What is a trademark ?�

A visual symbol in the form of a word, a device or a label applied on articles of commerce with a view to indicate its origin or to distinguish it from other goods/services.

Sumat Prasad Vs. Sheojanan Prasad (AIR 1972 SC, 2488) A mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use that mark. What is a trademark ? A mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. (Sec: 2(1)(zb))

Mark includes a device, brand, heading, label, ticket, name signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination there of

(Sec: 2(1) (m))

What is a trademark ? Laximikant Patel V. Chetan bhat shah (AIR 2002 SC 275)

The definition of a trademark is very wide and means a “mark capable of being represented graphically and which is capable of distinguishing the goods and services of one person from those of others”.

Whether a ‘name’ could be a trademark ?

Kirloskar Diesel Recon Pvt Ltd….. Vs. Kirloskar Proprietary Ltd ( AIR 1996 Bom 149) The Bombay High Court held that a Trade name/business name is also be registered and recognized as trademark. The definition of TM includes ‘name’ and as such the term ‘trade mark’ includes ‘trade name’. Name of a person or enterprise or business name can form a trademark. What is necessary is connection between the mark used in relation to the goods and the person claiming a right to use the same

Whether a ‘name’ could be a trademark ? Jaleel Associates V. Hotel Sugur {2005 4ICC 140 (Ker)}

If a name is used in relation to goods/services for the purpose of indicating a course of trade between the goods or services and some person having right to use such name whether with of without any indication of the identity of that person is a trademark.

Essential requirements of a trade mark:� It must be capable of:

being represented graphically Being used in relation to goods or services Identifying the goods and services with its origin Distinguishing the goods or services Advertising and marketing the goods or services on which it has been applied or proposed to be applied

Trade Mark in ‘EU’ EU Directive on trademarks, 1988 UK Trademarks Act, 1994 According to the Directive trademark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of the goods or of their packaging provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings Trademark in UK

Any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings

A trademark may in particular consist of words (including personal names), designs, letters, numerals or the shape of the goods or their packaging Basic requirements of trademark in EU It must be:

a sign/symbol/mark Capable of being represented graphically Capable of distinguishing the goods or services of one undertaking from those of other undertakings In relation to the goods or services

Sign, symbol, mark & Graphical representation Use of sign/symbol/mark makes the definition of trademark flexible Sign has to signify something or convey a message about the relevant goods or services

Visual representation for enabling the consumer to precisely identify Graphical representation must be clear, precise, self-contained, easily accessible and intelligible graphical representation enables the sign to be represented visually by means of images, lines or characters. Capable of distinguishing It connotes the ability to distinguish Distinguishing character should have been acquired by its nature of by use Different theories on distinctive character:

German theory The second theory The cynic’s theory German theory� Before the date of application for registration or following the use the trademark should have acquired distinctive character (Distinctive by nature/use) The theory postulates two types of distinctiveness:

Concrete distinctiveness: Ability to distinguish the particular goods or services of one undertaking from that of others Abstract distinctiveness: Ability to distinguish in abstract, without regard to any particular goods or services. Second theory & cynic’s theory The expression ‘capable of distinguishing’ takes account of the fact that marks may not have been used before an application is filed, but contemplates ‘what must occur when the mark is used’. When a mark is ‘put to use’ it must distinguish the goods/services of one undertaking from that of other undertakings.

There may be literal interpretation of the meaning of the expression ‘capable of distinguishing’ than a logical or internally consistent interpretation. In relation to goods and services Manufacturers/Producers Retailers/Sellers Intermediaries

Usage of trademark of the manufacturer by the retailers If the retailer has his own trademark Whether the mark of the manufacturer/retailer ? When the retailer does not have his own trademark When retailer is an exclusive agent of the manufacturer Function of a trademark

Indicate to the purchaser or possible purchaser as to the manufacture or quality of the goods Indicate the source for which the goods services come Indicate the trade hands through which they pass on their way to the market

Function of a trademark

Andrew Vs. Keuhnrich (1913) 30 RPC 677 Trademark identifies the product and its origin, guarantees its unchanged quality, advertises the products, and functions as the symbol of goodwill of business

Nicholson Application, (1931) 48 RPC 227

Trademark serves the purpose of assuring the purchaser satisfaction with regard to the make and quality of the article he is buying

Function of a trademark Sumat prasad V. Sheojanan prasad (AIR 1972 SC 2488)

Trademark tells the person who is about to buy that what is presented to him is either what he has known before under the similar name as coming from a particular source.

Under the modern business conditions trademark performs following functions: Identification of the products and its origin. Guarantees with regard to its unchanged quality Advertising and marketing the product IT also functions as the symbol of goodwill of business

Can a manufacturer use two trademarks� Andrew Vs. Keuhnrich (1913) 30 RPC 677

A trader may indicate his best quality by one trade mark and his second quality by another trademark

G E trademark (1973) RPC 297

There appears to be nothing inherently wrong in two  trademarks (logically any number of trademarks) having different connotations being used alongside each other under the statutory law or common law provided that there is a proper connection in the course of trade between the proprietor and the goods

Different forms of trademark Heading: Trademark Act is not clear in this regard. Generally speaking the title/named of product or service Label: A composite mark containing various features including devices and words and descriptive expressions usually printed on paper which can be pasted or attached to the goods or their containers Brand: Symbols branded on the goods in which case the symbols themselves would constitute the trade mark ( Hoechst V. Govt of India IPLRF, 1 at 17) Device: Refers to any pictoral representation which does not come under any other category. Different forms of trademark Ticket: Something stitched or tagged on to the goods and containing the mark printed or pasted there on. Name: personal name/trade name (Kirloskar case) Signature: Signature of an individual or owner Shape of goods: actual shape of the goods Packaging: case box, container etc., Color,Numeral,Alphabet and Combination of colors carry general and dictionary meaning

Different categories of trademark

Product mark (trade mark) Service mark Collective mark Certification mark Textile mark Common law trademark Well-known mark Domain name Historical evolution of trademarks law Paris Convention Madrid Protocol TRIPS agreement In US: The Lenham Act, 1946 Europe: TM Directive UK: Trade Marks act 1940, 1994 India: The Merchandise Marks Act, 1889 Trademark Act, 1940 The Trade and Merchandise Marks Act, 1999

Historical development of trademark law in India Pre independence era:

Indian Penal Code, 1860 sec: 463-489: speak about property and other marks.

