the trade mark is registered.
(6) For the purposes of this
section, a person uses a registered mark, if, in particular, he- (a) affixes it
to goods or the packaging thereof; (b) offers or exposes goods for sale, puts
them on the market, or stocks them for those purposes under the registered
trade mark, or offers or supplies services under the registered trade mark; (c)
imports or exports goods under the mark; or (d) uses the registered trade mark
on business papers or in advertising.
(7) A registered trade mark
is infringed by a person who applies such registered trade mark to a material
intended to be used for labeling or packaging goods, as a business paper, or
for advertising goods or services, provided such person, when he applied the
mark, knew or had reason to believe that the application of the mark was not
duly authorized by the proprietor or a licensee.
(8) A registered trade mark
is infringed by any advertising of that trade mark if such advertising- (a)
takes unfair advantage of and is contrary to honest practices in industrial or
commercial matters; or (b) is detrimental to its distinctive character; or (c)
is against the reputation of the trade mark.
(9) Where the distinctive
elements of a registered trade mark consist of or include words, the trade mark
may be infringed by the spoken use of those words as well as by their visual
representation and reference in this section to the use of a mark shall be
construed accordingly.
4.2 For same, similar or
different goods/services
4.3 Difference between
passing off and infringement
Passing off- for similar
goods/different goods/transborder reputation
8.Parley Products v. J P & Co, AIR 1972 SC 1359
The appellants filed a suit for an
injunction restraining the respondents from infringing their registered trade
mark used on packets of biscuits manufactured by them, The suit was dismissed
by the trial court and the High Court. Allowing the appeal to this Court,
HELD : (1) Under the Trade and Merchandise
Marks Act, 1958, a registered trade mark is infringed by a person who uses, in
the course of trade, a mark which is identical with or deceptively similar to,
the trade mark, in relation to any goods in respect of which the trade mark is,
registered; and the expression 'deceptively similar' means a mark which so
nearly resembles another mark as likely to deceive or cause confusion. In order
to come to the conclusion whether one mark is deceptively similar to another
the broad and essential features of the two are to be considered. They should
not be placed side by side to find out if there are any differences in the
design, and if so, whether they are of such character as to prevent one design
from being mistaken for the other. It would be enough if the impugned mark
bears such an overall similarity to the registered mark as would be likely to
mislead a person usually dealing with one to accept the other if offered to
him.
In this case, the packets of biscuits
manufactured by the appellants and respondents were practically of the same
size, the color scheme of the two wrappers was almost the same, and the designs
on both, though not identical, bore such a close resemblance that one could
easily be mistaken for the other. If one was not careful enough to note the
peculiar features of the wrapper on the plaintiffs' goods, he might easily
mistake the defendants' wrapper for the plaintiffs' if shown to him some time
after he bad seen the plaintiffs' wrapper. Though the trial court and the High
Court had concurrently found that the defendants' wrapper was not deceptively
similar to that of the plaintiffs, the finding must be set aside as it was not
arrived at on a proper consideration of the law.
(Source:
IndianKanoon.Org)
9. Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd, 2001 PTC 541
(SC)
The appellants and the
defendants are pharmaceutical companies manufacturing pharmaceutical products.
The present suit was filed due to the injunction filed by the appellant against
the defendant. The respondent was selling a medicine called “Falcitab”, and the
appellant was selling a similar drug called “Falcigo”
Contention of the Plaintiff:
The Plaintiff alleged that
the trademark of the defendant was similar to it’s own trademark. The appellant
claims to have started the manufacture and production of “Falcigo” before the
Defendant. Hence the plaintiff seeks an injunction against the defendant from
the use of the word “Falcitab”, and claimed that the same would be passed off
as appellant’s drug and this would lead to confusion and ultimately deception
to the consumer.
Contention of the Defendant:
The defendants claim that the
word “Falci” is a prefix for a mark, and is taken from the disease Phalcipharum
Malaria and it is a common practice in pharmaceutical trade to use part of the
word of the disease as a trade mark to indicate to the doctors and chemists
that a particular drug is meant for a particular disease.
Moreover the two drugs in
question are Schedule “L” drugs and cannot be sold over the counter. And hence
there cannot be even the remotest chance for confusion.
Court:
The court in order to decide
referred to a few judgments: -
In the case of National
Sewing Thread co. Ltd. V. James Chadwick and Bros. Ltd[2]., the court had held
that “no trademark nor part of a trademark shall be registered which consists
of, or contains any scandalous design, or any matter the use of which would by
reason of its being likely to deceive or to cause confusion has to be refused
notwithstanding the fact that the trademark might not have close resemblance to
each other”
The court propounded that it
cannot be overlooked that the names of the drugs are English words, which
according to the mass of the Indian people is a foreign word.
In the case of Amritdhara
Pharmacy vs. Satya Deo[3], the court had
held that a question of deception should be looked at from the point of view of
a man of average intelligence and imperfect recollection. To such a man the
overall structure and phonetic similarity might appear similar. The trade here relates to goods sold to
illiterate or badly educated people, hence it is a misconception that a person
educated in Hindi language will be easily be able to distinguish goods which
have an English name.
In the case of R.J.
Strasenburgh Co vs. Kenwood Laboratories, the court had held that physicians
are not immune from confusion or mistake. Further more it is common knowledge
that many prescriptions are telephoned to the pharmacists and others are
handwritten, and there is a scope for errors.
The court propounded that
physicians and pharmacists are not infallible. They are human and in common
with the rest of mankind are subject to human frailties.
Judgment of the court:
The court held that drugs are
poisons, not sweets and confusion between medicinal products may therefore, be
life threatening, not merely inconvenient. Thus there such be as many as
possible indications to distinguish between two medicinal products. It is not
uncommon that in hospitals, drugs can be requested verbally. Many patients may
be elderly, infirm or illiterate. They may not be in a position to differentiate
between the medicine prescribed and medicine bought.
In a country like India
Hence the High Court with
these views ordered the trial court to decide the suit keeping in mind the
observations made in the present judgment
(Source: http://jurisonline.in/?p=375, Author:
Nikhil Danak)
10. Carrefour v. V. Subburaman, 2007(35) PTC 225 [Discussed
above]
11. Bata India Ltd. v. Pyare Lal & Co., AIR 1985 All 242
The plaintiff being a shoe
manufacture had filed a suit against the defendant for passing off. Although
the defendants were dealing with a totally different manufacturing product(foam),
it was pertinent to pass injunction against the defendants for passing off, as
there was some element of diminishment in the trademark acquired by the plaintiff.
Source: LawTeacher.Net
The court stated: “How would the customers know that Bata were
not producing foam? It is well known
that the name represented makers of shoes and other analogous products, but a
question would arise in the mind of the lay consumers whether Bata were also
producing foam. Who is going to answer
this question? Does an ordinary customer
ask the seller as to whose product it is?
The answer generally is in the negative.
He buys a thing on the basis of his own impression.”
12. Milmet Oftho Industries v. Allergen Inc., (2004) 12 SCC 624
[Use in India
The
Appellants are an Indian Pharmaceutical company. The Respondents are also a
Pharmaceutical company which manufacture pharmaceutical products in several
countries. The Respondents filed a Suit for an injunction based on an action
for passing off in respect of mark "OCUFLOX" used on a medicinal
preparation manufactured and marketed by the Respondents. The Respondents
claimed that they were the prior users of the mark OCUFLOX in respect of an eye
care product containing Ofloxacin and other compounds. They claimed that they
first used this Mark on 9th September, 1992, after which they marketed the
product in other countries like Europe, Australia, South Africa and South America
and that they had obtained registration in Australia, Bolivia, Ecuador, Mexico,
Peru, South Africa, Canada and the United States of America. They claimed that
they had also applied for registration of the mark in several other countries
including India India and the Appellants
having introduced the product first in India
Held that non-use in India
13. Balakrishna Hatcheries v. Nandos International Ltd, 2007(35) PTC
295(Bom)
A trade mark infringement
case was filed by Balkrishna Hatcheries (owner of Nandu brand) against Nando's
International, an irish chain of restaurants, in India
The Bombay High Court on
Monday refused to grant an injunction against the South African food chain from
using the Nando's trademark.
