VISHAKA AND OTHERS V.

STATE OF RAJASTHAN AND OTHERS - LNIND 1997

SC 1081 (1997) 6 SCC 2411997 (5) SCALE 4531997 SCC Cri 932AIR 1997 SC
3011JT 1997 (7) SC 384LNIND 1997 SC 1081

Kesavnanda Bharati v Union of India

Case Law on Infringement:

Hearst Corporation Vs Dalal Street Communication Ltd., 1996 PTR 1 (Cal)
The Court held that a trade mark is infringed when person in the course of trade uses a mark
which is identical with or deceptively similar to the trademark in relation to the goods in respect of
which the trademark is registered. Use of the mark by such person must be in a manner which is
likely to be taken as being used as a trademark.

Amritdhara Pharmacy Vs Satya Deo Gupta, AIR 1963 SC 449

In the said case the test for determining the similarity in two words relevant to an infringement
action was stated by Supreme Court that: You must take the two words. You must judge them,
both by their look and by their sound. You must consider the goods to which they are to be
applied. You must consider the nature and kind of customer who would be likely to buy those
goods. In fact you must consider all the surrounding circumstances and you must further
consider what is likely to happen if each of those trade marks is used in normal ways as a trade
mark for the goods of the respective owners of the marks. If considering all those circumstances,
you come to the conclusion that there will be a confusion- that is to say, not necessarily that one
man will be injured and the other will gain illicit benefit, but that there will be a confusion in the
mind of the public which will lead to confusion in the goods-then you may refuse the registration,
or rather you must refuse the registration in that case

Differences Between Passing Off And Infringement:

The action for passing off is different from an infringement action. The action for infringement is a
statutory remedy whereas the action for passing off is a common law remedy. Accordingly, in
order to establish infringement with regard to a registered trademark, it is necessary only to
establish that the infringing mark is identical or deceptively similar to the registered mark and no
further proof is required. In the case of a passing off action, proving that the marks are identical
or deceptively similar alone is not sufficient. The use of the mark should be likely to deceive or
cause confusion. Further, in a passing off action it is necessary to prove that the use of the
trademark by the defendant is likely to cause injury or damage to the plaintiff's goodwill, whereas
in an infringement suit, the use of the mark by the defendant need not cause any injury to the
plaintiff. However, when a trademark is registered, registration is given only with regard to a
particular category of goods. Protection is, therefore, afforded only to these goods. In a passing
off action, the defendant's goods need not be the same; it may be allied or even different.

In, Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical laboratories, AIR 1965
SC 980, the Apex court held that there is certain differences between the action for passing off
and action for infringement of a trademark. In American Home Products Corpn. Vs. Lupin
Laboratories Ltd., 1996 PTR 7 (Bom), the Court held that it is well settled law that when
considering the infringement of a registered trademark. It is important to bear in mind the
difference between the test for infringement and the test in passing off action. In a passing off
action, the courts look to see whether there is misrepresentation whereas in infringement matter,
it is important to note that the Trademark Act gives to the proprietor an exclusive right to the use
of the mark which will be infringed in the case of identical mark and in the case of similar marks,
even though there is misrepresentation, infringement can still take place.

n Satyam Infoway Ltd. Vs Sifynet Solutions (P) Ltd. 2004 (6) SCC 145 it was held by the
Court that to establish an action for passing off three elements are needed to be established,
which are as follows:
(a) The first element in an action for Passing off, as the phrase passing off itself suggests, is to
restrain the defendant from passing off its goods or services to the public as that of the plaintiff's.
It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public.
The defendant must have sold its goods or offered its services in a manner which was deceived
or would be likely to deceive the public into thinking that the defendant's goods or services are
the plaintiffs.

(b) That second element that must be established by the plaintiff is misrepresentation by the
defendant to the public and what has to be established is the likelihood of confusion in the minds
of the public that the goods or services offered by the defendant are the goods or the services of
the plaintiff. In assessing the likelihood of such confusion the court must allow for the 'imperfect
recollection of a person or ordinary memory'.

(c) The third element of a passing off action is loss or the likelihood of it.

However, trade mark registration under the Act only has effect in India. To obtain trade mark
rights and protection in other countries it is necessary to use and/or register the trade mark in
those countries. Trade mark protection is territorial in nature. A separate registration will have to
be made in each of the countries where protection is desired. To obtain protection outside India,
it is necessary to file applications in the concerned countries individually. In addition you should
be careful to apply for registration in a country before you commence use of your trade mark in
that country. In some countries such as Continental Europe, China, Japan and Indonesia, the
first person to apply for registration will be given the rights to a trade mark, rather than the person
who first uses the trade mark. Therefore, another party could legitimately "steal" your trade mark
by applying for registration even if you were the first person to use the trade mark.