Specific Relief Act, 1877: sec: 54:speaks about temporary injunctions in case of inf

Indian Registration Act, 1908: speak about protection of trademarks through declaration as to ownership of a trademark

Historical development of trademark law in India Indian Merchandise Marks Act, 1889 Trademarks Act, 1940 after Britishers enacted similar Act in England The 1940 Act was not applicable to few states like, Mysore, Patiala, Saurashtra, Hyderabad, Kolhapur etc., These states were having separate legislations and there were some reciprocal arrangements between the center and the states. After independence govt of India thought of enacting a new legislation on trademark

Historical development of trademark law in India Post independence era:

After independence govt of India appointed Trade Marks Enquiry Committee to make suggestions for the reformation in the 1940 Act. TM Enquiry Committee submitted its report and the govt appointed Justice N. Rajagopal Ayyangar of Madras High Court to examine the report of the Enquiry Committee and to make recommendations for the reformations After Justice Rajagopal made recommendations Govt appointed Dr. Venkateswaran as the officer on special duty in 1955 who drafted TM Act, 1958 which was enacted and was in force for more than four decades Historical development of trademark law in India In the light of: Experience with the 1958 Act Changed economic order Globalization and open market Need to harmonize the system Mandates of the TRIPS agreement

The Govt considered necessary to bring out a new legislation to address the new developments, to comply with the TRIPS mandates to rationalize and to harmonize the TM system in India. The result being the TM Act, 1999 which came into being on September, 15 2003 Silent features of TM Act,1999 Single application for registration of marks for different classes Widening the scope of the definition of a mark by recognizing the following as trade marks: Shape of goods Packaging Combination of colors

Registration of: Service marks Collective marks Certification marks Well-known marks Textile marks

Silent features of TM Act,1999 Extension of period of registration to 10 years (earlier 7 years) Recognition of assignment of unregistered trademarks without goodwill Unregistered licensing of registered trademark Licensing of unregistered trademark Creation of Intellectual Property Rights Appellate Board to hear and decide appeals from the decisions of the trade mark Registrar. Rationalization and harmonization of the trademarks system in India Objectives of trademark law Protection of Individual interest of the Proprietor of the trademark: Protection of exclusive rights of the proprietor of the trademark over his trademark Protection of proprietor’s right of assignment Protection of the goodwill and reputation of the traders/businessman

Protection of the interest of the society: Use of trademark should not indicate the false origin of goods. The reasons of honesty, fair play are and out to be the basic policies in the world of business.

Objectives of trademark law Laxmikant patel V. Chetanbhai shah (24 PTC 1, SC 2002) Law does not permit anyone to carry on his business in such a way as would persuade the customers in believing that the goods or services belonging to someone else are his or are associated therewith

Trademark guarantee certain quality to the customers regarding goods or services which he is buying Sumat prasad V. sheojanan prasad (AIR 1972 SC 2488) Trademark not only identifies itself with its proprietor but also with the qualities of goods with which it is associated Theories of protection Distinctiveness: Distinctive character Descriptiveness: Deceptiveness: Deceptive similarity Near resemblance Distinctiveness: The concept of distinctiveness can be regarded as the parameter on the basis of which the strength or weakness of marks is adjudged. A mark in order to be capable of distinguishing a particular good from other similar kind of goods ought to be distinctive and distinctiveness is considered to be the most important aspects of any trade mark. Distinctiveness Lack of distinctiveness is an absolute ground for refusal of registration. (sec: 9 (1) (a) of the Act) A mark which lacks distinctive character cannot be registered (Art: 3 of EU TM Directive) However, every mark which possess distinctive character cannot be registered:

Public policy concerns Scandalous marks Obscene images/pictures Marks tend to mislead public Distinctiveness Copyright: originality Patents: Novelty Trademarks: distinctiveness is the core principle of trademark law

A mark need not be invented to be distinctive, innovative use of existing/known trademark can be distinctive.

- Kodak for camera/film - Kodak for refrigerators

Sec: 9(1)(a): absolute grounds for refusal of registration of TM read with sec: 2(1)(zb)definition of trademark:

Marks which are devoid of any distinctive character or not capable of distinguishing the goods/services of one person from those of others shall not be registered

Distinctiveness Imperial Tobacco V. Registrar, trademarks (AIR 1977, Cal 413) Distinctiveness has been understood to mean ‘some quality in the trade mark which earmarks the goods so marked as distinct from those of other producers of such goods A mark has distinctive character if it communicates the fact that the goods with reference to which it used recurrently are those of one and the same undertaking

British Sugar V. James Robertson & Co. Ltd (1996 (RPC) 287 To be distinctive a sign must be in cable of fair & honest application to the goods of anyone else. Types of Distinctiveness Inherent distinctiveness Acquired distinctiveness The mark which do not provide any information as to the nature, quality or characteristics of the goods on which they are affixed are considered inherently distinctive marks. Inherently distinctive marks are generally considered to be of three types:

Fanciful marks Arbitrary marks Suggestive marks Fanciful marks Fanciful marks consist of words which are invented, which do not exist earlier and their meaning is not be found in any dictionary: RIN, KODAK, ONIDA, NODIA Fanciful marks possess highest degree of distinctiveness and does not carry any meaning. Neither addition of suffix or prefix to a known word nor misspelling a known word can constitute a novel/fanciful word Combination of words which does not reveal anything about the underlying good can validly be considered to be fanciful marks. Fanciful marks results not only by coining of words but also by joining of two or more words having dictionary meaning

Arbitrary marks & suggestive marks Consist of words which have a fixed meaning but they neither have any connection to the goods or services nor do they suggest anything about them:

Apple: used in relation to computers Ship: used for match sticks Black & White: used for liquor

Suggestive marks consist of words which provides information to the consumers about certain characteristics, nature or quality of the goods or services - Ever youth- stay young: used in relation to a face wash Marks which are not considered inherently distinctive If a mark is descriptive in nature of where marks comprises of geographical names, personal names, common surnames or where the marks have become customary in the current language or in the bona fide and established practices of the trade:

Following are considered as not inherently distinctive: Descriptive marks Geographical terms Personal names Descriptive marks� Descriptive mark conveys direct information to the consumers as to the function, intended purpose, quality, ingredients, nature or characteristics of goods or services. Yorkshare copper works TM application(1954,RPC,150) descriptive marks are not accorded the status of valid trademark, since these marks cannot sufficiently differentiate between the goods or services of one person from that of his competitors. Elas Presely trademarks (1997, RPC, 543) more apt a word is to describe the goods of a manufacture, the less apt is to distinguish them from the goods of others.

