TRADEMARKS ACT, 1999

Facts: The Defendants were making huge profits by selling the plaintiff's miniature dolls without any permission or license from his company DM Entertainment which owns the Trademark Daler Mehndi. The plaintiff's contention was that they are cashing on the artist's popularity and passing off the dolls as actually being associated with him.

Held: In a passing off action, one has to see as to whether the Defendant is selling goods/service so marked to be designed or calculated to lead purchasers to believe that they are plaintiffs goods. Even if a person uses another's well-known trademark or trade mark similar thereto for goods or services that are not similar to those provided by such other person, although it does not cause confusion among consumers as to the source of goods or services, it may cause damage to the well-known trade mark by reducing or diluting the trademarks power to indicate the source. Further, where a person uses another person's well-known trade mark or trademark similar thereto for the purpose of diluting the trade mark, such use does not cause confusion among consumers but takes advantage of the goodwill of the well-known trade mark, it constitutes an act of unfair competition.

Facts: Plaintiff produces and deals with alcoholic beverages. The distillery of the Plaintiff is in village Aswa. On 11 April 2014, Plaintiff applied for registration of the trademark THE ASWA under the Trade Marks Act, 1999. The application was granted in the year 2016, and Plaintiff got registration of the trademark THE ASWA in Class-33 in respect of whiskey, vodka, brandy, rum, gin, wine, alcoholic coolers, alcoholic mixes, country liquor. Plaintiff sought permission to use the label with trademark THE ASWA as per the State Excise Rules and was granted the same on 18 August 2020. Plaintiff came to know that the Defendant was manufacturing and exporting a single malt whiskey under the trademark ASAVA. The Excise Department approved Defendant's label for the product 3 September 2020. Plaintiff filed Commercial I.P. Suit. The Plaintiff contended that the Defendants trademark ASAVA is identical/deceptively similar to the Plaintiff's trademark THE ASWA, the goods in respect of which the Defendants are using the trademark are identical to the goods in which the Plaintiff has registered the trademark, and it will likely to cause confusion on the part of the public or is likely to have an association with the registered trademark. Plaintiff alleging infringement sought prayer for restraining the Defendants from using the mark ASAVA. Plaintiff also sought damages.

Held: There is no factual enquiry as to the likelihood of confusion in respect of the rival marks in question. The legal and factual implications if the rival marks are deceptively similar and that the Plaintiff product is not in the market. While we remand the matter, we set aside the finding of the learned Single Judge that RAMPUR ASAVA and not ASAVA alone is the trademark of the Defendant. We also set aside the finding that there is no visual, phonetic or structural similarity between THE ASWA and ASAVA and the similarity/identity will have to be decided as per the settled principles enumerated above.

Facts: The plaintiff claims to be the registered proprietor of the marks "MADHUR GULAB", "MADHUR" and the word "MADHUR" written in devnagiri script. The defendant has challenged the first plaintiffs proprietorship of the marks as well as its right to maintain this action for infringement.

Held: a. Section 30 provides for the limits on effect of registered trade mark, but these provisions would come to the Defendant's aid only if the Defendant established that the use of the mark in relation to goods was to indicate their quality or it established that the use of the mark was a bona fide description of the quality of the goods. It was held that the use of the impugned mark was as a trade mark and not as descriptive of the Defendant's products sold under the mark. These provisions, therefore, did not come to the Defendant's aid.
b. As per the chronology of the application and registration status the Defendant had knowledge of the Plaintiff's claim, at least from 7th February, 2007. Therefore, the delay in the facts of this case would not disentitle the Plaintiffs to an injunction against infringement. The Defendant's continued use of the mark was at its own peril.
c. When he opposes the registration of the mark, he claims the exclusive right to use the mark and thereby opposes the right of the others to use the mark or any mark deceptively similar thereto or to have it registered. A view to the contrary, was not even stable. Hence, Defendant was guilty of infringing the registered trade mark of Plaintiff.

