PAPER IV: LAW OF TRADEMARK AND GEOGRAPHICAL INDICATIONS

1. PRINCIPLES OF TRADEMARK

1.1. Objective
Objective of the chapter is to introduce with the characteristics and significance of
Trade Mark with the details of registration and/or application procedure and different
grounds of refusals for registration, passing off, likelihood of confusion, aspects of
Domain Name and comparative information from other countries. So, this chapter
familiarizes with the concept of Trade Mark and its relevance in the trade economy.

1.2. Introduction
A rose would still smell as sweet if called something else, people might not recognize
the particular brand of flower if all of a sudden it was called something else.
According to the consumer names and other identifiers such as slogans and logos can
be very important. Brands are one of the main motivators for people’s decisions to
buy specific goods or services. Example: Levis, Nike etc
TM is a sign or symbol used to distinguish the products or services of an enterprise,
and which may be filed or registered with a competent authority, Trade Mark
Registry of respective country, for the purpose of protection. A trademark confers to
its owner exclusivity of exploitation of the said mark. In addition to trademarks
identifying the commercial source of goods or services, several other categories of
marks exist. Collective marks are owned by an association whose members use them
to identify themselves with a level of quality and other requirements set by the
association. Certification marks are given for compliance with defined standards, but
are not confined to any membership. They may be granted to anyone who can certify
that the products involved meet certain established standards. The internationally
accepted "ISO 9000" quality standards are an example of such widely recognized
certifications.
TM serves four functions – Identification, source, quality, advertising symbols –
justifying it legal protection. To be registered as trade mark, mark should be
distinctive and should be capable of graphically representation. The spectrum of
distinctiveness explains extend of distinctiveness required for mark to become TM.
On grounds of being descriptive, deceptive scandalous, libelous , likely to cause
confusion dilution of well known mark or being contrary to the law of passing off or
copyright , the registration a mark may be refused.

1.3. Justification
1.3.1. Economic justification
One of the objectives of the Tm protection is interest of the consumers. The
consumer will be able identify the required product with very little search cost.
Protection of TM facilitate consumers from being deceived by the counterfeiting
marks selling low quality products at the same time TM protection aims at
ensuring interest of TM owner by rewarding him for investment to that created a
goodwill for his product. The reputation that be TM earns among the public is
 protected by preventing activities by the competitors amount into dilution or free
riding on the reputation
1.3.2. Quality justification
A consumer identifies the product and the quality of the product through the
brand name associated with it. The quality experienced by the consumer, often
referred to as “felt quality”, leads him to the same brand and to the same product
with in expectation of experiencing the same quality – “expected quality”. Thus a
TM ensures consistency in quality of the product and retains the patronage of the
loyal customers.
1.3.3. Advertising justification
TM is a merchandising shortcut to inform, educate and persuade customers to buy
certain products. TM serves the function of in advertising symbol by providing
information about the origin, nature, and quality etc of the product. The TM
owner invests advertisement for persuading the consumers. The advertisement
may be informational or persuasive, although persuasive advertisements as well
as comparative advertisement create a lasting impression in the mind of the
consumers. The market environment created in favour of the TM owner as well as
consumers needs protection

1.4. What is a Trademark

1.4.1. Definition :
Trademark is defined 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 [s. 2 (zb)]

A Mark includes:
Device, Brand, Heading, Label, Ticket, Name, Signature, Word, Letter,
Numeral, Shape of goods, packaging, Combination of colors, and any
combination thereof. (s. 2(m))

Each of these has been understood as follows:

Device:
Refers to the pictorial representations. Objects like animal, birds,
landscape buildings fall within this category. A collection of devices may
become distinctive [device of bamboo grove or expression ‘Bans Ka
jungle’ consider distinctive whereas device of a bamboo for extract
prepared from a particular kind of bamboo considered as descriptive] . If
part of the device is distinctive and part non-distinctive, device looked as a
whole. For Ex: MacDonald's double arches, Apple computers’ bitten
apple, are some of the examples of logos, devices that have become
trademarks.  