Descriptive marks A trademark which consists exclusively of marks or indications which may serve in trade to designate the kind, quality, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service of other characteristics of the goods or serviced shall not be registered: (Sec: 9(1) (b) of the Act) However if a part of a mark is descriptive and the other part is not, there shall be no problem in registering it. Descriptive + fanciful marks Descriptive + arbitrary marks The UK trademark Act, 1994 also suggests the same

Descriptive marks Trademark should be viewed as a whole not by parts California Cooler Inc V. Loretto winery Ltd, (774, F.2d, 1451, 9th circuit, 1985) Validity of trademark is to be determined by viewing the trademark as a whole but not by examining its parts. Doctrine of foreign equivalent: If a mark consist of foreign words, its descriptiveness is determined after translating the mark into English Otokoyama co. Ltd V. Wine of Japan import inc., (175 F.3d, 266 2nd circuit, 1999) No trader may acquire the exclusive right to the use of the term by which the covered goods or services are designated in the language observed. In the present case it was found that the expression otokoyama was a generic term in Japanese language and the same cannot be registered as TM Geographic terms Geographic terms, names of places are not registered as TM, because such mark would indicate the placed of the goods rather than indicating the source of origin. Further such registration would bar all other manufacturers, traders operating from that particular locality from using mentioning such names to refer to as their business location. Eurolamb trademark (1997, RPC 279) The expression “eurolamb” cannot be registered as TM because the mark would be understood as being a lamb from Europe and amounts to describing the geographical characteristics of the goods ‘Darjeeling’ tea -no trademark-may be used as a certification mark/Geographical indication protection ‘Swiss’ watch- no TM Extraterrestrial terms such as names of other planets, sun, Venus, moon, Globe, world can be registered as TM

Personal names The TM Act of India does not allow/prohibit using personal names/surnames as TM. However, personal names/surnames are not considered inherently distinctive. Onus is on the applicant use to show that it has acquired distinctiveness. If personal names are allowed as TM, people having same name and who wish to use it will be at hardship. On the same lines surnames as TM also prohibit all the others who are having same surname and want to use it. From the consumers perspective also the above two may not indicate the actual origin and may cause confusion with regard to the origin of goods and service, because of the fact that several individuals can have same personal name or surname Acquired distinctiveness All marks which are not inherently distinctive cannot be rejected trademark protection. There shall not be any problem for registration, if a mark which is not inherently distinctive, acquires distinctiveness by use. Whether a mark has acquired distinctiveness or not could be determined on the basis of the association that the consumers have got with it. If the consumer identify a mark to be associated with goods or services from a definite source, there shall not be any problem in registering it as TM. Primary meaning: inherently not distinctive and cannot be a valid trademark Secondary meaning: Acquiring distinctiveness through consumers identification of mark in association with goods or services of definite source. Acquired distinctiveness A mark which is primarily not distinctive, if acquires secondary meaning by use is considered to be distinctiveness and could be a valid TM The applicant who wants to claim a mark which is not inherently distinctive shall have to prove the consumers identification of the mark as associated with goods or services of a definite source. In wood Laboratories Inc V. Ives Laboratories (456 U.S 844) To establish secondary meaning a manufacturer/trader must show that in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself The TM Act of India: A 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.

Acquired distinctiveness On the same lines a mark which is wrongly registered shall not be declared invalid if the mark has acquired distinctiveness after registration and before the commencement of any legal proceedings challenging the validity of such registration (sec: 32 of the Act) Application has to demonstrate or prove that his mark which was having primary meaning (inherently not distinctive) has acquired secondary meaning (acquired distinctiveness) Windsurfing chiemesee V. Attenberger (1999) ETMR, 585, ECJ

	whether ‘chiemesee’ the name of a lake in Bavaria could be a TM for sports clothing ?

If a TM which is not inherently distinctive following the use which has been made of it, has come to identify the product as originating from a particular undertaking so as to distinguish the product from goods of other undertakings, there shall not be any problem in registering it.

Acquired distinctiveness If the term ‘chiemesee’ has been identified by the consumers in association with sports clothing it can be said that it has acquired distinctive character (secondary meaning) and is able distinguish the goods and services. Therefore, personal names/surnames/geographical terms though are descriptive but not inherently distinctive can be provided TM protection if due to the continuous use there are identified with goods and services of definite source:

McDonald's restaurants: A surname: A registered TM TATA motors: A surname: A registered TM Birla companies: A surname: A registered TM Dr. Reddy’s Laboratory: A surname: A registered TM Ajantha Wacth: A geographic term: A registered TM Tajmahal Tea: Monument in Agra: A registered TM Bajaj Auto: A surname: A registered TM What is the extent of secondary meaning which is required to satisfy distinctiveness It is not necessary that acquisition of secondary meaning should displace the primary meaning. Acquisition of distinctiveness by a mark need not completely alter the impression of the primary meaning Unilevers’s trademarks (1987, RPC, 13) If an inherently not distinctive mark moderately acquires distinctiveness enabling it to differentiate the goods and services from a definite source from that of others, it is enough to grant TM protection. It is not necessary that secondary meaning should completely displace the primary meaning. British Sugar V. Robertson (1996, RPC, 281) If substantial number of people identify an inherently not distinctive mark to be associated with a particular set of goods/services differentiating from other goods/services is sufficient to be considered to have acquired distinctiveness

Acquired distinctiveness One has to consider the market share held by the mark, how intensive and wide spread the mark has been, the proportion of the people who identify the mark to have associated with goods/services originating from a definite source etc., while determining the acquisition of distinctive character by a mark Distinctive mark if becomes generic looses its status as a valid trademark Xerox, Aspirin escalator Deceptive similarity Similarity, Identical, Near resemblance Deceptive character Confusion/misguidance Marks which are deceptively similar, which cause confusion in the minds of the consumer with regard to the origin/source or to the quality of the goods and services cannot be registered Deceptive similarity is a good for opposing the registration of a trademark Deceptive similarity is good ground for challenging the validity of a trademark Deceptive similarity is a good ground for questioning the proprietorship over a trademark Deceptively similar is an absolute ground for the revocation of a registered trademark

Deceptive similarity Deceptive similarity is a good for defending in infringement action/passing off action Statutory definition: A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. (Sec: 2(1) (h)) It is presumed that a mark which so nearly resembles cannot indicate the proper source/origin/quality It confuses/deceives the consumers with regard to their choice of goods/services Choosing/using Deceptively similar marks amounts to unfair competition. Person using a deceptively similar mark can also be challenged under unfair competition law

Deceptive similarity

Principally applications for the registration of deceptive similar marks can be rejected and the onus is on the applicant to prove that his mark is not deceptive.

National Sewing Thread V. James Chadwick (AIR 1953 SC 357) The onus rests fairly upon the applicant and that onus is heavier when the mark is new. Where the opposition is based on similarity of marks the applicant may be able to discharge the burden which rests upon him by argument based on the marks themselves Frigiking trademarks (1973, RPC 739) The onus is always on the applicant to show that the mark is not deceptively similar to the opponents mark Amrithdhara case (AIR 1963 SC 449) Factual circumstances needs to be considered while deciding the onus. Each case depends upon its own particular facts and circumstances

Deceptive similarity Parle Products V. J.P & Co (AIR 1972, SC 1359) General principle is that onus is on the applicant to prove that his mark is not deceptively similar, however one cannot ignore the factual circumstances of the case which have contributed to the status of the case. Onus of the applicant arises only after the opponent has discharged the onus of establishing deceptive similarity. In case of registration/rectification proceedings onus is on the applicant to disprove deceptive similarity In case of infringement/passing off actions onus in on the applicant to prove similarity The purpose of trademark: Indication of source/quality Identification of goods/services Differentiating the goods/services Enabling the consumers to make right choice Cannot be served through a deceptive mark

