1.

History and meaning

The need for a law exclusively addressing trademark practice and procedure in India was again
sought for in the 19th century which eventually materialized into the Trademark Act, 1940. The
Trademark Act, 1940 predominantly reflected the provisions incorporated in the UK Trademark Act,
1938. Subsequently, in the wake of ensuing trade and commerce development, the Trademark Act,
1958 was passed to address the lacunae being witnessed in the Trademark Act, 1940. The Trademark
Act, 1958 also consolidated the provisions associated with trademarks in the Indian Penal Code,
Criminal Procedure Code and Sea Customs.
The Trademark Act, 1958 was thereafter repealed by the Trademark Act, 1999 which at present
governs trademark law and practice in India. The Trademark Act, 1999 was enacted with the intent
to revise the Act in congruity with latest developments witnessed in trading and commercial
practices, rapid globalization and for harmonization with International trade laws.

Widened Definition of Trade Mark

The Trademark Act, 1999 under Section 2 (zb) defines “trade mark” as a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one person
from those of others and may include shape of goods, their packaging and combination of colours…”

Furthermore, the Act also provided for definition of ‘mark’ under Section 2(m) which enumerates a
mark to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape
of goods, packaging or combination of colours or any combination thereof.

Two essential ingredients for Trademark registration

The Mark is Capable of Being Represented graphically– ‘Graphical representation’ has been defined
under Section 2(1) (k) of Trademark Rules, 2007 as representation of a trademark for goods or
services represented or capable of being represented in paper form and include representation in
digitized form. Such graphical representation of a trademark also encompasses within its purview
shape of goods, their packaging, combination of colours, in other words it brings within its ambit
“trade dress”.This essential requisite for qualification as a valid trademark merely implies that the
mark should be capable of being put on the register in a physical form and also being published in
the Journal. This requirement of a valid trademark was further expounded by the European
Trademark Office, wherein it elucidated two primary reasons for geographical representation a
trademark:
Enable traders to identify with clarity what other traders have applied for registration as trademark
and for what product;
Enable public to determine with precision the sign which forms the subject of trademark registration

Capable of Distinguishing Good and Services of One Person From Those of Others- The definition
of “trade mark” under Section 2(1)(zb)of the 1999 Act means a mark “which is capable of
distinguishing the goods or services of one person from those of others”. Therefore, the use of a
mark that is not capable of distinguishing the goods of such proprietor of the trade mark would not
qualify for the protection under the TM Act. This requisite of a trademark primarily enumerates that
a trademark must be distinctive i.e. it should not be devoid of a distinctive character.

Non Traditional Marks

Smell Marks- A smell is said to be one of the most potent type of human memory.
The manufacturers are adding pleasant scent to their products.
To obtain registration of smell marks the applicant must be able to visually represent the products
scent maybe by chemical formula or written description.
But smell must not be the result of the nature of goods itself eg… Chanel No 5 fragrance was denied
registration as the scent was the very nature of the product.
Examples: Dutch Companies' Tennis Ball with scent of newly mown grass; tires with the floral smell
of roses; darts with strong smell of bitter beer.
Sound Mark- Depictions usually done by oscillogram, spectrum, spectrogram, sonogram.
India’s first sound mark has been registered on 18th August 2009 in favour of California based
internet firm Yahoo inc… for its Yahoo yodel.
Taste Marks: Graphical representations using written description and an indication of the taste, the
test is however harder to satisfy.
Colour Mark: It is a powerful and effective tool to create brand identification.
Colours per se are registered as TM in exceptional cases only, when they are used extensively and
become distinctive.
Moving images, hollograms, etc

2. Owner of Trademark:
Trademark provides protection to the owner of the mark by ensuring the exclusive rights to use in to
identify the goods or services or authorize another to use it in return of payment. It works like a
weapon in the hand of registered proprietor or owner of the mark to stop other traders from unlawful
use of the mark of the registered owner. Under section 28 of the Act, the registration of a trade mark
shall give to the registered proprietor of the trademark, the exclusive right to the use of the mark in
relation to the goods in respect of which the mark is registered and to obtain relief in respect of the
trademark in the manner provided under the Act. The proprietor of a trade mark has a right to file a
suit for infringement of his right and obtain:
1. Injunction,
2. Damages,
3. Account of profits

3. Registration of Trademark:
As per section 18 (1) of the Trade mark Act, 1999, any person claiming to be the proprietor of a
trademark used or proposed to be used by him may apply in writing in prescribed manner fro
registration.
The application must contain the name of the mark, goods and services, class in which goods and
services fall, name and address of the applicant, period of use of the mark.
Steps for registration of trademark-
1. Search for the name, device, logo, and mark intended to be applied as trademark.
2. Apply for registration of trademark.
3. Examination of application by the registry. Examination report issued by the registry raising
objections under different sections of the Trademark Act, 1999.
4. Replying to the official objections and if required, ask for hearing. Applicant needs to file
evidence in support of the trademark application.
4. Advertisement of trademark in official gazette/trademark journal for the purpose of opposition
filed by the public within 3 months from the date of publication.
6. If no opposition is received, a certificate of registration is issued in favour of applicant. The
validity period of registration certificate is for ten years and after that the same can be renewed
subject to the payment of renewal fees.