Facts: Appellant - defendant in the suit, assails the order granting an interim injunction against the appellant restraining the appellant from using the mark 'D'DAAZS' or any other mark deceptively similar to that of the respondent - plaintiff's trade mark 'HAAGEN-DAZS' in relation to ice cream. The respondent - plaintiff company has been incorporated under the laws of Delaware, USA and claims to be marketing, over a hundred consumer brands (processed food and ice cream) , in over a hundred countries across the globe. It claims to be manufacturing desserts such as ice-creams and frozen yogurts under the trademark 'HAAGEN DAZS' which according to it is an arbitrary word having no dictionary meaning. 'HAAGEN DAZS' has been made available in India only since the year 2007, however, the respondent - plaintiff obtained registration for the mark 'HAAGEN DAZS' in India in respect of ice cream, ices, sherbet, sorbet and frozen confections in class 30 with effect from January 21, 1993 and for food products in classes 29, 30 and 42 on January 01, 2008. The appellant - defendant on the other hand, has been manufacturing ice-creams and frozen desserts under the name 'D'DAAZ' since the year 2009. It was stated that the word 'D'DAAZ' is derived from the name of Late Dwarka Das, who was the father of one of the founder directors of the company. It is stated that the appellant - defendant has been supplying ice-creams across South India.

Held: Consumers of any product do not deliberately memorize marks. They only retain a general, indefinite, vague, or even hazy impression of a mark and so may be confused upon encountering a similar mark. Consumers may equate a new mark or experience with one that they have long experienced without making an effort to ascertain whether or not they are the same marks. The consideration therefore is whether one mark may trigger a confused recollection of another mark. Thus, if the marks give the same general impression confusion is likely to occur. The 'ordinary observer' test is applied to determine if two works are substantially similar. The Court will look to the response of an 'average lay observer' to ascertain whether a copyright holder's original expression is identifiable in the allegedly infringing work 274 F.2d 487 (2nd Cir. 1960) Peter Pan Fabrics Inc. v. Martin Weiner Corp. Since it is employed to determine qualitative and quantitative similarity in visual copyright work, the said test can also be usefully applied in the domain of trademark law as well. The Courts have reiterated that the test for substantial similarity involves viewing the product in question through the eyes of the layman. A layman is not expected to have the same 'hair-splitting' skills as an expert. A punctilious analysis is not necessary. A layman is presumed to have the cognition and experiences of a reasonable man. Therefore, if a reasonable observer is likely to get confused between the two products then a copyright violation is said to take place. Transposing the said principles in the context of trademark infringement, one may venture to assess similarity and likelihood of confusion between rival marks on the touchstone of the impression gathered by a reasonable observer, who is a layman as opposed to a connoisseur.

Facts: The two marks 'Dropovit' and 'Protovit' were found to be partially similar.

Held: The two marks need to be compared as a whole and not in parts. Last part is common does not clarify if the entire mark is similar or not. The kind of products sold under the two names is also of relevance. The true test is whether the totality of the proposed trademark was such that it was likely to cause deception or confusion or mistakes in the minds of persons accustomed to the earlier trademark.

Facts: The Respondent before the Court instituted a suit for injunction restraining the Appellant from in any manner using the mark "Encore" or any other deceptively similar mark in relation to electrical or electronic goods including dish antennae. The action was based on a case of infringement and for passing off. The Plaintiff is a registered proprietor of various trademarks including the word marks Anchor, Ankur, Anchor, Ankar, Anker, Ansor and Ancor. The corporate name, according to the Plaintiff, has acquired a reputation in the market and the Defendant has adopted the corporate name and style of "Encore Electronics Limited" which is deceptively similar, misleading and liable to cause confusion.

Held: In the present case, the reliance placed in the course of the submissions on behalf of the Defendant of its mark having an origin in a French word is, as already noted in the earlier part of the judgment neither bonafide nor an honest defence. The Court must have a realistic consciousness of the fact that both the marks are used in the Indian market and it is a consumer in India whose observation and assessment must guide the decision making. The manner in which the rival marks would be ordinarily pronounced and the manner in which the marks would be written in Indian languages constitutes an important indicator of whether a case of deceptive similarity has been established. . The essential requirements in an action for passing off have been duly established. The balance of convenience lies in favour of the Plaintiff. The large turn over of the Plaintiff is borne out by the figures which have been disclosed in the plaint. The Plaintiff has expended extensive sums of money in advertising and publicity. Irreparable harm and prejudice is liable to be caused to the business of the Plaintiff, unless an interlocutory order of injunction were to be passed as prayed. The goodwill and reputation associated with the Plaintiff's mark, cultivated as it has been over a period of three decades when the suit was instituted would be liable to suffer serious damage unless the Defendant was to be injuncted.