Deceptive similarity Speaking in terms of the letter of the law the trademarks Act in India provides that:

A TM shall not be registered if because of its identity with an earlier TM and similarity of goods or services covered by the TM Its similarity to an earlier TM and the identity or similarity of the goods or services covered by the TM (Sec: 11 )

A registered TM is infringed by a person, who not being a registered proprietor/authorized person uses a mark which is identical or deceptively similar to the registered TM in relation to goods and services in relation to which the TM is registered. (Sec: 29 (1) ) Deceptive similarity in case of certification marks. (Sec: 75 ) Falsifying a TM in order to deceive the consumers and the established trader (Sec: 102)

Types of similarity Visual similarity: Similarity which appeals to eye/which can be seen/visual This includes the sequence of the letters, numbers, structure of the mark, wordings, figures, graphics, pictures used Phonetic similarity: similarity in terms of the pronunciation of the mark It includes the articulation of the mark and how it sounds

Conceptual similarity: Similarity in terms of the meaning and content of the mark It includes the nature and features of the marks, its scope and content

Assessment of similarity Mere similarity or resemblance is not sufficient. Similarity must be likely to deceive/cause confusion in the minds of the consumers. Resemblance cannot be strictly defined and it varies based on the facts and circumstance of the case

Amrithadhara case AIR 1963 SC 449 No strict definition for resemblance, it depends upon factual circumstances. Established tests of comparison or norms laid down by the courts or the judicial bodies can be considered while deciding the similarity. Factors which have contributed to the status of the case needs to be considered

Smith Haydens application (1946 63 RPC 97) If the substantial numbers of persons are likely to be confused or deceived in a regular course of business by the usage of a mark, such mark is considered to be deceptively similar

Assessment of similarity

Sabel V. Puma (1998 RPC 199) There shall be global assessment of the degreed of similarity. While assessing the similarity between two marks and degree of resemblance one shall consider: Identity, recognition, popularity of the mark registered/used Consumers association with the mark Nature of goods and services

Jayabharat Industries V. R.T Engineering (AIR 1978 Guj 60) While determining similarity and resemblance the status of the consumers needs to be considered

Parle products (AIR 1972, SC 1359) Psychological reaction of the consumers towards the alleged mark and consumers mental association with the existing mark plays a vital role in determining the likelihood of confusion.

Assessment of similarity Pointiest application (1906, 23 RPC 774)

   While assessing the extent /degree of deceptive similarity one need to consider:

The look, sound and the content of the mark The kind of goods on which the mark is being applied Nature and status of customer who would be likely to buy the goods Surrounding factual circumstances Similar mark in case of different goods/service ! Delip chand V. Escorts (AIR, 1980, Del, 180) Use of similar marks in relation to different goods does not constitute deceptive similarity since it will not lead to any deception or confusion. However if the existing mark’s owner/trader is so reputed, use of the similar mark may indicate to the public that they are coming from the same source. In such cases onus lies on the applicant to prove that there is no such likelihood of deception or confusion Assessment of similarity Resemblance in prefix/suffix of the mark !

Cadila Health care Ltd V. Cadila Pharmaceuticals Ltd (2001 (1) CTMR 288, SC) ‘Falcitab’ and ‘Falcigo’

Falci taken from the name of the decease “falcipharm malaria”.

It is a common practice in pharmaceutical industry to use part of the name of the decease, part of the name of the organ it treats, ingredients of the drug as a trademark to indicate that a particular drug is meant for a particular disease.

It was viewed that following factors needs to be considered while assessing similarity:

Similarity in nature and character of the product in the context Similarity in performance of the products Class of purchasers/customers

Deception and Confusion Scientific compounds and processes pvt ltd V. Hanuman Cottage Industries (2002, 24, PTC 249, Mad)

The words deceive and confusion used in the definition of deceptive similarity under the Act carry different meaning Deception involves intentionally or unintentionally telling a lie or misrepresentation or causing a person to believe a thing to be true which is actually false Confusion does not involve telling lie or false representation, it signifies lack of ability on the part of the consumers to distinguish the marks Therefore while assessing the similarity the mental status of the consumer needs to be considered The mental status of the trader, user is not relevant as long as there is action which violate the rights of the registered user of the mark

Assessment of similarity Smith Kline Beecham V. Venkataiah and others (2005, 31, PTC 666, Del)

Smith Kline a UK company, well known manufacturer of pharmaceutical products. They produce ‘paracetamol’ tablets with a particular design (red and blue color ) of strip packing. They use ‘Crocin’ as their trademark for their paracetamol tablets. Defendants are using the mark ‘Nelcin plus for selling paracetamol tables with same strip design packing Smith Kline alleged that defendants mark is deceptively similar and moreover they copied the design of strip packing. The court observed that; in view of the mark that is used which is more or less similar and moreover strip packaging is similar, it could case confusion or deception in the minds of the consumer Assessment of similarity St. Ives Laboratories V. Indo Cosmetics Pvt Ltd (2005, 312, PTC, 635, Del) St Ives Laboratories produces cosmetic and toiletry products They use ‘ST. IVES’ as trademark for their products Indo Cosmetics Pvt Ltd produces similar goods and they are using ‘MT.IVES’ as trademark for their products Applicants alleged deceptive similarity on the basis of: Similarity of business/goods/services Similarity of the mark They contended that use of such mark constitute deceptive similarity since it is having likelihood of confusing the consumers. Court adjudged MT. IVES to be deceptively similar to ST.IVES

Registration of trademarks Institutional mechanism for the registration of TM Trade marks Registry (quasi judicial body) IPR appellate Board (quasi judicial body) High Court/Supreme Court Registrar of trademarks (the authority) Functions of the Registrar Procedure before the Registrar Adjudication of matters Register of trademarks (the document) Entries in the Registrar Contents of the Registrar Documentary evidence

Trademark offices: Mumbai, Delhi, Chennai, Kolkata, Ahmedabad IPR appellate Board: Chennai

Register of trademarks The Register contains: (Sec: 6 of the Act) Specimen of the TM registered Official serial number allotted to the mark The date of registration The name/s and address of the owner/s Address of service for service in case of foreign proprietors Description and class of goods/services in relation to which the mark is registered Conditions and limitations imposed if any Note of assignments/licensing if any Note of transmission/transfer if any Note of authorization to use/agents if any Names of the people who are registered users of the mark

Register of trademarks Note regarding renewal of registration Note regarding revocation proceedings Note regarding the infringement proceedings IPR appellate Board directions if any High Court Directions if any Non use/surrender of the mark Note regarding review proceedings

All the transactions that take place with relation to a registered trademark needs to be entered in the register of trademarks once it is registered. Entries in the trademark registry can be used as evidence in judicial proceedings The registrar of TM is the official custodian of the register of TM Registration of trademarks Filing of the application Coding/application number allotment Scrutiny/examination of the application Objection by the trademark office Refusal on valid grounds- (Appeal to the IPR appellate board) Withdrawal of the application Application abandoned if no response from the applicant

Acceptance of the application Publication of the application in the journal of the registry Invitation for objections/opposition Institution of opposition proceedings Hearing and disposal of the proceedings Opposition is allowed/application is refused- (review can be sought) Opposition is not allowed/application is accepted-(review can be sought)

Registration of the mark/Issue of certificate of registration Aggrieved party may appeal to IPR Appellate Board

Registration of trademarks Who can apply for a trademark ? Sec: 18 A person claiming to be the proprietor of a trademark ‘used’ or ‘proposed to be used by him,’ who is desirous of registering it, may apply for the registration of a mark

Can there be an application for TM without any intention to use it ? There is such possibility under sec:46 of the Act where a person who applies for a TM may obtain it for the purpose of assigning it to somebody who might use it.