Justice DK Deshmukh held,
"It is incredible to suggest that Nando's with its vast reputation would
want to take advantage (much less unfair advantage) of the alleged repute of
Nandu's registered trademark and for that purpose open the restaurant."
Noting that Nando's is a
registered trademark in over 100 countries, Justice Deshmukh held that Nandu's
has no reputation in India
14. Health and Glow Retailing Pvt. Ltd v. Dhiren Krishna
Paul, Trading as Health and Glow Clinic, 2007(35) PTC 471(Mad)
15 Kapil Wadhwa v. Samsung
Electronics Co. Ltd.,194(2012)DLT23; MIPR2012(3)191
4.4 Exceptions –S.30
16. Hawkins Cookers Limited v Murugan Enterprises, 2012(50)PTC389(Del
Case Mat Decision Overruled
by the Supreme Court
Facts:
1. The appellant is the
registered proprietor of the trademark “HAWKINS” in respect of pressure cookers
and parts thereof, including gaskets, falling under Class-21 of the erstwhile
Trade and Merchandise Marks Act 1958.
2. The grievance relates to
the respondent, M/s. Murugan Enterprises, manufacturing and selling gaskets
under the trademark “MAYUR”. But on the packaging material it is printed as
follows :
“Suitable for : Hawkins
Pressure Cookers”
3. Whereas the words
“suitable for” and “Pressure Cookers” are printed in black colour, the word
“Hawkins” is printed in red colour and thus it is apparent that the intention
is that the word “Hawkins” catches the eye.
4. The appellant alleges that
by so writing on the packaging material, the respondent is infringing upon its
registered trademark and the gaskets pertaining to pressure cookers are not
manufactured by the respondent for any particular brand of pressure cooker,
much less Hawkins Pressure Cookers and that the gaskets of pressure cookers can
fit any pressure cooker manufactured by any manufacturer, for the reason all
pressure cookers have the same dimensions of the mouth and hence the lid size,
the only correlation is to the capacity of a pressure cooker i.e. 1 liter, 2
liter etc. Thus, the appellant contends that the respondent cannot use the word
“Hawkins”, which is the trademark of the appellant, in relation to the goods
gaskets.
Decision:
1. The gaskets manufactured
by the respondent, as also other manufacturers, are neither designed, nor are
capable of being designed, to be used in any particular kind of pressure
cooker, for the reason all pressure cookers are so designed that the mouth of
the pressure cooker and the corresponding lid is of same dimension; the only
variation being with respect to the capacity of a pressure cooker. In other
words, a gasket pertaining to a 1 liter capacity pressure cooker would fit all
pressure cookers manufactured by all manufacturers.
2. It is further clarified
that if in the sale it becomes reasonably necessary for the manufacturer of
adaptable goods, to refer to the trademark of the relatable goods, such
reference would not amount to an infringement of the trademark under which the
relatable goods are sold, but has misapplied the evidence on record.
3. It is also further stated
that the the respondent has given undue prominence to the word “Hawkins” by
printing it in a distinct red colour and the remaining words of the sentence
are printed in black colour.
The impugned judgment was set
aside and the Defendant, therefore, is restrained from using the quote
“suitable for Hawkins” in the said circumstances.
5. Trade Mark Dilution and Contemporary Areas (S.11(1),
S.29(4), S.29(8))
17. ITC Limited v Philip Morris Products S.A., 2010(42) PTC 572 (Del
In the dispute between ITC
and Philip Morris & Others for the alleged trade mark dilution of ITC owned
Welcome Group 'Namaste' logo by Philip Morris' stylized logo of the Marlboro
trademark, the Delhi High Court has ordered that ITC is not entitled to a
temporary injunction against Philip Morris.
The Delhi High Court refused
to grant an injunction against the use of a device mark by Philip Morris in
relation to its Marlboro brand of cigarettes in India
the impugned mark is
identical or similar to the senior mark;
the senior or injured mark
has a reputation in India
the use of the impugned mark
is without due cause;
the use of the impugned mark
(amounts to) taking unfair advantage of, or is detrimental to, the distinctive
character or reputation of the registered trade mark.
It was further held that as
the law does not provide for a presumption of infringement in the case of
dilution of trade mark, each of the aforesaid elements has to be established
before an injunction can be granted on this ground.
The court also said that the
test of similarity of marks, namely dilution, was a notch higher than required
in the said Act. It also held that in deciding the question of the similarity
of the two marks in a dilution action, the Court must focus on the 'global'
look rather than on the common elements of the two marks.
The court further held that
though the 'aura' of the ITC mark could go beyond the niche hospitality
services and extend to other luxury goods, there was nothing to show that such
association could extend to cigarettes.
The court considered this
aspect to be crucial as ITC itself sold cigarettes without the said mark. There
was also nothing on record to show that the use of Phillip Morris's mark would
be detrimental to the distinctive character of the ITC mark. The Court further
held "In the case of logos and other marks, the application of the
"identity" or "similarity" test has to result in a conclusion
that the rival marks bear a very close resemblance, seen from an overall
perspective.
Protection of Trade Dress
& colour combinations; Tarnishment of Trade marks/Comparative
Advertising/Disparagement See Also S 29 (8)
18. N Ranga Rao v. Anil Garg, 2006 (32) PTC 15 (Del
N.Ranga Rao and Sons was a
partnership firm engaged in the manufacture of incense sticks under
the trade name “LIA”. Anil
Garg started selling his products under a similar trade name “DIA” and adopted
packaging similar to that of the partnership firm. An amalgam of colour
combinations, names and logos which creates a total identification with products
was alleged to be copied. The Court laid down that to establish infringement
the “trade dress” has to be seen as a whole and not in parts. Copying of the
packaging of incense sticks and the colour scheme as well as trade name of a
well-known product of the same range constitutes infringement and the suit for
permanent injunction of the plaintiff in the case was successful.
Thus, the Indian position of
trade dress protection is that one should rely on the following factors
before alleging infringement:
(1) The infringed mark should
be distinctive.
(2) There should be deceptive
similarity with the infringed mark so as to create confusion in the minds
of the consumers.
(3) The class of consumers
targeted should be the same for the products of both the parties
(Source: http://psalegal.com/upload/publication/assocFile/IPR&TECHNOLOGYBULLETIN-ISSUEVI_1288787159.pdf
)
19. Pepsi Co Inc v. Hindustan Coca Cola Ltd., 2003 (27) PTC 305 (Del
The Delhi High Court held
that while boasting about one’s product is allowed, disparaging a rival’s
product is not. The Delhi High Court further held that if a commercial is
depicted in a manner to condemn the competitor’s product, the commercial would
be considered as disparaging.
20. Dabur India Ltd. v. Colgate Palmolive 2004 (29) PTC 401 (Del
The Delhi High Court granted
interim injunction to Dabur India Limited by restraining Colgate Palmolive
India Ltd from telecasting a TV commercial of its new product 'Colgate Tooth
Powder' on grounds that it is disparaging towards 'Dabur Lal Dant Manjan.
The suit:
Dabur India Limited,
manufacturers of Dabur Lal Dant Manjan Powder' filed a suit and an application
for interim injunction, prompted by an advertisement aired on television
channels by Colgate Palmolive India Ltd for advertising their new product
'Colgate Tooth Powder'. The TV advertisement shows that a reputed film star is
stopping customers from purchasing the red container/bottle which resembles
Dabur's Lal Dant Manjan powder, and telling them the ill-effects of Dabur's
product, thus disparaging its products.
Colgate Palmolive claimed
that the advertisement does not identify and refer to Dabur's product, and
there is nothing wrong if it praises its own product by pointing out the
defects/deficiencies in the rival product.
Holding that the balance of
convenience is in favour of Dabur India Ltd as the effect of the advertisement
aired cannot be repaired readily, Delhi High Court granted interim injunction
holding that generic disparagement of a rival product without specifically
identifying or pin pointing the rival product is objectionable. The court
further held that slandering of a rival product as bad is not permissible.