Facts: The application was made by the respondent as the sole proprietor of Rup Bilas Company for the trade name of a biochemical medicinal preparation, commonly known as 'Lakshmandhara' in Kanpur. The said medicinal preparation had been in use by the name of 'Lakshmandhara' since 1923 and was sold throughout the length and breadth of India as also in some foreign markets; the mark or name 'Lakshmandhara' was said to be distinctive to the article. In the opposition application the appellant stated that the word 'Amritdhara' was already registered as a trade name for the medicinal preparation of the appellant, and that medicinal preparation was introduced in the market so far back as in the year 1901. It was averred that the composite word 'Lakshmandhara' was used to denote the same medicine as 'Amritdhara'; and the single word 'dhara', was first used in conjunction with 'Amritdhara' to denote the medicine of the appellant and the medicine 'Lakshmandhara' being of the same nature and to quality could be easily passed off as 'Amritdhara' to the ultimate purchaser. The appellant contended that as 'Amritdhara' was already registered and 'Lakshmandhara' being a similar name was likely to receive the public, registration should be refused.

Held: Whether a mark is similar in any way is a matter of first impression and has to be decided by taking an over all view of all the circumstances. The standard of comparison to be adopted in judging the resemblance is from the point of view of a man of average intelligence and imperfect recollection. It was further held that the two names as a whole should be considered for comparison and not merely the component words thereof separately.

Facts: Rolex is a well known trademark for watches. Alex Jwellery used the name Rolex for their new line of accessories.

Held: Rolex is a well known trademark. Although not registered, it will get protection under well known trademarks as it has a reputation and goodwill in the market. It is also a trusted brand.

Facts: This appeal has been filed by Abercrombie & Fitch Company (A&F), owner of well-known stores at Madison Avenue and 45th Street in New York City and seven places in other states, against Hunting World, Incorporated (HW), operator of a competing store on East 53rd Street, for infringement of some of A&F's registered trademarks using the word `Safari'. A&F has spent large sums of money in advertising and promoting products identified with its mark `Safari' and in policing its right in the mark, including the successful conduct of trademark infringement suits. HW, the complaint continued, has engaged in the retail marketing of sporting apparel including hats and shoes, some identified by use of `Safari' alone or by expressions such as `Minisafari' and `Safariland'. Continuation of HW's acts would confuse and deceive the public and impair "the distinct and unique quality of the plaintiff's trademark." A&F sought an injunction against infringement and an accounting for damages and profits.

Held: We conclude that cancellation should have been directed only with respect to the New York registration. With respect to the remaining registration A&F will have the benefits accorded by § 7(b) that registration shall be "prima facie evidence of the validity of the registration and of registrant's exclusive right to use the mark in commerce," 15 U.S.C. § 1057(b). This means not only that the burden of going forward is upon the contestant of the registration but that there is a strong presumption of validity so that the party claiming invalidity has the burden of proof and must put something more into the scales than the registrant.

Facts: The plaintiff is a public limited company and is carrying on business of manufacturing, marketing and selling hosiery. The word "DAWN" is a main and essential feature of the plaintiff's trade mark which is registered under Trade Mark Act. The defendant No. 1 is also a company engaged in the business of manufacturing and marketing hosiery products. The registered trade mark for marketing its hosiery products is "RUPA". The plaintiff's trade mark has been registered and in use by it for over 40 years.

Held: That the use of the word ‘DON’ by the Rupa Company was prima facie an Infringement of the registered trademark ‘DAWN’ owned by the Dawn Mills ‘Ltd under the concept of passing off. The Court held that this was a fit case for grant of an injunction. "I am not inclined to make any modification in the order passed by the trial Court at this stage without expressing any opinion on the question whether the user of the word 'RUPA-DON' as suggested by the defendants at this stage in future would amount to infringement or not, except to that in the circumstances of this pending litigation, if such permission is granted, the apprehension of the plaintiff that it is likely to cause confusion and give wrong signals is justified."