Claiming proprietary rights over trademark through registration ? A person can become proprietor of a TM either by use or by registration. When the mark is only proposed to be used, the applicant cannot claim proprietary rights in the TM until he starts using the mark or he gets registration. Therefore a person who has not put the mark to use may claim to become proprietor through registration. Rawhide trademarks (1962, RPC 1333)

Registration of trademarks Where one can file the application ? In the appropriate office: Trademark office near the official business place of the trader In case of foreign applicants who do not have business office in India have to file the application in the office who’s jurisdiction their address of service is situated. Requirements of registration ? Distinctiveness Graphical representation indication the source/origin being applied on goods or services

Marks which are registrable/Which are not registrable ? In general marks which satisfy above requirement are registrable unless otherwise prohibited. Marks which cannot satisfy the above requirements cannot be registered even if are not otherwise prohibited any name, symbol, sigh, letter, phrase, numeral, color combination, are any combination thereof can be registered if otherwise not prohibited

Grounds for refusal of registration Absolute grounds: {sec: 9 of the Act} 1) Marks devoid of distinctive character can’t be registered since those marks can’t distinguish the goods/services {sec:9(1)(a)} What is distinctive character ? British Sugar V. James Robertson (1996, RPC, 28) A mark to be distinctive of a person’s goods/services must be generally incapable of application to the goods of anyone else. It must be incapable of application in fair and honest application on other goods/services Further if people who are familiar to such mark are not regarding it as something which provides an indication as to the nature of the goods and services with reference to which it is used, such mark cannot be said to have distinctive character Grounds for refusal of registration 2) Marks indicating nature/characteristics of goods/services” {Sec: 9 (1)(b)} A mark which indicates the kind, quality, quantity, function, value, purpose, geographical origin etc cannot be registered ITC Ltd V. Registrar of Trademarks *AIR 1977, Cal 413) The name of a major industrial area or city would not be registered as a trademark. But certain geographical names can be used as TM provided that such name should never occur to any trader in such goods to use. It is rarest of the rare case when such registration is allowed.

3)Marks common to trade: {Sec: 9(1) ©} Generic marks, customary marks used commonly in the trade cannot be registered as TM 4) Marks of such nature to deceive the public: {Sec: 9)2) (a)} 5) Marks likely to hurt religious sentiments: {Sec: 9)2) (b)} 6) Marks containing obscene or scandalous material: {Sec: 9)2) (c)} 7) Marks prohibited under the Names and Emblems Act: {Sec: 9)2) (d)}

Grounds for refusal of registration Relative grounds: Sec: 11 of the Act A mark shall not be registered if:

it is identical/similar to an existing TM

there is any likelihood of confusion on the part of the public If there is any likelihood of wrongful association with the earlier mark How to test similarity/confusion ? How to assess the mental status of the consumer Smith Hydens’s Application (1946, 63 RPC 97) In a normal and fair manner of trade and commerce if the court is satisfied that usage of a mark leaves a reasonable likelihood of confusion or deception amongst substantial number of persons such marks cannot be registered Grounds for refusal of registration

Amrithadhara case (AIR 1963 SC 449)

Amrithdhara V, Lakshmanadhara The Supreme Court of India viewed the above marks as similar both phonetically and structurally. It was furthere held that when there is clear evidence with regard to the similarity there is every chance of likelihood of confusion and registration shall not be granted for such marks

Pianotist Company Ltd Application(1996, 23 RPC 774) Similarity should be assessed after considering: a) the look and sound b) Nature and kind of the customer c) Surrounding circumstances d) What likely to happen if two marks are in use in the normal course of trade The consideration of the above if leaves an impression that there is a similarity/likelihood of confusion registration may be refused

Grounds for refusal of registration Punjab Tractors Ltd Vs. Promod kumar Garg (2000, PTC 260 Del) Similarity/confusion might arise because of: The identity of the marks The identity of the goods and service or The trade connection between the goods and services If the marks are identical and the area of business is similar, if the goods and services are similar, than there is a likelihood of confusion

Similarity in case of identical marks but area of business is different If the earlier mark is well known mark in India if the use of the later mark would take unfair advantage of or to be detrimental to the distinctive character or reputation of the earlier mark registration for the later can be refused {sec: 11(2)}

Marks prohibited otherwise can be refused for registration Registration can be refused for: Marks prohibited under any other law, (Emblems and Names Act) Marks which cause violation of a copyright Opposition to registration of trademark Publication of the application: It is mandatory that application shall be published before registration to provide opportunity to the interested persons to oppose the registration. {TRIPS Art: 15(5)} Who can file application for opposition ? Any person with or without personal interest in the claimed mark can file opposition Registered owner/Person claiming to be the proprietor of a TM can file objection (sec: 18) Any aggrieved party like, registered user, agent, licensee may file opposition (sec: 56) P.N Mayar V. Registrar of TM (AIR 1960, Cal, 80) Any person may include: prior registered owner customer/purchaser member of public who is likely to use goods/services

Opposition to registration of trademark Whether an association/union/group file opposition ? Kedarnath Gupta V. J.K Organization (1998 PTR 15 Del) A trade union opposing the registration of TM Application for ‘JAY KAY’ mark by Kedarnath Whether a trade union (J.K Organization) a non-profit organization can file opposition ? A proprietor of the mark can file opposition, an aggrieved party can also file opposition, meanwhile it is not necessary that opponent should always be the registered owner or the aggrieved party. Any group/association/union/general public with or without personal interest can file opposition. There is no prohibition from filing opposition by a person or association without any personal interest provided there is substance in the opposition

Opposition to registration of trademark Opposition procedure: Any person who intends to oppose trade mark registration shall have to give ‘notice of opposition’ to the Registrar of TM in writing within three months from the date of advertising Registrar is obliged to serve a copy of notice to the applicant Applicant shall have to file counter statement within two months from the date of receipt of copy of notice of opposition. Failure on the part of the TM applicant to file counter statement in two months renders his application abandoned A copy of the counter statement shall be served on the opponent who has initiated the opposition proceedings Evidence regarding the respective cases needs to be adduced with affidavits to the Registrar (sec: 129) Registrar shall have to conduct a hearing of both the parties and provide chances of examination and cross examination