6. Exhaustion of IPR - Art. 6 TRIPs, S.29(6) Trade
Marks Act, 1999, S. Patents Act, 1970
Exhaustion occurs at the
moment when the intellectual property rights (IPR) holder’s control over the
use and disposition of goods and services embodying IPR ceases in order to
permit the free transfer of goods and services within and across national
borders. This generally occurs when goods and services are first sold or placed
on the market. According to the Resource Book on TRIPS and Development, “once
the rights holder has been able to obtain an economic return from the first
sale or placing on the market, the purchaser or transferee of the good or service
is entitled to use and dispose of it without further restriction.” The doctrine
of exhaustion has a direct effect on the control over the disposition of goods
and services embodying the IPR rights and not the IPR themselves. It seems that
the doctrine of exhaustion is treated more as a trade matter (disposition or
transfer of good and services within and across national boarders) rather than
an IPR matter (although the trade and IP aspects of IPR are often difficult to
finely distinguish and are more often than not overlapping).
The different forms of
exhaustion with respect to their scope are: international, regional and
national. International exhaustion is the one with the largest scope. If a good
or service is first sold or placed on the market of any country, then the IPRs
as embodied in the good or service is deemed exhausted with regard to all the
other countries in the world. The good or service first sold or placed can
thereafter be more or less freely transferred and traded within and across the
national borders of all countries worldwide. With regard to regional and
national exhaustion, the principle is the same although the effect of the
exhaustion of IPR as embodied in the good or service only applies,
respectively, within a particular region or a particular country. Based on the
Resource Book on TRIPS and Development, Japan, Switzerland, South Africa,
countries in Latin America, Australia, United States, in general adhere to
international exhaustion (subject to certain qualifications) and the European
Union follows the rule of regional exhaustion.
Even if the rule of
exhaustion deals primarily with the control and disposition of good and
services themselves that embody IPR, it has an important role in trade. Without
this rule, trade and different types of uses, transfers, dispositions and
activities (whether political, social or economic) of goods and services will
be severely impaired because too much control will be granted to the IPR
holder. For example, commonplace acts like lending a book to another person to
read, selling a used CD or recycling used juice containers and turning them
into useful bags and accessories, can be prohibited by the IPR holder. This
would result in too much a restriction on the free exchange of good and
services in the national, regional and global markets. The a priori assumption
here of course is that free exchange of good and services within and across
national borders is beneficial for commerce, economic development, increased
innovation and the sharing of cultures and knowledge. In a way, exhaustion
regulates how the physical embodiments of IPR are controlled and transferred in
order to ensure that there is a balance between the rights of IPR holders and
those of the general public and, on a macro level, the larger international
community. The doctrine of exhaustion is a counterbalance to the
quasi-monopolistic rights of IPR holders to exclude others from the use and
control over their IPR as embodied in such goods and services.
Under Article 6 of the TRIPS
Agreement, it seems that, except when it involves the principles of national
treatment and most favored nation, for purposes of dispute settlement, in
general, the Agreement does not create, modify, extinguish or change any rule,
right or principle in connection with the issue of exhaustion of IPR. This
hands-off policy was a result of the failure of the members to agree on any
exhaustion rules during the negotiations of the Agreement. In a sense, Article
6 is an agreement not to agree at that time. It is important to note that
Article 28 of the Agreement is subject to Article 6, which means that the right
of importation under Article 28 cannot be “used to address the subject matter
of exhaustion in dispute settlements under TRIPS.” Article 28 then does not
directly affect the rule of exhaustion.
(Source: http://michaeldizon.wordpress.com/2009/01/20/doctrine-of-exhaustion-of-intellectual-property-rights/
)
7. Licencing of Trade Marks – Ss.48 – 53
48. Registered users.—
(1) Subject to the provisions
of section 49, a person other than the registered proprietor of a trade mark
may be registered as a registered user thereof in respect of any or all of the
goods or services in respect of which the trade mark is registered.
(2) The permitted use of a
trade mark shall be deemed to be used by the proprietor thereof, and shall be
deemed not to be used by a person other than the proprietor, for the purposes
of section 47 or for any other purpose for which such use is material under
this Act or any other law.
49. Registration as
registered user.—
(1) Where it is proposed that
a person should be registered as a registered user of a trade mark, the
registered proprietor and the proposed registered user shall jointly apply in
writing to the Registrar in the prescribed manner, and every such application
shall be accompanied by—
(a) the agreement in writing
or a duly authenticated copy thereof, entered into between the registered
proprietor and the proposed registered user with respect to the permitted use
of the trade mark; and
(b) an affidavit made by the
registered proprietor or by some person authorised to the satisfaction of the
Registrar to act on his behalf,—
(i) giving particulars of the
relationship, existing or proposed, between the registered proprietor and the
proposed registered user, including particulars showing the degree of control
by the proprietor over the permitted use which their relationship will confer
and whether it is a term of their relationship that the proposed registered
user shall be the sole registered user or that there shall be any other
restriction as to persons for whose registration as registered users
application may be made;
(ii) stating the goods or
services in respect of which registration is
proposed;
(iii) stating the conditions
or restrictions, if any, proposed with respect to the characteristics of the
goods or services, to the mode or place of permitted use, or to any other
matter;
(iv) stating whether the
permitted use is to be for a period or without limit of period, and, if for a
period, the duration thereof; and
(c) such further documents or
other evidence as may be required by the Registrar or as may be prescribed.
(2) When the requirements of
sub-section (1) have been complied with, the Registrar shall register the
proposed registered user in respect of the goods or services as to which he is
so satisfied.
(3) The Registrar shall issue
notice in the prescribed manner of the registration of a person as a registered
user, to other registered users of the trade mark, if any.
(4) The Registrar shall, if
so requested by the applicant, take steps for securing that information given
for the purposes of an application under this section (other than matters
entered in the register) is not disclosed to rivals in trade.
50. Power of Registrar for
variation or cancellation of registration as registered user.—
(1) Without prejudice to the
provisions of section 57, the registration of a person as registered user—
(a) may be varied by the
Registrar as regards the goods or services in respect of which it has effect on
the application in writing in the prescribed manner of the registered
proprietor of the trade mark;
(b) may be cancelled by the
Registrar on the application in writing in the prescribed manner of the
registered proprietor or of the registered user or of any other registered user
of the trade mark;
(c) may be cancelled by the
Registrar on the application in writing in the prescribed manner of any person
on any of the following grounds,
namely:—
(i) that the registered user
has used the trade mark otherwise than in accordance with the agreement under
clause (a) of sub-section (1) of section 49 or in such way as to cause or to be
likely to cause, deception or confusion;
(ii) that the proprietor or
the registered user misrepresented, or failed to disclose, some fact material
to the application for registration which if accurately represented or
disclosed would not have justified the registration of the registered user;
(iii) that the circumstances
have changed since the date of registration in such a way that at the date of
such application for cancellation they would not have justified registration of
the registered user;
(iv) that the registration
ought not to have been effected having regard to rights vested in the applicant
by virtue of a contract in the performance of which he is interested;
(d) may be cancelled by the
Registrar on his own motion or on the application in writing in the prescribed
manner by any person, on the ground that any stipulation in the agreement
between the registered proprietor and the registered user regarding the quality
of the goods or services in relation to which the trade mark is to be used is
either not being enforced or is not being complied with;
(e) may be cancelled by the
Registrar in respect of any goods or services in relation to which the trade
mark is no longer registered.
(2) The Registrar shall issue
notice in the prescribed manner in respect of every application under this
section to the registered proprietor and each registered user (not being the
applicant) of the trade mark.
(3) The procedure for
cancelling a registration shall be such as may be prescribed:
Provided that before
cancelling of registration, the registered proprietor shall be given a
reasonable opportunity of being heard.
Comments
Registration of registered
user may be varied or cancelled, inter alia, on the ground that the registered
user has used the trade mark not in accordance with the agreement or the
proprietor/user has failed to disclose any material facts for such registration
or that the stipulation in the agreement regarding the quality of goods is not
enforced or that the circumstances have changed since the date of registration,
etc. Notice and opportunity of hearing is provided before cancellation of
registration.