4. Infringement of Trade Mark:

Infringement is a breach or violation of another's right.
Infringement of trademark means use of such a mark by a person other than the registered proprietor
of the mark.
As per Trademark Act, a mark shall be deemed to be infringed mark if:
1. it is found copy of whole registered mark with a few additions and alterations,
2. the infringed mark is used in the course of trade,
3. the use of the infringed mark is printed or usual representation of the mark in advertisement. Any
oral use of the trademark is not infringement.
4. the mark used by the other person so nearly resembles the mark of the registered proprietor as is
likely to deceive or cause confusion and in relation to goods in respect of which it is registered

Protection Against Infringement of Trade Mark:

Under section 29 of the Trade mark Act, 1999, the use of a trade mark by a person who not being
registered proprietor of the trade mark or a registered user thereof which is identical with, or
deceptively similar to a registered trademark amounts to the infringement of trademark and the
registered proprietor can take action or obtain relief in respect of infringement of trademark.

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.

The Supreme Court’s decision in the case of James Chadwick & Bros. Ltd. v. The National Sewing
Thread Co. Ltd., can be regarded as an essential obiter dicta which aided in streamlining the
interpretation of trademark infringement law in India. The Court in the case stated that in an action of
alleged infringement of a registered trade mark, it has first to be seen whether the impugned mark of
the defendant is identical with the registered mark of the plaintiff. If the mark is found to be
identical, no further question arises, and it has to be held that there was infringement.
If the mark of the defendant is not identical, it has to be seen whether the mark of the defendant is
deceptively similar in the sense that it is likely to deceive or cause confusion in relation to goods in
respect of which the plaintiff got his mark registered. For that purpose, the two marks have to be
compared.
PASSING OFF
Section 27 of the Act  recognizes common law rights of the trademark owner to take action against
any person for passing of goods as the goods of another person or as services provided by another
person or remedies thereof. The remedy made available under Section 27 of the Act protects the
rights of the proprietor of an unregistered trademark to register complaint against another person for
passing off his goods as goods the goods of proprietor. An unregistered proprietor of trademark can
also oppose an application for registration on grounds as enumerated under Section 11 of the Act.
In an action of passing off, the Plaintiff has to establish prior use to secure an injunction and that the
registration of the mark or similar mark in point of time, is irrelevant.
Lord Oliver in the case of Reckitt & Colman Products Ltd.  v.  Borden Inc. enumerated three
elements for a successful passing off action: (1) Goodwill owned by a trader, (2) Misrepresentation
and (3) Damage to goodwill.
Thus, the passing action is essentially an action in deceit where the common law rule is that no
person is entitled to carry on his or her business on pretext that the said business is of that of another.

Tests in the case of passing off– The Supreme Court in the case of Cadila Healthcare Ltd. v. Cadila
Pharmaceutical Ltd., laid down the test of passing off and observed that a passing off action depends
upon the principle that nobody has a right to represent his goods as the goods of some body. In other
words a man is not to sell his goods or services under the pretence that they are those of another
person. As per Lord Diplock in Erwen Warnink BV v. J.Townend & Sons, the modern tort of passing
off has five elements, namely
i. a misrepresentation
ii. made by a trader in the course of trade
iii. to prospective customers of his or ultimate consumers of goods or services supplied by him
iv. which is calculated to injure the business or goodwill of another trade (in the sense that this is a
reasonably foreseeable consequence), and
v. which causes actual damage to a business or goodwill of the trader by whom the action is
brought or (in a quia timet action) will probably do so.
Further in the case of Corn Products Refining Co. v. Shangrila Food Products Ltd., it was observed
that the principle of similarity could not to be very rigidly applied and that if it could be prima
facie shown that there was a dishonest intention on the part of the defendant in passing off goods, an
injunction should ordinarily follow and the mere delay in bringing the matter to Court was not a
ground to defeat the case of the plaintiff.

In 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.