Opposition to registration of trademark Registrar will have the powers of civil court in conducting the proceedings of opposition Registrar himself may raise objection either on the basis of oppositions filed or on his own, which shall be communicated to the applicant of TM Adjudication of the opposition proceedings PNJ TM rules Merits of the case Inferences on the basis of the evidence adduced by the parties and the hearings Pharamedia TM application (2000 RPC 536, P.542) The opponent of a TM application serves not only his interest but also the interest of the public. There is a fair chance that during opposition proceedings mark which does not deserve protection, which might deceive or confuse public be identified. Therefore the motive of the opponent is not relevant but the merits of the case are. Opposition to registration of trademark From the decision of the registrar in disposing the opposition proceedings an appeal may lie to the IPR appellate Board At the disposal of the opposition proceedings if went in favor of the TM applicant on the satisfaction of the statutory norms the Registrar confirms the registration and issues a certificate of registration to the applicant. Certificate of registration is an evidence/document regarding the ownership/proprietorship of the TM which is admissible before the court of law as evidence From the decision of the registrar in granting registration an appeal may lie to the IPR appellate Board From the decision of IPR Appellate Board appeal may lie to High Court/Supreme Court depending upon the nature of the issues involved.

Rights conferred after registration and use of TM Right to exploit the trademark by way of Exclusive use of it Applying it on the goods and services Assigning (with or without goodwill) Licensing (exclusive or otherwise) Authorizing somebody to use the TM Agent Authorized and registered user - Surrender the TM Transfer/sell the mark Right to move the court of law in case of violation of exclusivity of his rights

Infringement and enforcement of trademark What is infringement ? A registered TM 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 trademark in relation to goods and services for which TM is registered Sec: 29 (1)

What constitutes infringement/Ingredients of infringement ? Using the mark in whole or taking its essential features with additions/alterations Using a similar or identical mark Using the mark in regular trade similar to that of the registered TM owner Using the mark in respect of similar goods and services

Infringement and enforcement of trademark Who can file suit of infringement ? Proprietor Assignee Exclusive Licensee Agent Representative Registered user Appropriate forum for initiating infringement proceedings ? A court not below the rank of District court

Determination of infringement Once infringement proceedings are instituted the first task before the court would be to assess the locus standi of the person who has instituted the proceedings The second task would be to determine whether there is any infringement Thirdly if infringement is determined identify the possible remedies for the same

Infringement and enforcement of trademark Durga Dutt Sharma V. Narayan Pharmacy Laboratories (AIR, 1965, 980) The test of infringement is to assess and identify is there is any similarity between the registered mark and the alleged mark by following rules of comparison which say: Compare the marks visually, phonetically and conceptually Compare the exact words/letters/numbers used in the mark Compare the business/goods of the parties It was viewed that where the two marks are identical or similar the infringement is made out no further question arises. If there is no similarity even the near resemblance could constitute infringement provided there is a likelihood of deception/confusion Infringement and enforcement of trademark Hoffmann La Roche & Co V. Geoffrey Manner & Co Pvt Ltd (AIR, 1970, SC 2062) ‘PROTOVIT’ ‘DROPOVIT’ It was viewed that while determining the infringement two marks must be compared both by look and by their sound The goods on which the mark is applied to be considered The nature and kind of customer who would be likely to buy those goods to be considered Surrounding circumstances needs to be considered which contributed to the case Consider what would happen if mark is used simultaneously with the similar registered mark After all this if you come to a conclusion that there is a likelihood of confusion and deception in the minds of the public by the use of such mark it may be determined the defendants act constitute infringment

Infringement and enforcement of trademark Ruston & Hornby Ltd V. Zamindara (AIR, 1970 SC 1649) The test of infringement is same that of passing off. Incase of passing off, the issue is:

whether the defendant is selling goods as to be leading the purchasers to believe that they are the goods of a reputed trader

Whether there is any deception or confusion resulting from such impression and belief In case of infringement the issue is: whether the defendant is using a mark which is similar or identical to a registered mark. The proof of deception/confusion is irrelevant as long as there is proof of the effect that the mark is similar or identical

Defenses in case of infringement Defendant in infringement proceedings can claim against the proceedings on several grounds: The use is protected for permitted use (fair use) (sec: 30 ) The TM has become generic/common in the course of trade and commerce Defendant is a prior user of the TM (sec: 34) Kisan V. Punjab Food (AIR 1983, Del, 387) If the defendant is using the mark prior to the registration by the plaintiff, his continuation in using the mark does not constitute infringement Defendant has concurrently registered the TM Second sight Ltd V. Novell UK Ltd (1995, RPC 423) Prior concurrent registration is a valid ground for defense in case of infringement proceedings

Defenses in case of infringement Registration is invalid/liable to be revoked Use is with the consent of the owner of the TM The use is bonafide use of the defendants own name (Sec: 35) Baume V. Moore (1957, RPC 226) The mere fact that a trader is using his own name which too closely resembles a registered TM does not prevent the user from being a bonafide user provided he honestly thought that no confusion arise and he has no intention to divert the business Defendant is innocent and unaware of the registration by the proprietor Alleged act is not infringement

Defenses in case of infringement The plaintiff is not entitled to file the suit because: He is not using the TM Not eligible to file the suit His conduct amounts waiver of his rights (acquiescence: sec: 33) The owner of TM may loose the proprietorship over a trademark by non-use Continuous non-use for 5 years makes a registered TM owner to loose proprietorship, since TM is protected on the basis of use Khoday’s Distilleries Ltd V. The Scotch Wisky Association & others (MIPR 2008 (2), SC 253) PETER SCOT” registered TM of Khoday’s since 1968 Defendants producers of scotch whisky filed suit against khoday’s after 14 years from the date of registration and use of the mark by Khoday’s Defenses in case of infringement Issues: Whether delay in approaching the appropriate forum makes a TM owner to loose right to file infringement suit Whether delay on the part of the TM owner is a ground of defense in infringement proceedings Whether principle of acquiescence is applied in case of delay Whether acquiescence amounts to consent principle of acquiescence: Knowingly if not intentionally allowing somebody to invade the rights of oneself. Conducting oneself in a way which signals waiver of one’s rights on something owned. The court viewed that delay on the part of the TM owner in moving the court is a good ground of defense. If the TM owner knowingly allows somebody to use his TM in a way hinting at the other part to gain an impression that TM owner has no objection or he has waived his rights would amount to consent and he looses his rights on TM. The principles of acquiescence could be applied in such cases and the same could be a valid defense in infringement proceedings Remedies for infringement Injunction: sec: 134 &135 Damages Accounts of profits Delivery of infringing labels and marks Manus V. Fulwood (1954, 71, RPC 243) If the infringement is proved on the establishment of loss suffered by the TM owner damages/accounts of profits could be awarded Century V. Roshan lal (AIR, 1978, Del, 250) The general rules governing the grant of injunction in trademark cases are based on the provisions contained in sec: 36 to 42 of the Specific Relief Act and order 39, rule 1&2 read with section: 151 of CPC Therefore while providing remedies in case of TM infringement courts have to read sections: 134 &135 of TM act with the above provisions of CPC and Specific Relief Act.