51. Power of Registrar to
call for information relating to agreement in respect of registered users.—
(1) The Registrar may, at any
time during the continuance of the registration of the registered user, by
notice in writing, require the registered proprietor to confirm to him within
one month that the agreement filed under clause (a) of sub-section (1) of
section 49 continues to be in force.
(2) If the registered
proprietor fails to furnish the confirmation within one month as required under
sub-section (1), the registered user shall cease to be the registered user on
the day immediately after the expiry of the said period and the Registrar shall
notify the same.
52. Right of registered user
to take proceedings against infringement.—
(1) Subject to any agreement
subsisting between the parties, a registered user may institute proceedings for
infringement in his own name as if he were the registered proprietor, making
the registered proprietor a defendant and the rights and obligations of such
registered user in such case being concurrent with those of the registered
proprietor.
(2) Notwithstanding anything
contained in any other law, a registered proprietor so added as defendant shall
not be liable for any costs unless he enters an appearance and takes part in
the proceedings.
53. No right of permitted
user to take proceeding against infringement.—
A person referred to in
sub-clause (ii) of clause (r) of sub-section (1) of section 2 shall have no
right to institute any proceeding for any infringement.
Permission of Central
Government not required in 1999 Act
Necessity of Actual Quality
Control
Paradox of Quality Control
Supremacy of Licencing
Agreement
21. Pioneer HiBred v. Pioneer Seeds, 1990 IPLR 17
22.Baker Huges Ltd v. Hiroo Khushalini, 1998 PTC 580; 2004 PTC 153 (SC)
23. MTV Holdings v. Mistrale Publishing Pvt. Ltd, 2005 (30) PTC 489 (Del
24. Gujarat Bottling v. Coca Cola, AIR 1995 SC 2372
3. Geographical Indications
[Legislation: The
Geographical Indications of goods (Registration and Protection) Act, 1999, in
force from 15th Sep., 2003]
1. Definitions- ‘Geographical
Indication’ (S.2 (e)), ‘Indication’ (s.2 (g)), ‘Goods’ (S.2 (f)), ‘Producer’
(S.2 (k)), Certification Trade Mark, Collective Marks
2. Concept of Indication of
source, Geographical Indication and appellations of origin, Community Right
3. Kinds of Geographical
Indications and Registration
Procedure for registration
(Ss 3-8, 11 to 17)
Grounds for Refusal of
Registration of GI’s (S.9)
Section 9. Prohibition of
Registration of certain geographical indications
A geographical indication:
(a) the use of which would be
likely to deceive or cause confusion; or
(b) the use of which would be contrary to any
law for the time being in force; or
(c) which comprises or contains scandalous or
obscene matter; or
(d) which comprise or
contains any matter likely to hurt the religious susceptibilities of any class
or section of the citizens of India
(e) which would otherwise be disentitled to
protection in a court; or
(f) which are determined to
be generic names or indications of goods and are, therefore, not or ceased to
be protected in their country of origin, or which have fallen into disuse in
that country; or
(g) which although literally true as to the
territory, region or locality in which the goods originate, but falsely
represent to the persons that the goods originate in another territory, region
or locality, as the case may be,
shall not be registered as a
geographical indication.
Explanation 1: For the
purposes of this section, “generic names or indications” in relation to goods,
means the name of a goods which, although relates to the place or the region
where the goods was originally produced or manufactured, has lost its original
meaning and has become the common name of such goods and serves as a
designation for or indication of the kind, nature, type or other property or
characteristic of the goods.
Explanation 2: In determining
whether the name has become generic, account shall be taken of all factors
including the existing situation in the region or place in which the name
originates and the area of consumption of the goods.
Registration of homonymous Geographical Indications
(S.10)
Section 10. Registration of
homonymous geographical indications
Subject to the provisions of
Section 7, a homonymous geographical indication may be registered under this
Act, if the Registrar is satisfied, after considering the practical conditions
under which the homonymous indication in question shall be differentiated from
other homonymous indications and the need to ensure equitable treatment of the
producers of the goods concerned, that the consumers of such goods shall not be
confused of misled in consequence of such registration.
Duration of protection and renewal(Ss18-19)
Section 18. Duration,
renewal, Removal and Restoration of registration
(1) The registration of a
geographical indication shall be for a period of ten years, but may be renewed
from time to time in accordance with the provisions of this section.
(2) The registration of an authorised user
shall be for a period of ten years or for the period till the date on which the
registration of the geographical indication in respect of which the authorised
user is registered expires, whichever is earlier.
(3) The Registrar shall, on
application made in the prescribed manner, by the registered proprietor or by
the authorised user and within the prescribed period and subject to the payment
of the prescribed fee, renew the registration of the geographical indication or
authorised user, as the case may be, for a period of ten years from the date of
expiration of the original registration or of the last renewal of registration,
as the case may be (which date is in this section referred to as the expiration
of the last registration).
(4) At the prescribed time before the
expiration of the last registration of a geographical indication or the authorised
user, as the case may be, the Registrar shall send notice in the prescribed
manner to the registered proprietor or the authorised user, as the case may be,
of the date of expiration and the conditions as the payment of fees and
otherwise upon which a renewal of registration may be obtained, and, if at the
expiration of time prescribed in that behalf those conditions have not been
duly complied with, the Registrar may remove the geographical indication or the
authorised user, as the case may be, from the register.
Provided that the Registrar shall not remove
the geographical indication or the authorised user, as the case may be, from
the register, if an application is made in the prescribed form and the
prescribed fee and surcharge is paid within six months from the expiration of
the last registration of the geographical indication or the authorised user, as
the case may be, and shall renew the registration of geographical indication or
the authorised user as the case may be, for a period of ten years under
sub-section (3).
(5) Where a geographical indication or
authorised user, as the case may be, has been removed from the register for
non-payment of the prescribed fee, the Registrar shall, after six months and
within one year from the expiration of the last registration of the
geographical indication or the authorised user, as the case may be, on receipt
of an application in the prescribed form and on payment of the prescribed fee,
if satisfied that it is just to do so, restore the geographical indication or
the authorised user, as the case may be, to the register and renew registration
of the geographical indication or authorised user, as the case may be, either
generally or subject to such condition or limitation as he thinks fit to
impose, for a period of ten years from the expiration of the last registration.
Section 19. Effect of Removal
from Register for Failure to Pay fee for renewal
Where a geographical
indication has been removed from the register for failure to pay the fee for
renewal, it shall nevertheless, for the purpose of any application for the
registration of another geographical indication during one year, next after the
date of removal, be deemed to be a ‘geographical indication already on the
register, unless the tribunal is satisfied either-
(a) that there has been no bona fide trade use
of the geographical indication which has been removed within the two years
immediately preceding its removal; or
(b) that no deception or
confusion would be likely to arise from the use of the geographical indication
which is the subject of the application for registration by reason of any
previous use of the geographical indication which has been removed.
4. Infringement, penalties and remedies(Ss. 20-23, Chapter Ss. 37-54,
Ss. 66-67, Rules for allowing use of registered GI by authorised users)
Section 20. No action for
infringement of unregistered geographical indication
(I) No person shall be
entitled to institute any proceeding to prevent, or to recover damages for, the
infringement of an unregistered geographical indication.
(2) Nothing in this Act shall
be deemed to affect rights of action against any person for passing off goods
as the goods of another person or the remedies in respect thereof.
Section 21. Rights conferred
by registration
(I) Subject to the other provisions of this
Act, the registration of a geographical indication shall, if valid, give,-
(a) to the registered proprietor of the
geographical indication and the authorised user or users thereof the right to
obtain relief in respect of infringement of the geographical indication in the
manner provided by this Act;
(b) to the authorised user
thereof the exclusive right to the use of the geographical indication in
relation to the goods in respect of which the geographical indication is
registered.
(2) The exclusive right to the use of a
geographical indication given under clause (b) of sub-section (1) shall be
subject to any condition and limitation to which the registration is subject.