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.
The difference between a passing off action and an action for trademark infringement
was expounded by the Delhi High Court in the case of Cadbury India Limited and
Ors. v. Neeraj Food Products[15] as under:
  An action for passing off is a common law remedy whereas an action for
trademark infringement is a statutory remedy.
 Passing off action in essence is an action of deceit that is, a passing off by a
person of his own goods as those of another whereas in case of infringement,
the Plaintiff on account of being registered proprietor of the disputed
trademark, claims to have an exclusive right to use the mark in relation to
those goods.
 The use by the defendant of the trademark of the plaintiff may be prerequisite
in the case of an action for infringement while it is not an essential feature of
an action for passing off.
 If the essential features of the trademark of the plaintiff have been adopted
by the defendant, the fact that the getup, packing and other writing or marks
on the goods or on the packets in which the defendant offers his goods for
sale show marked differences or indicate clearly a trade origin different from
that of a registered proprietor of the mark, would be immaterial for the case
of infringement of the trademark. The liability of the defendant for such
infringement may be absolute. In the case of passing off, the defendant may
escape liability if he can show that the added material is sufficient to
distinguish his goods from those of the plaintiff.

DECEPTIVE SIMILARITY
"Deceptively similar" trademarks can be understood as a trademark created, almost similar or a look-
alike of an already existing trademark in order to deceive and confuse the consumers. This concept
of deceptive similarity has been discussed in The Trade Marks Act, 1999 under Section 2(h) as:

"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."

The concept of deceptive similarity has been widely recognised as a ground for trademark
infringement under various trademark regimes. Under the Indian legal system as well, deceptive
similarity is consider as a ground for not granting the registration of the trademark to an applicant by
the Registrar of Trademarks.

However, the Act does not ascertain any criteria that can decide the ambit and scope of the phrase
"deceptive similarity," hence, there is a vacuum. In order to remove the vacuum, it is essential to note
the judicial stand on various cases regarding the said matter. Indian Courts have dealt with several
cases providing with landmark principles and guidelines in matters of deceptive similarity. In order
to adjudicate cases of intellectual properties and deceptive similarity, principles of phonetic and
visual similarity, goodwill, reputation, test of likelihood, etc. have been recognised as some criteria
to test deceptive similarity, by the Courts.

 M/S Lakme Ltd. v. M/S Subhash Trading

In this case, the plaintiff was selling cosmetic products under the trademark name "Lakme"
and the defendant was also selling similar products under the name "LikeMe". A case of
trademark infringement was thus filed by the plaintiff. The High Court held that the names
were not deceptively similar and are two separate marks with difference in their spelling and
appearance.
 SM Dyechem Ltd. v. Cadbury (India) Ltd.
In this case, plaintiff started a business of chips and wafers under the trademark "PIKNIK".
Later, defendant started business of chocolates under the name "PICNIC". A suit alleging
trademark infringement was filed thereafter. The Court held the marks not to be deceptively
similar as they are different in appearance and composition of words.
 Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd.
In this case Supreme Court laid down certain guidelines for adjudication of matters
concerning deceptive similarity of trademarks. In this particular case, the parties to the case
were the successors of the Cadila group. The dispute arose on the issue of selling of a
 medicine by the defendant under the name "Falcitab" which was similar to the name of a
medicine which was being manufactured by the plaintiff under the name "Falcigo". Both the
drugs were used to cure the same disease and hence, the contention was that the defendant's
brand name is creating confusion between the consumers. Injunction was demanded by the
plaintiff. As a defence, the defendant claimed that the prefix "Falci" has been derived from
the name of the disease, i.e., Falcipharam malaria.
The court observed that because of the diversified population of the country and varying
infrastructure of the medical profession due to language, urban-rural divides, etc. and with the
probabilities of medical negligence, it is important that confusion of marks should be strictly
prevented in pharmaceuticals and drugs. The Court, thereby, held that being medical products
more precaution and care must be taken and the names of the brand, therefore, being
phonetically similar shall amount to being deceptively similar.
 M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr.
In this case, plaintiff claimed that the defendant's trademark "Fauji" is defectively similar
with that of the plaintiff's, that is, "Officer's Choice". The claim was made on the ground of
similarity of idea in making of the trademarks as the word "Fauji" is a hindi translation of a
military officer. Adding to it, both the parties are in the business of alcoholic beverages.
Further, packaging of both the bottles are also alike.
Though, trade dress plays a significant role in deciding the cases of trademark infringement,
in this case, the court held that there is no deceptive similarity between the trademarks
"Officer's Choice" and "Fauji" and hence, dismissed the trademark infringement suit.

It is evident from the cases above that the courts are going beyond the literal meanings of the
legislations to provide justice and safeguarding the rights of the traders and protecting the interests of
the consumers.