Passing off No man is entitled to represent his goods/business as being the goods or business of another A trade is not permitted to use any mark, device or other means whereby although he does not make a false representation to a direct purchaser of his goods, he enables such a purchaser to make a false representation to the ultimate purchaser of goods Basic elements of passing off: According to Lord Diplock as he observed in Ervin Warnick V. Townend & sons Ltd (1979, Ac 731) to constitute passing off there must be: Misrepresentation It must have been made by a trader in course of trade to the customer/prospective customer Which has caused some confusion/deception in the minds of the consumers Resulting in some injury/loss to the goodwill/reputation of the trader Making the trader to suffer some damage to his business Passing off

Reckitt & Colman V. Borden (1990, RPC, 341) To constitute passing off there must be: established goodwill of a trader Misrepresentation by somebody Damage to the trader If the defendants action is likely to cause deception and confusion among the consumers if it causes damages to the plaintiff there is a strong case of passing off Passing off: Invasion of proprietary rights Selling the goods by misrepresentation or under the pretence that they are the goods of another man constitutes an invasion of proprietary rights vested in the plaintiff, if the plaintiff goods have acquired a reputation in the mark and are known for some distinguishing feature. Reddway V. Banham (1986, 13 RPC 218) A trader cannot represent his goods as belonging to somebody else, by use of any mark, name, sign, symbol or by other means Passing off Modes of Passing off: According to P. Narayanan, famous writer on trademark law passing off is committed in different modes: False representation Adoption of a TM either in whole or in part Colorable reproduction of TM Copying the label, scheme or get up of the mark

Types of Passing off: Contributory passing off: Assisting/aiding somebody to pass off his goods as of some reputed trader Reverse passing off:

Passing off some body else’s goods as his goods

Passing off in regular sense: Passing off one’s goods as of belonging to some reputed trader Passing off Factors relevant while deciding passing off: There are certain factors which are relevant while considering passing off actions: (Combe V. Schooll, (1980, RPC, 1) Status of plaintiff in the business Goodwill/reputation of the plaintiff Was there any delay in approaching the court of law Status of the consumers Nature of defendants act: was it intended to deceive the consumer and the trader

Passing off and TM law Sec: 27, 134 and 135 of TM act refer passing off Teja Sing V. Shanta Devi (AIR, 1973, AP, 51) Passing off actions fall under the purview of sec: 134 of the TM Act which also speaks about TM infringement Passing off Honda motors Co Ltd V. Charanjit Singh & Others (2003, 26 PTC 1, Del) ‘HONDA’ v. ‘HONDA

Honda motors is using ‘HONDA’ as their trademark for their automobile products Charanjit Singh started using ‘HONDA’ for his pressure cookers products Plaintiff’s instituted passing off action Court considering the: Status and goodwill of the Honda motors in the business Popularity and credibility of TM ‘HONDA’ in the automobile business Status and acquaintance of consumers to the term ‘HONDA’ to be associated with automobile company Viewed that usage of same mark by the defendants even through for different product would constitute passing off

New trends in trademark law Well-known trademark A mark which has become well-known and popular to the substantial segment of public which uses the goods and services represented by such mark, which if used in relation to other goods/services might indicate a connection between the first goods and the later one's (Sec: 2(1) zb) Ciba-Geigy V. Surinder Singh (200 PTC, Del, 396) Swiss company Ciba-Geigy owes ‘cibaca’ TM Surinder Singh started using ‘cibaca for filters In a suit of passing off against surinder Singh argued that products are different and there is no possibility of confusion Swiss company contended that the established reputation and popularity of their TM makes it a well-known mark for the people and hence if the same mark is used on even different goods there is a chance of it indicating wrong origin

New trends in trademark law Court viewed that with the passage of time and the reputation acquired ‘cibaca’ has not only become popular but a house hold word. It connotes distinctiveness, reputation, quality and goodwill acquired by the plaintiff over a number of years. Therefore it is a well-known mark which could be protected and prohibited from using by any other even on different goods. Certification mark: Sec: 2 (1) (e) A mark which is used on goods/services which have been certified by the proprietor of the mark with respect to their origin, quality, material, performance etc., Its function is to certify the goods. services with regard to origin, quality, material, performance. Any person or association which applies for certification mark needs to submit draft regulation for the certification of goods and as well the usage of certification mark Certification marks cannot be assigned or trasnsfered New trends in trademark law Textile marks: A mark used in relation to textile goods (sec: 79. 80)

Collective mark (sec: 61-68) A mark distinguishing the goods/services of members of an association of persons not being a paternership which is the proprietor of the mark from those of others A collective TM distinguishes goods of members of association from those of others Application for registration shall be accompanied by draft regulation governing the use of the mark by the members of the association Basmati rice producers association Kashmir apples producers association Andhra mango producers association Surat textile products producers association Domain Names Address of a computer on internet Use and regulation of domain names Ministry of Commerce, Govt of US National Science Foundation The Internet Assigned Numbers Authority (IANA) Internet Corporation for assigned names and numbers (ICANN)

Domain name registration First come first service ICANN functions in co-ordination with its supporting organizations in domain name registration and maintenance ICANN objectives: Co-ordination of assignment of internet technical parameters as needed to maintain universal connectivity on the internet Performing and overseeing functions related to the co-ordination of the internet protocol address space. Performing and overseeing functions related to the co-ordination of Domain names system

Domain Names Supporting organizations of ICANN: Generic Names Supporting Organizations (GNSO) Works on policy making on generic top-level domain names Country Code Names Supporting Organizations (CCNSO) Works on policy making on country code top level domain names .uk, .in. etc Address Supporting Organization (ASO) Undertakes policy making on Internet Protocol address

Domain names and cyber squatting: Pre-emptive registration of popular TM as domain names WIPO and ICANN attempts to address cyber squatting and domain name disputes Different types of cyber squatting: Classic cyber squatting Derogatory cyber squatting Typographical error cyber squatting

Domain names and cyber squatting� Classing cyber squatting: Registration of a popular TM as domain name with an intention to make profit by selling the domain name to the TM owner Derogatory cyber squatting: Registration of domain names for tempering, politicizing and dilute the reputation of the TM owner. Registration of TM as domain names and posting unhealthy material regarding the TM owner on the domain name Creating a domain name with similar wordings of existing TM/domain for illegal or immoral purposes such as pornography Typographical error cyber squatting: Registration of domain name with expressive words misspelled, but substantially similar to any popular TM or existing domain names. Rediff.com, radiff.com