(3) Where the two or more persons are
authorised users of geographical indications, which are identical with or
nearly resemble each other, the exclusive right to the use of any of those
geographical indications shall not (except so far as their respective rights
are subject to any conditions or limitations entered on the register) be deemed
to have been acquired by anyone of those persons as against any other of those
persons merely by registration of the geographical indications, but each of
those persons has otherwise the same rights as against other persons as he
would have if he were the sole authorised user.
Section 22. Infringement or registered
geographical indications
(1) A registered geographical indication is
infringed by a person who, not being an authorised user thereof,-
(a) uses such geographical indication by any
means in the designations or presentation of goods that indicates or suggests
that such goods originate in a geographical area other than the true place of
origin of such goods in a manner which misleads the persons as to the
geographical origin of such goods; or
(b) uses any geographical indication in such
manner which constitutes an act of unfair competition including passing off in
respect of registered geographical indication.
Explanation 1:- For the purposes of this
clause, “act of unfair competition” means any act of competition contrary to
honest practices in industrial or commercial matters.
Explanation 2:- For the removal of doubts, it
is hereby clarified that the following acts shall be deemed to be acts of
unfair competition, namely:-
(i)all acts of such a nature
as to create confusion by any means whatsoever with the establishment, the
goods or the industrial or commercial activities, of a competitor;
(ii) false allegations in the course of trade
of such a nature as to discredit the establishment, the goods or the industrial
or commercial activities, of a competitor;
(iii) geographical indications, the use of
which in the course of trade is liable to mislead the persons as to the nature,
the manufacturing process, the characteristics, the suitability for their
purpose, or the quantity, of the goods;
(b) uses another geographical
indication to the goods which, although literally true as to the territory,
region or locality in which the goods originate, falsely represents to the
persons that the goods originate in the territory, region or locality in
respect of which such registered geographical indication relates.
(2) The Central Government
may, if it thinks necessary so to do for providing additional protection to
certain goods or classes of goods under sub-section (3), by notification in the
Official Gazette, specify such goods or class or classes of goods, for the
purposes of such protection.
(3) Any person who is not an
authorised user of a geographical indication registered under this Act in
respect of the goods or any class or classes of goods notified under
sub-section (2), uses any other geographical indication to such goods or class
or classes of goods not originating in the place indicated by such other
geographical indication or uses such other geographical indication to such
goods or class or classes of goods even indicating true origin of such goods or
uses such other geographical indication to such goods or class or classes of
goods in translation of the true place of origin or accompanied by expression
such as “kind”, “style”, “imitation”, or the like expression, shall infringe
such registered geographical indication.
(4) Notwithstanding anything
contained in this section, where the goods in respect of which a geographical
indication has been registered are lawfully acquired by a person other than the
authorised user of such geographical indication, further dealings in those
goods by such person including processing or packaging, shall not constitute an
infringement of such geographical indication, except where the condition of
goods is impaired after they have been put in the market.
Section 23. Registration to
be prima facie Evidence of validity
(1) In all legal proceedings relating to a
geographical indication, the certificate of registration granted in this regard
by the Registrar under this Act, being a copy of the entry in the register
under the seal of the Geographical Indications Registry, shall be prima facie
evidence of the validity thereof and be admissible in all courts and before the
Appellate Board without further proof or production of the original.
(2) Nothing in this section
shall be deemed to be affect of the right of action in respect of an
unregistered geographical indication.
Section 37. Meaning of
applying geographical indications
Section 38. Falsifying and
falsely applying geographical indications
Section 39. Penalty for
applying false geographical indications
Section 40. Penalty for
selling goods to which false geographical indication is applied
Section 41. Enhanced penalty
on second or subsequent conviction
Section 42. Penalty for
falsely representing a Geographical indication as registered
Section 43. Penalty for
improperly describing a place of business as connected with the Geographical
Indications Registry
Section 44. Penalty for
falsification of entries in the register
Section 45. No offence in
certain cases
Section 46. Forfeiture of
goods
Section 47. Exemption of
certain persons employed in ordinary course of business
Section 48. Procedure where
invalidity of registration is pleaded by the accused
Section 49. Offences by companies
Section 50. Cognizance of
certain offences and the powers of police officer for search and seizure
Section 51. Costs of defence
of prosecution
Section 52. Limitation of
prosecution
Section 53. Information as to
commission of offence
Section 54. Punishment for
abatement in India of acts
done out of India
Section 66. Suit for
infringement, etc., to be instituted before district court
(1) No suit,-
(a) for the infringement of a
registered geographical indication; or
(b)relating to any right in a
registered geographical indication; or
(c) for passing of arising
out of the use by the defendant of any geographical indication which is
identical with or deceptively similar to the geographical indication relating
to the plaintiff, whether registered or unregistered, shall be instituted in
any court inferior to a district court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of
sub-section (1), a “district court having jurisdiction” shall, notwithstanding
anything contained in the Code of Civil Procedure, 1908, or any other law for
the time being in force, include a district court within the local limits of
whose jurisdiction, at the time of the institution of the suit or other
proceeding, the person instituting the suit or proceeding, or, where there are
more than one such persons any of them, actually and voluntarily resides or
carries on business or personally works for gain.
Explanation.- For the
purposes of sub-section (2), “person” includes the registered proprietor and
the authorised user.
Section 67. Relief in suit
for infringement or for passing off
(1) The relief which a court
may grant in any suit for infringement or for passing off referred to in
section 66 includes injunction (subject to such terms, if any, as the court
thinks fit) and at the option of the plaintiff, either damages or account of
profits, together with or without any order for the delivery- up of the
infringing labels and indications for destruction or erasure.
(2) The order of injunction
under sub-section(1) may include an ex parte injunction or any interlocutory
order for any of the following matters, namely:-
(a) for discovery of
documents;
(b) preserving of infringing
goods, documents or other evidence which are related to the subject matter of
the suit;
(c) restraining the defendant from disposing
of or dealing with his assets in a manner which may adversely affect
plaintiff’s ability to recover damages, costs or other pecuniary remedies which
may be finally awarded to the plaintiff.
(3) Notwithstanding anything
contained in sub-section (1), the court shall not grant relief by way of
damages (other than nominal damages) on account of profits in any case-
(a) where in a suit for infringement the
defendant satisfies the court-
(i) that at the time he
commenced to use the geographical indication complained of in the suit he was
unaware and had no reasonable ground for believing that the geographical
indication of the plaintiff was on the register; and
(ii) that when he became
aware of the existence and nature of the plaintiff’s right in the geographical
indication, he forthwith ceased to use the geographical indication in relation
to good in respect of which it was registered; or
(b) where in a suit for
passing off, the defendant satisfies the court-
(i) that at the time he
commenced to use the geographical indication complained of in the suit he was
unaware and had no reasonable ground for believing that the geographical
indication relating to the plaintiff was in use; and
(ii) that when he became aware of the
existence and nature of the geographical indication relating to the plaintiff
he forthwith ceased to use the geographical indication complained of.
5. Conflict of GI’s with Trade marks (Ss. 25-26)
Section 25. Prohibition of registration of
geographical indication as trade mark
Notwithstanding anything
contained in the Trade Marks Act, 1999, the Registrar of Trade Marks referred
to in Section 3 of that Act, shall, suo motu or at the request of an interested
party, refuse or invalidate the registrations of a trade mark which-
(a) contains or consists of a
geographical indication with respect to the goods or class or classes of goods
not originating in the territory of a country , or a region or locality in that
territory which such geographical indication indicates, if use of such
geographical indications in the trade mark for such goods, is of such a nature
as to confuse or mislead the persons as to the true place of origin of such
goods or class or classes of goods;
(b) Contains or consists of a
geographical indication identifying goods or class or classes of goods notified
under sub-section (2) of Section 22.
Section 26. Protection to certain Trade marks
(1) Where a trade mark
contains or consists of a geographical indication and has been applied for or
registered in good faith under the law relating to trade marks for the time
being in force, or where rights to such trade mark have been acquired through
use in good faith either-
(a) Before the commencement
of this Act; or
(b) Before the date of filing
the application for registration of such geographical indication under this
Act; nothing contained in this Act shall prejudice the registrability or the
validity of the registration of such trade mark under the law relating to the
trade marks for the time being in force, or the right to use such trade mark,
on the ground that such trade mark is identical with or similar to such
geographical indication.