Facts: The plaintiff was 'The scotch whisky association' a company incorporated in the U.K. for protecting and promoting interest of scotch whisky trade and the co-plaintiff exported on a large scale, scotch whisky to India. The plaintiffs have instituted this passing off action against the defendants for a declaration that by using the device of a Scottish Drummer wearing a kilt or the tartan band or the word 'Scotch' coupled with the description "Blended With Scotch" and by using the impugned label on their Indian whisky marketed under the mark "Drum Beater", the defendant is passing off its whisky as "Scotch Whisky", misleading the other traders and customers and damaging the reputation and goodwill of Scotch Whisky' and its genuine distillers, blenders etc. by suggesting Scottish origin, so as to pass off or enable others to pass off its whisky as "Scotch Whisky." The defendant resorted to unfair device of using the words 'blended with scotch' on their Indian whisky and got indulged in colourable imitation and unfair trading to reap harvest by exploiting the plaintiff's goodwill. They practiced it intentionally and deliberately.

Held: a. That the plaintiff had sufficient interest and locus standi to prevent the passing off of Indian whisky manufactured by the defendants as scotch whisky and to prevent the damage to the reputation and goodwill of their trade.
b. That the plaintiffs were entitled to temporary injunction against the defendants, who partly told the truth and then mixed it up with the colourable device, with which product has no natural association.
c. That the delay could not disentitle them to interim injunction by way of injunction.

Facts: The shape of a bottle of Vodka gives rise to the controversy in these proceedings. The Plaintiff, in a quia timet action, asserts that the shape of its bottles of Vodka is distinctive and forms an intrinsic part of its goodwill and reputation. The grievance of the Plaintiff is that the Defendant has invaded its intellectual property rights by adopting a deceptive variation of the shape of the bottles of the Plaintiff. The case presents an interesting question, argued with felicity on both sides.

Held: The point is that an unwary consumer of low priced, fast moving consumer goods is more likely to be deceived than a purchaser of a premium commodity. The inference sought to be drawn is that passing off is more likely in the former and improbable in the case of the latter. The remedy in passing off would be rendered illusory if such an argument were to be accepted. The law has not restricted the remedy only in relation to goods of a particular nature or quality but across the spectrum of trade and business. As contemporary experience shows goods and services across the spectrum are subject to imitation and piracy. The protection of the remedy in passing off is as much available to a manufacturer who invests capital, time and ingenuity in producing premium goods or services or those styled as fast moving consumer goods. The Court will not readily assume that because consumers of premium goods and services have higher disposable incomes or, as the Defendant states are educated, that the likelihood of deception is minimal. The class of purchasers is undoubtedly a relevant consideration, but the Court must have due regard to all the relevant circumstances including that. The Plaintiff has, in these circumstances, made out a strong prima facie case for the grant of injunction. The balance of convenience must necessarily weigh in favour of the Plaintiff which has an established reputation. Irreparable injury would be caused to the established reputation and goodwill of the Plaintiff if the Defendant is allowed to proceed ahead.

Facts: The appellants are engaged in the business of manufacturing and marketing of plywood, decorative and industrial laminates, black boards, shuttering plywood, boards and plywood for marine use and teak ply all being goods included in class 19. The appellants had adopted the trade mark "Duro" and had applied for registration of a label mark consisting of the word "Duro". The second respondent herein had filed their notice of opposition objecting to the said application for registration. The second respondent in their notice of opposition had averred that they are engaged in the business of manufacturing and selling PVC doors and windows, etc. and are the registered proprietors of the trade mark "Duroplast" being used since 1987. They also stated that by extensive use and wide publicity the mark "Duroplast" is exclusively identified and associated with them. They further stated that the registration of the impugned mark which is deceptively similar to their mark was likely to cause confusion and deception.

Held: The use of the mark for a period of one year and more prior to the filing of the application for registration of the mark could not have acquired any distinctiveness. On perusal of sales figures and the bills and vouchers, it is seen that the appellant has used since 1964 various marks with Duro as a prefix and "Duro" word per se has been used since 1.10.87 as stated in the application. To qualify for registration under Section 9 of the Act, the mark should have acquired distinctiveness by long user. The mark should be distinctive of the goods of the proprietor or should be capable of distinguishing the goods of the proprietor from the other proprietors. We are of the opinion that the requisites for qualifying for registering under Section 9 of the Act is lacking as the user of the mark is only for a period of one year and more. We, therefore, are of the view that the finding of the Assistant Registrar to this issue sustains.