Domain names and cyber squatting ICANN’s Uniform dispute resolution policy (UDRP) on domain name disputes and cyber squatting Policy for TM owners to obtain domain names from cyber squatting Policy sets out arbitration as a method of resolving domain name disputes. A TM owner can obtain his TM registered as domain name from the cyber squatter if: The domain name is similar or identical to his TM The person who registered the domain name has got no legal or legitimate interest with regard to domain name The owner of domain name is using it in bad faith Parties of the UDRP can file a suit before the court of law UDRP complaint can be instituted by the TM owners against the cyber squatters before: Institute for Dispute Resolution Asian Domain Name Dispute Resolution Center The National Arbitration Forum WIPO Domain names and cyber squatting Domain name disputes and the law of passing off: Law of passing of is extensively used for providing a solution for the domain name disputes The general proposition of law of passing off that no body can take un due advantage of the endeavors of the other, no body can misuse the property, reputation or goodwill of the other with bad faith have been used in case of domain name dispute resolution also Since TM and domain names perform similar function, since both are protected under the similar philosophies passing off which is useful and appropriate remedy in case of TM can be used in case of domain names as opined by the law courts Yahoo V. Akash Arora (1999, IPLR, Del,196) Yahoo owner of ‘yahoo’ TM and as well ‘yahoo.com’ domain name for internet services Akash arora registers ‘yahooindia.com’ for similar type of services Yahoo initiates passing off action against Akash Arora Domain name disputes and the law of passing off: Yahoo: Yahooindia.com would cause confusion and deception in the minds of consumers. Domain names get equal protection as that of TM under passing off Akash Arora: There is a disclaimer on the web site regarding the origin of the services, therefore there is no confusion. Passing off remedy is for goods not for services Court: Mere disclaimer with regard to origin of service is not sufficient to avoid confusion Given the reputation/goodwill of the yahoo and their services, similar TM/domain name would amount an attempt to exploit the same The function of TM and domain name is similar. Therefore passing of action could be a remedy for domain name disputes Yahooindia.com is deceptively similar to yahoo.com and the same is prohibited from use.

Domain name disputes and the law of passing off: Rediff.communications V. Cyber booth (AIR, 2000, Bom, 27) REDIFF.COM -RADIFF.COM Rediff.com institutes passing off action at Bombay High Court Rediff: Cyberbooth’s domain name is deceptively similar to rediff.com There is a likelihood of confusion among the consumers

Cyber booth: We have no intention to deceive or confuse the consumers of rediff.com, therefore passing off action cannot sustain

Bomabay High Court: Intention to deceive is not a pre-requisite to passing off If the fraud or deception is proved no further enquiry is required upon the likelihood of confusion Both the names are so nearly resembling and there is a likelihood of confusion among the consumers An injunction was issued against cyberbooth from using radiff.com

Domain name disputes and the law of passing off: Can there be a descriptive domain name ? Online India capital co. pvt. Ltd Vs Dimensions Corporate (2000. PTC, Del, 396) MUTUALFUNDSINDIA.COM – MUTUALFUNDINDIA.COM In an passing off action instituted by online India dimensions corporate challenges the validity of MUTUALFUNDSINDIA.COM, contending that it is descriptive in nature and has not acquired distinctive character. Delhi High Court views that: Plaintiff’s domain name is descriptive of their business Applying regular TM law and practice a descriptive domain name without acquiring secondary meaning cannot become a valid domain name Since MUTUFUNDSINDIA.COM is descriptive and has not acquired secondary meaning it is not a valid domain names, therefore passing off action cannot be sustained Domain name disputes and the law of passing off: Whether TM owner has got pre-emptive right to have his TM as his domain name ? Aqua minerals Ltd V. Promod Bose (2001, PTC 619, Del) BISLERI - BISLERI.COM In action instituted by Aqua minerals defendant contend that they are not involved in the mineral water business and have not intention to confuse the customers of Aqua Delhi High Court views that a TM owner has got pre-emptive right over his TM He can only have his TM registered as his domain name. Nobody can tamper with it in any form. It has to be noted here that Clause: 4 of the UDRP also speak about registration of established TM as domain name by its owner

TATA sons Ltd V. Manu Kosur (2001, DLT 90, 499) Defendants have registered 10 domain names on TATA which is popular TM. In a passing off action instituted by TATA to Delhi High court held that in the light of long use and popularity of TATA, domain on the same by somebody else would cause confusion among the consumers and the same cannot be permitted

Domain name disputes and the law of passing off: Whether principles of TM law can be applied for protecting domain name Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004, 28, PTC SC, 566) sify.net.com, sifysmall.com for computers and internet related business Defendant have similar domain name for internet marketing Lower Court issued injunction based on the principle of passing off against the defendant which has been reversed by the High Court on the ground that the business of the parties is different In appeal, Supreme Court views: The function of domain name is similar to TM as the business identifier. Though the business of the parties is not similar but are interlinked. Therefore there is a possibility of confusion among the consumers. In the absence of exclusive legislative mechanism in this connection to the extent possible the domain names could be protected under passing off Domain names given its function and relevance could fit into the definition of services under the Act and therefore passing could be a remedy to protect domain names

Anti-cyber squatting (consumers protection) Act, 1999,USA Protection of domain names from bad faith registration. Avoiding confusion among the consumers on domain names Protection of the interest of the consumers from bad faith use and registration of TM as domain names Protection of the interest of the TM owner in having the TM as domain name. Guidelines for addressing issues concerning domain name registration, protection and dispute adjudication While adjudicating domain name dispute one has to consider: Whether there is any intention to cause confusion Whether there is any intention to gain commercial advantage Whether it is a bonafide /bad faith registration Whether it is a non commercial/fair use Whether it is distinctive/descriptive Whether it involves use of the legal name of the person

IP Appellate Board Composition: Chairman :High Court judge Vice-Chairman :Member of Indian legal service 5yrs Technical member :Member of Indian legal service for 3 yrs/civil judge for 10 years Judicial members : IPR advocate-10 yrs/judicial service for 5 yrs Jurisdiction: Original :Rectification of registration Appellate: From the decision of Registrar on registration Procedure: PNT, Rules, 2003, CPC does not apply Board can have its own procedure for the conduct of business Super Cassette Industries V. Entertainment Network Ltd (2004, 29, PTC, 8) A quasi judicial body may follow PNJ in the adjudication of matters before it.

IP Appellate Board Processes of adjudication before the Board: Aggrieved party can file appeal in tinplate Copy of the appeal shall be served on the respondent Respondent will have to file counter statement within 2 months Failing on which there is a possibility of ex-parte decision A copy of the counter statement will be served on the appellate Within two months appellate will have to give response to it Failing on which there is a possibility of dismissal of appeal Once response of the appellate is received copy of the same will be served on the respondent and the matter reaches hearing stage Hearing of the parties conducted before reaching final decision From the decision of the Board appeal may lie to High Court Limitations: No appeal can lie from the infringement/passing off actions In such cases High Courts will have jurisdiction