(2) Nothing contained in this
Act shall apply in respect of a geographical indication with respect to goods
or class or classes of goods for which such geographical indication is
identical with the term customary in common language as the common name of such
goods in any part of India on or before the 1st day of January, 1995.
(3) Nothing contained in this
Act shall in any way prejudice the right of any person to use, in the course of
trade, that person’s name or the name of that person’s predecessor in business,
except where such name is used in such a manner as to confuse or mislead the
people.
(4) Notwithstanding anything contained in the
Trade Marks Act, 1999 or in this Act, no action in connection with the use or
registration of a trade mark shall be taken after the expiry of five years from
the date on which such use or registration infringes any geographical
indication registered under this Act has become known to the registered
proprietor or authorised user registered in respect of such geographical
indication under this Act or after the date of registration of the trade mark
under the said Trade Marks Act subject to the condition that the trade mark has
been published under the provisions of the said Trade Marks Act, 1999 or the
rules made there under by that date, if such date is earlier than the date on
which such infringement became known to such proprietor or authorised user and
such geographical indication is not used or registered in bad faith.
Geographical
Indication means an indication which identifies such goods as agricultural
goods, natural goods or manufactured goods as originating, or manufactured in
the territory, where a given quality, reputation or other characteristics of
such goods is essentially attributable to its geographical origin ad in case
where such goods are manufactured goods one of the activities of either the
production or of processing or preparation of the goods concerned takes place
in such territory, region or locality, as the case maybe.
The Indian law
explicitly extends the protection to geographical indication used not only for
agricultural products, but also for manufactured goods, though generally the
use of geographical indication maybe more predominant in respect of
agricultural products where such products typically have qualities attributable
to the specific geographical area, influenced by factors such as climate, soil,
etc.
The function of
a geographical indication is that it point to a specific place or region of
production that determines the characteristic qualities of the product that
originates from there. It is important that the product derives its qualities
and reputation from that place. Since those qualities depend on the
geographical place of production.
PERSON ELIGIBLE
FOR REGISTRATION
Any association
of person, producers, organization or authority established by or under the law
can apply.
The applicant
must represent the interests of the producers.
The application
should be in writing in the prescribed Form.
BENEFITS OF
REGISTRATION
It confers
legal protection to geographical indications in India
It prevents
unauthorized use of a registered geographical Indication by others.
It boosted
exports of Indian geographical indications by providing legal protection.
It promotes
economic prosperity of producers.
It enables
seeking legal protection in other WTO member countries
PROHIBITIONS
AGAINST USE OF GI
Indications
which are likely to deceive or cause confusion.
Indications
which would be contrary to any law.
Indications
which contain scandalous or obscene matter.
Indications
which would hurt the religious sentiments of people.
Indications
which are generic in character
RIGHTS
CONFERRED BY REGISTRATION
The proprietor
of the geographical indication and the authorized user are conferred exclusive
right to the use of a geographical indication in relation to goods to which the
registration is obtained.
The proprietor
or the authorized user of the geographical indications also has a right to file
a suit for infringement of his right. The relief which a court may grant in any
suit of infringement or passing off, includes injunction and at the option of
the plaintiff, either damages or account of profits, together with or without
any order for the delivery – up of the infringing labels and indications for
destruction or erasure.
These rights
conferred are not absolute, but there are certain conditions and limitations
which can be imposed on the exclusive right. Such as
Limitation
condition as to the area within which the registration is to operate.
Condition that
the registered geographical indication shall not be used in respect of certain
specific goods.
REGULATORY
BODIES
There are two
regulatory authorities.
The Registrar
of Geographical Indication
The Appellate
Board
The Controller
General of Patents, Designs & Trademarks will be the Registrar of Geographical
Indication.
The Central
Government appoints certain officers for the purpose of discharging certain
functions under the superintendence and direction of the Registrar. The
Registrar's power of superintendence and direction could also be interpreted to
imply the power to withdraw a matter from one hearing officer and deal with
such matter either himself or transfer the same to another hearing officer. The
registrar may no be able to delegate the power, to withdraw or transfer case,
vested in him to any other functionary.
The Registry is
established for the purpose of
Making an
application for registration of geographical indication
For
registration as an authorized user
For giving
notice of opposition
For filing
application for rectification or
Any other
proceeding
GEOGRAPHICAL
INDICATION AND TRADEMARK
The difference
between Geographical Indication and Trade Mark are that the former indicates
the source of the product, meaning the geographical jurisdiction from which the
product has originated, which has a reputation for certain characteristics
attributable to that place of production or manufacture and the later is a sign
which is used in the course of trade and it distinguishes goods or services of
one enterprise from those of other enterprises.
A trademark is
proprietary in nature, with exclusive right on the owner to use the mark, but
geographical indication represents a common heritage of the community of
producers in the geographical region or locality, whose product all share the
same qualities and characteristics, so that geographical indication may be used
by all the producers engaged in the production in that region or locality
GEOGRAPHICAL
INDICATION AND COLLECTIVEMARK
A geographical
indication is not a collective mark but it identifies particular goods as
originating in a certain country, region or locality, where a given quality,
reputation or other characteristics of the goods is essentially, where a given
quality, reputation or other characteristics of the goods is essentially attributable
to its geographical origin comprising natural environment and human factors.
Whereas, a
collective mark is a mark which belongs to a group or association of persons
and the use is reserved only for members of the group not being a partnership
within the meaning of Partnership Act. It is intended merely to distinguish the
goods or services of such association of persons from those of others.
The Law
prohibits the registration of the trademark which contains or consists of
geographical indication with respect to goods not originating in the territory
indicated, if use of the indication in the trade mark for such goods in that
country is of such a nature as to mislead the public as to the true place of
origin.
GEOGRAPHICAL
INDICATION AND APPELLATION OF ORIGIN
A geographical
indication (GI) is a sign used on goods that originate in a specific
geographical area and possess qualities or a reputation that are due to
characteristics peculiar to that particular place. The TRIPS agreement defines
it as an "indication which identifies a good as originating in the
territory of a country, or a region, or a locality in that territory, where a
given quality, reputation or other characteristics of the good is essentially
attributable to its geographical origin."
An appellation
of origin is a special kind of GI used on products that have a specific quality
that is exclusively or essentially due to the geographical environment from
which the products emerge. This is defined in the TRIPS agreement as "the
geographical name of a country, region or locality, which serves to designate a
product originating therein, the quality and characteristics of which are due
exclusively to the geographical environment, including natural and human
factors."
The only
difference between a GI and an appellation of origin is that GI includes
reputation, which is not necessary in the case of appellation of origin.
Appellations of origin may be used to protect products of a special region –
e.g. Kashmiri shawls, Champagne , etc. Under
the TRIPS agreement, the definition of GI includes appellation of origin.
When any of the
rights of proprietor or authorized user is violated there would be an
infringement of the rights. A registered geographical indication is infringed
by a person who, not being the registered proprietor or authorized user, uses
such indication on the goods or suggests that such goods originate in some
other geographical area other than the true origin of the goods which mislead
the public.
It is also
infringed by any use that constitutes an act of "unfair competition".
A Geographical
Indication is also infringed by a person who not being the registered
proprietor or an authorized user uses another Geographical indication to the
goods and falsely represents to the public that the goods originate in the
region, territory or a locality in respect of which such registered
geographical indication relates.
If the false
geographical indication is established, it carries penalty with imprisonment
for a term which shall not be less than six months but which may extend to
three years and with fine which shall not be less than fifty thousand rupees
but may extend to two lakh rupees.
4. Industrial Designs Law
[Legislation: The Designs
Act, 2000]
4.1 Need for protection of
industrial designs
4.2 Subject matter of
Protection - Design, S.2(d), Original, S.2(g), new or original, appeal to eye,
copyright S.2(c)
Section 2. Definition
In this Act, unless there is anything
repugnant in the subject or context.