3. Trade Marks Disputes Involving Pharmaceuticals Industry in India-

A. Beecham Group Plc. vs. S.R.K. Pharmaceuticals 2004 (28) PTC391 (IPAB)
The appellant was using the mark ‘AMOXIL’ in India since 1990. This mark was registered in
India in 1972 in Class 5 in respect of Pharmaceutical goods. The respondent started using the
mark ‘LYMOXYL’ in India from 1985. The respondent filed the application for registration of the
mark in 1987 in India in the same class with respect to similar goods.

The appellant brought an action against the respondent stating that the mark is deceptively
similar. The only difference between the two marks is in the prefix ‘LY’ and ‘M’. The rival marks
are phonetically and deceptively similar and the goods are pharmaceutical goods under Sec.
12(1) of the Act.

The Intellectual Property Appellate Board (IPAB) held that the respondent dishonestly adopted
the mark by copying it from the appellant who had got the mark registered long ago. Hence the
respondent cannot claim honest concurrent use, by virtue of earlier use. The Appellate Board
delivered a judgment prohibiting registration of the Trade Mark ‘LYMOXYL’.

B. Ranbaxy Laboratories Limited vs. Anand Prasad & 4 Others 2004 (28) PTC 438 (IPAB)
The appellant was the registered proprietor of the mark ‘FORTWIN’ and had been using the mark
since 1975. The respondent applied for registration of the mark ‘OSTWIN’. Both the marks
related to pharmaceutical compositions in respect of treatment of bones.

The appellant brought an action against the respondent stating that the mark is deceptively
similar. The IPAB held that the prefixes are ‘FORT’ and ‘OST’ while both the marks end with the
suffix ‘WIN’. It was further held that since the rival goods are also pharmaceutical goods it might
lead to serious consequences due to deception or confusion in the minds of the public. Hence on
the possibility of harm being caused to common person the appeal was allowed.

C. Wyeth Holdings Corp. & Anr. vs. Sun Pharmaceuticals Industries Ltd. 2004 (28) PTC
423 (Bom)
In this case the plaintiff whose former name was American Cynamid Company and who was the
proprietor of the trademark ‘PACITANE’ registered the mark in Class 5 of Pharma goods. The
respondent was using the mark ‘PARKITANE’ with respect to similar goods. The plaintiffs filed a
suit for infringement and passing off and sought various reliefs including interim injunction
against the defendant for using the mark ‘PARKITANE’.

The Court held that in both the cases the goods are similar, being pharmaceutical preparations
for treatment of Parkinson’s disease, the customers buying these goods are the same and the
trade channels are the same. Since the defendants did not show any search of the Register
before adopting the impugned mark, prima facie adoption of the mark was not honest. Further,
the Court held that despite protests, if the defendants have chosen to continue to sell the
products, it cannot be said to be acquiescence by the plaintiff. Therefore the Court held that
injunction is to be granted in favour of the plaintiff.

The Court further held that in case of pharmaceutical products, the test is of possibility of
confusion and not probability of confusion. The plaintiffs have been in the field since 1950 and as
such the balance of convenience is in their favour. The Court granted injunction in favour of the
plaintiffs.

D. Hoechst Aktiengesellschaft vs. Artee Minerals & Anr. 2004 (28) PTC 470 (IPAB)
The appellant was the registered proprietor of trademark ‘ARELON’. This mark was registered in
class 5 with respect to pharmaceutical goods relating to preparation for killing weeds and
destroying vermin. The respondent filed an application for registration of the mark ‘ARTEELON’
in the same class with respect to pharmaceutical goods.

The appellant opposed the application for registration of trade mark filed by the respondents on
the ground that the registration of the impugned mark would be contrary to provisions of Sections
9, 11, 12(1) and 18 of the Trade and Merchandise Marks Act, 1958.

The IPAB held that the rival goods were same and the only difference was the letters ‘TE’. The
Appellate Board further held that the possibility of confusion and deception is not ruled out and
hence affirmed the order rejecting the application for registration filed by the respondent.

The IPAB further held that the benefit of use under Section 54 is given only in case of
rectification proceedings when use of an associated trademark is deemed to be use of the
registered trademark against which rectification proceedings are initiated for non-use of the mark.

Conclusion-
In conclusion it can be drawn that Indian Trade Mark Law must me updated on frequently
keeping in pace with the dynamic and new methods of Trade Mark infringement. Both Courts and
Enforcement authorities must be well equipped and be trained for efficient disposal of cases
relating to Intellectual Property