(c) “copyright” means the exclusive right to
apply a design to any article in any class in which the design is registered;
(d) “design” means only the features of shape,
configuration, pattern, ornament or composition of lines or colours applied to
any article whether in two dimensional or three dimensional or in both forms,
by any industrial process or means, whether manual, mechanical or chemical,
separate or combined, which in the finished article appeal to and are judged
solely by the eye; but does not include any mode or principle of construction
or anything which is in substance a mere mechanical device, and does not
include any trade mark as defined in clause (v) of sub-section (1) of section 2
of the Trade and Merchandise Marks Act, 1958 or property mark as defined in
section 479 of the Indian Penal Code or any artistic work as defined in clause
(c) of section 2 of the Copyright Act, 1957
(g) “original”, in relation
to a design, means originating from the author of such design and includes the
cases which though old in themselves yet are new in their application;
(j) “proprietor of a new or
original design”,-
(i) where the author of the
design, for good consideration, executes the work for some other person, means
the person for whom the design is so executed;
(ii) where any person
acquires the design or the right to apply the design to any article, either
exclusively of any other person or otherwise, means, in the respect and to the
extent in and to which the design or right has been so acquired, the person by
whom the design or right is so acquired; and
(iii) in any other case,
means the author of the design; and where the property in or the right to
apply, the design has devolved from the original proprietor upon any other
person, includes that other person.
4.3 Copyright in Design (duration)– S.11
Section 11. Copyright on
registration
(1) When a design is
registered, the registered proprietor of the design shall, subject to the
provisions of this Act, have copyright in the design during ten years from the
date of registration.
(2) If, before the expiration of the said ten
years, application for the extension of the period of copyright is made to the
Controller in the prescribed manner, the Controller shall, on payment of the
prescribed fee, extend the period of copy-right for a second period of five
years from the expiration of the original period of ten years.
4.4 Registration of design
for articles – Ss.3-9 (No provision for opposition)
Section 3. Controller and
other officers
(1) The Controller General of
Patents, Designs and Trade Marks appointed under sub-section (1) of section 4
of the Trade and Merchandise Marks Act, 1958 shall be the Controller of Designs
for the purposes of this Act.
(2) For the purposes of this
Act, the Central Government may appoint as many examiners and other officers
and with such designations, as it thinks fit.
(3) Subject to the provisions of this Act, the
officers appointed under sub-section (2) shall discharge under the
superintendence and directions of the Controller such functions of the
Controller under this Act as he may, from time to time by general or special
order in writing, authorise them to discharge.
(4) Without prejudice to the
generality of the provisions of sub-section (3), the Controller may by order in
writing and for reasons to be recorded therein, withdraw any matter pending
before an officer appointed under sub-section (2) and deal with such mater
himself either de novo or from the stage it was so withdrawn or transfer the
same to another officer appointed under sub-section (2) who may, subject to
special directions in the order of transfer, proceed with the matter either de
novo or from the stage it was so transferred.
Section 4. Prohibition of
registration of certain designs
A design which
(a) is not new or original; or
b) has been disclosed to the
public anywhere in India
(c) is not significantly
distinguishable from known designs or combination of known designs; or
(d) comprises or contains
scandalous or obscene matter shall not be registered.
Section 5. Application
registration of designs
(1) The Controller may, on
the application of any person claiming to be the proprietor of any new or
original design not previously published in any country and which is not
contrary to public order or morality, register the design under this Act.
Provided that the Controller
shall before such registration refer the application for examination, by an
examiner appointed under sub-section (2) of section 3, as to whether such
design is capable of being registered under this Act and the rules made
thereunder and consider the report of the examiner on such reference.
(2) Every application under
Sub-Section (1) shall be in the prescribed form and shall be filed in the
Patent Office in the prescribed manner and shall be accompanied by the
prescribed fee.
(3) A design may be
registered in not more than one class, and, in case of doubt as to the class in
which a design ought to be registered, the Controller may decide the question.
(4) The Controller may, if he thinks fit,
refuse to register any design presented to him for registration; but any
person, person aggrieved by any such refusal may appeal to the High Court.
(5) An application which, owing to any default
or neglect on the part of the applicant, has not been completed so as to enable
registration to be effected within the prescribed time shall be deemed to be
abandoned.
(6) A design when registered
shall be registered as of the date of the application for registration.
Section 6. Registration on to be in respect of
particular article
(1) A design may be
registered in respect of any or all of the articles comprised in a prescribed
class of articles.
(2) Any question arising as
to the class within which any article falls shall be determined by the
Controller whose decision in the matter shall be final.
(3) Where a design has been
registered in respect of any article comprised in a class of article, the
application of the proprietor of the design to register it in respect of some
one or more other articles comprised in that class of articles shall not be
refused, nor shall the registration thereof invalidated.
(a) on the ground of the
design not being a new or original design, by reason only that it was so
previously registered; or
(b) on the ground of the
design having been previously published in India or in any other country, by
reason only that it has been applied to article in respect of which it was
previously registered:
Provided that such subsequent registration
shall not extend the period of copyright in the design beyond that arising from
previous registration.
(4) Where any person makes an
application for the registration of a design in respect of any article and
either-
(a) that design has been
previously registered by another person in respect of some other article; or
(b) the design to which the
application relates consists of a design previously registered by another
person in respect of the same or some other article with modifications or
variations not sufficient to alter the character or substantially to affect the
identity thereof, then, if at any time while the application is pending the
applicant becomes the registered proprietor of the design previously registered,
the foregoing provisions of the section shall apply as if at the time of making
the application the applicant had been the registered proprietor of that
design.
Section 7. Publication of
particulars of registered Design
The Controller shall, as soon
as may be after the registration of a design, cause publication of the
prescribed particulars of the design to be published in such manner as may be
prescribed and thereafter the design shall be open to public inspection.
Section 8. Power of
Controller to make orders regarding substitution of application etc.
(1) If the Controller is
satisfied on a claim made in the prescribed manner at any time before a design
has been registered that by virtue of any assignment or agreement in writing
made by the applicant or one of the applicants for registration of the design
or by operation of law, the claimant would, if the design were then registered,
be entitled thereto or to the interest of the applicant therein,or to an
undivided share of the design or of that interest, the Controller may, subject
to the provisions of this section, direct that the application shall proceed in
the name of the claimant or in the names of the claimants and the applicant or
the other joint applicant or applicants, accordingly as the case may require.
(2) No such direction as
aforesaid shall be given by virtue of any assignment or agreement made by one
two or more joint applicants for registration of a design except with the
consent of the other joint applicant or applicants.
(3) No such direction as
aforesaid shall be given by virtue of any assignment or agreement for the
assignment of the benefit of a design unless-
(a) the design is identified
therein by reference to the number of the application for the registration; or
(b) there is produced to the
Controller an acknowledgement by the person by whom the assignment or agreement
was made that the assignment or agreement relates to the design in respect of
which that application is made; or
(c) the rights of the
claimant in respect of the design have been finally established by the decision
of a court; or
(d) the Controller gives directions for
enabling the application to proceed or for regulating the manner in which it
should be proceeded with under sub-section (5).
(4) Where one of two or more joint applicants
for registration of a design dies at any time before the design has been
registered, the Controller may, upon a request in that behalf made by the
survivor or survivors, and with the consent of the legal representative of the
deceased, direct that the application shall proceed in the name of the survivor
or survivors alone.
(5) If any dispute arises between joint
applicants for registration of a design whether or in what manner the
application should be proceeded with, the Controller may, upon application made
to him in the prescribed manner by any of the parties, and after giving to all
parties concerned an opportunity to be heard, give such directions as he thinks
fit for enabling the application to proceed in the name of one or more of the
parties alone or for regulating the manner in which it should be proceeded
with, or for both those purposes, as the case may require.
Section 9. Certificate of registration
(1) The Controller shall
grant a certificate of registration to the proprietor of the design when
registered.
(2) The Controller may, in case of loss of the
original certificate, or in any other case in which he deems it expedient,
furnish one or more copies of the certificate.
5.5 Cancellation of Design- S.19
Section 19. Cancellation of
registration
(1) Any person interested may
present a petition for the cancellation of the registration of a design at any
time after the registration of the design, to the Controller on any of the
following grounds, namely:-
(a) that the design has been
previously registered in India
(b) that it has been
published in India
(c) that the design is not a
new or original design; or
(d) that the design is not registrable under
this Act; or
(e) it is not a design as
defined under clause (d) of section 2.
(2) An appeal shall lie from
any order of the Controller under this section to the High Court, and the
Controller may at any time refer any such petition to the High Court, and the
High Court shall decide any petition so referred.
1.6 Piracy or Infringement of copyright in Designs – S.22
Section 22. Piracy of registered design
(I) During the existence of
copyright in any design it shall not be lawful for any person-
(a) for the purpose of sale to apply or cause
to be applied to any article in any class of articles in which the design is
registered, the design or any fraudulent or obvious imitation thereof, except
with the license or written consent of the registered proprietor, or to do
anything with a view to enable the design to be so applied; or
(b) to import for the
purposes of sale, without the consent of the registered proprietor, any article
belonging to the class in which the design has been registered, and having
applied to it the design or any fraudulent or obvious
imitation thereof, or
(c) knowing that the design
or any fraudulent or obvious imitation thereof has been applied to any article
in any class of articles in which the design is registered without the consent
of the registered proprietor, to publish or expose or cause to be published or
exposed for sale that article.
2. (1) If any person acts in
contravention of this section, he shall be liable for every contravention-
(a) to pay to the registered
proprietor of the design a sum not exceeding twenty-five thousand rupees
recoverable as a contract debt, or
(b) if the proprietor elects
to bring a suit for the recovery of damages for any such contravention, and for
an injunction against the repetition thereof, to pay such damages as may be
awarded and to be restrained by injunction accordingly:
Provided that the total sum
recoverable in respect of any one design under clause (a) shall not exceed
fifty thousand rupees:
Provided further that no suit
or any other proceeding for relief under this subsection shall be instituted in
any court below the court of District Judge.
(3) In any suit or any other
proceeding for relief under subsection (2), ever ground on which the
registration of a design may be cancelled under section 19 shall be available
as a ground of defence.
(4) Notwithstanding anything contained in the
second proviso to sub-Section (2), where any ground or which the registration
of a design may be cancelled under section 19 has been availed of as a ground
of defence and sub-section (3) in any suit or other proceeding for relief under
sub-section (2), the suit or such other proceedings shall be transferred by the
Court in which the suit or such other proceeding is pending, to the High Court
for decision.
(5) When the court makes a decree in a suit
under sub-section (2), it shall send a copy of the decree to the Controller,
who shall cause an entry thereof to be made in the register of designs.
1.7 Overlap of Design,
Copyright and Trade Marks
25. Bharat Glass Tube Limited v. Gopal Glass Works Limited, 2008 (37)
PTC 1 (SC)
In this case, the respondent
was engaged in figured and wired glass manufacturing business since 1981. Based
on the orders placed by the respondent, the German Company supplied the
rollers. The roller was used for the purpose of making design in various other
articles like leather, rexin and plastic. However it was never used for glass.
He purchased the rollers from the German company and also got registration on
5.11.2002.
In the meanwhile, the
appellant and its associate IAG Company Ltd started imitating the said
registered design. As a result, the respondent was constrained to file a suit
against the appellant in the District Court and got a restraint order against
this appellant.
The appellant filed an
application before the Controller of Patents & Designs for the cancellation
of the registration of respondent’s Design mainly on the ground that the design
has already been previously published in India
(1) a catalogue of the German
Company and letter dated 10.9.2003 of the German company addressed to M/s. IAG
Co. Ltd. the holding company of the appellant stating that the said German
Company had developed design in the year 1992, and
(2) a document downloaded
from the official website of the Patent Office of the United Kingdom on 22.9.2004 which indicated that
the same design had been registered in United Kingdom
Against these allegations,
the respondent filed an affidavit stating that the German Company was not
engaged in manufacture of the goods other than engraving rollers. Further it
was claimed that the company never manufactured engraved glass sheets by using
engraved rollers. The respondent also relied on the communication dated
4.3.2004 of the German company confirming that the embossing rollers covered by
Design No. 2950-910 had been sold to the respondent on condition that all user
rights available in India under Indian laws would vest exclusively with the
respondent and that the respondent would be entitled to exclusive user rights
for at least five years. The German company was aware of the registration of
the Design No. 190331 and it had no objection to the design being marketed by
the respondent herein. The respondent questioned the admissibility of the
materials alleged to have been downloaded from the website of the UK Patent Office.
It was also contended that in absence of corroborative evidence, such evidence
cannot be accepted and it cannot be treated as admissible evidence. After
hearing both side arguments, the Assistant Controller of the Patents and
Designs set aside the registration of the respondent. Aggrieved against this
order, the respondent filed an appeal before the Calcutta High Court. The High
Court reversed the finding of the Assistant Controller. Aggrieved against this
impugned order of the Calcutta High Court, the present appeal was filed by the
appellant-complaint before the Supreme Court.
Decision of the Supreme Court:
After considering the
materials, Supreme Court upheld the Calcutta High Court’s decision for the
following reasons;
1. There is no evidence whatsoever
produced by the complainant either before the Assistant Controller or before
any other forum to show that the design which has been reproduced on the glass
sheet was manufactured anywhere in the market in India
or in United Kingdom
2. This proprietorship of
this design was acquired by this respondent from the German company. Therefore,
he has the right to register the same in India
3. No evidence was produced
by the complainant before the Assistant Controller that anywhere in any part of
the world or in India this
design was reproduced on glass or it was registered anywhere in India
4. Finally Supreme Court also
declined to consider the documents which have been downloaded from the UK
Patent Office website.
(Source: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1767917
Author Sri. M.Sakthivel)
26. Reckitt Benckiser(India )
Ltd v. Wyeth Limited, 2010 (44) PTC 589 (Del
The division bench referred
the matter to be examined by a larger bench in view of disagreement with the
stand taken by it in the matter of Dabur India Ltd. v. Amit Jain [end note 12].
In Dabur case, the court concurred with the Calcutta High Court decision in
Gopal Glass Works Ltd. v. Assistant Controller of Patents & Designs [2006
(33) PTC 434 (Cal)] and concluded that prior registration of similar article in
the U.S. cannot be considered as “published in any other country”. On the
contrary, the division bench of the Delhi High Court in Reckitt Benckiser
(supra) preferred to differ. In Reckitt the court distinguished previously
registered designs outside India as, for example in the UK, designs that are
kept secret post registration and those that are not kept secret post
registration, and considered those that are not kept secret post registration
as designs “published in any other country” within the meaning of Section 19
(1) (b) of the Act. To come to this conclusion, the court relied on a combined
reading of other sub-sections of Section 19 and Section 4. In particular, it
relied on the provisions of Section 44 (1) and (2) that deal with claiming
priority from an application filed in a convention country if the design
application in India is filed within six months from the priority date, and
Section 4 (b) which is broader in scope, available in public domain as compared
to Section 19 (1) (b), mere publication.
The court also answered the
question whether there is any legislative intention for not including
previously registered designs outside India as a ground for cancellation of
registration in Section 19 (1) (a) of the Act. It held that the legislature
could never have intended that a design in India, which is a complete copy of
the design registered abroad, cannot be cancelled although the design is
registered abroad and available in public domain post its registration.
(Source: http://www.lslaw.in/News-and-Publications/Publications/articles/IPR/Cancellation-of-registered-design-Is-prior-registration-abroad-a-valid-ground
, Author Jayaram Sekaran )
27. Samsonite Corporation v. Vijay Sales, 1998 (18) PTC 372 (Del
Issues were firstly whether
the Designs Act was applicable or not and secondly whether there was
infringement. The first issue was decided in the affirmative. Regarding the
second issue, the court held that in case of the first model (2450 Ciera), the
differences in the Citation were obvious and hence there was no infringement.
However, in the case of the second model, TRX, the court ruled that the
differences were minor and would only be noticeable to an expert but not to the
average customer and hence there was infringement. Thus here too, the ‘ordinary
observer’ test has been applied although the terminology of the Court is
‘average customer.’