Letter:
 As a mark is the identity created out of letterforms and has its inbuilt
strength of distinctively and individuality. 1 The letter forms have been
very useful elements for designers to work with and develop a successful
mark. Some popular examples of letter marks as trademarks are IBM, GM,
etc.
Numerals:
Can be registered as trade mark upon evidence of user. Ex: 555, 501.
Symbol:
TM can be registered as shape of brands or logos. A logo is a visual
depiction of a manufacturer or a company and gives an identity to it.
Today logos are identified by consensus as symbols that belong to a
particular company and as representing quality, elegance etc. Some
popular examples are B.M.W, Maruti - Suzuki, and Benz etc.
Brand:
Refers to those kinds of marks which are branded on the goods or services
a process of applying mark on goods constituting the trademark. It implies
that the symbols themselves constitute the trademark. For example, Cycle
brand agarbattis, etc., McDonald for restaurants, Home or Ship brand
Safety Matches.
Label and ticket:
Means a composite mark containing various features including devices,
words, usually painted on paper and attached to the goods themselves. The
label may contain apart from the trademark even matter which does not
have the trademark value. A ticket may be said to be a label attached to
goods by a string etc. However the exact distinction between label and
ticket is not very clear. Ex: Coca Cola label on the soft drink bottle.
Name:
Is the word signifying a name, surname or a personal name or an
abbreviation thereof or the name of a sect, caste or tribe? Yes, in a similar
way a particular name also signify a product or service as TM. Ex: The
name Cadbury is well known as chocolate, the name Nokia is well as
mobile handset.
Colour:
Under Section 2 of 1999 Act provides a trademark can be granted over a
color or combination of colors. However, such protection is possible only
if the color does not describe the nature of the product. For example
GREEN for eco-friendly products may not be registrable because of its
descriptive nature but green for headphones would be protectable. For
protecting a color, a written description of the color might be required by
the trademark registry. Such description can be accompanied by the
relevant code(s) from an internationally recognized color identification
system. A trademark may be limited wholly or in part to any combination
of colors and such limitation shall be taken into consideration by the
tribunal having to decide on the distinctive character of the trademark. So
far as a trademark is registered without limitation to color, it shall be
1
Boake v. Roberts v. Wayland (1909)26 RPC 249,KMS for Kalium Meta Sulphit was registered.
 deemed to be registered for all colors [Smith, Kline & French V. Sterling
Winthrop [1975] 2 All ER 57]
Sound as Trademark:
A sequence of chime-like musical notes which are in the key of C and
sound the notes G,B,C. the G being the one just below the middle C, and
the C being middle C. was registered was registered in the name of
National Broadcasting Corporation for its services of broadcasting.[Reg.
No. 916522 for Broadcasting of television programs, given to The
National Broadcasting Company] The Edgar Rice Burroughs, Inc,
registered vide No. 22210506 the famous ‘TARZAN YELL’
Del’s Lemonade and Refreshments, Inc, registered for its food carry-out
services from a mobile truck the sequence of horn-like musical notes
described in the application as “ the mark comprises a sequence of horn-
like musical notes, F, A, sounded at least twice in sequence, the notes
F+10 and A+0 being just being just above middle C”.

The ‘Roar of the Lion’ sound has been registered by the MGM Pictures.
The controversy surrounded the registerability of the sound of ‘potato’
exhaust sound from the Harley Davidson motorbikes. Signature tune has
been popular with broadcasting organizations for long. In 2001 IBM
unveiled a sound signature for its e-commerce business centers. The hoo-
hoo™ of the Pillsbury Doughboy, sounds have been favorite audio logos
or sound signatures for a brand and used by companies. The sound
trademarks are becoming popular,
Smell as Trademark:
Registration of smell is debatable. However there are instances of smell
being granted the trademark. Example; the Smell Reminiscent of Roses
Applied to Tyres, was registered as trade mark by sumitomo tyres.
Similarly the smell of fresh cut grass for the tennis ball, the smell of
plumerian buds etc.
Containers:
Fall within the definition of a mark. The two-dimensional marks are
customary and general in form for the trade usage. However, the products be
it in two or three dimensional are protectable like the other subject matter.

1.4.2 Spectrum of Distinctiveness :

The American courts have been consistently following the principles laid
down by Judge Friendly in the case of Abercrombie and Fitch Co. v. Hunting
World, Inc[537, F.2d 4, 189 U.S.P.Q. 759,769 (2d Cir. 1976) as to the
distinctiveness of a Mark before it acquires the status of a trademark.
Accordingly, the Abercrombie test [spectrum of distinctiveness] categorises
the marks into a. inherently distinctive; b. non-inherently distinctive; and c.
marks with no distinctiveness. Under the class of inherently distinctive marks,
there are Fanciful, Arbitrary and suggestive marks. Under the second class,
the court identified descriptive, geographic and personal name. In the last
category were put all generic marks. The lines of demarcation are not always
bright and have always been a case of interpretation for the Courts. The
meaning of each of these terms and the basic rules adopted by the Courts to
determine the classes of Trademarks are as follows:

1.4.2.1 Arbitrary, fanciful and suggestive marks:

The arbitrary, fanciful and suggestive marks are sometimes called “technical
trademarks.” These marks may be registered without any proof of “secondary
meaning” that is, without demonstration that the public in fact recognises
these terms or symbols as indications of the source of the goods or services.
The technical trademarks are endowed with trademark significance “ab initio”
itself. The reason behind the endowment is three factored. The first being that
the nature of the term indicates that the public will inevitably perceive it as a
trademark. The second being that one provider’s appropriation of a non
descriptive term for use as a trademark does not disable competitors from
describing their goods or services. The third being that first users and
potential competitors require certainty regarding the trademark status of the
term.

The following fall under the category of Fanciful marks;

KODAK for Photographic supplies
CUTICURA for toilet soap
CUTEX for cuticle-removing liquid
ARGYROL for antiseptic
KOTEX sanitary pads
ODOL mouthwash
POLAROID for optical devices, cameras

The following can be brought under the category of arbitrary

marks
APPLE computer
BLACK &WHITE Scotch whiskey
ICE CREAM chewing gum
MOUNTAIN compute data storage devices
NOVA television series
CAMEL cigarettes
SHELL gasoline
 The test for determining if a term is suggestive is when it requires
using imagination, thought and perception to reach a conclusion as
to the nature of the goods2. These marks are entitled for
registration without proof of secondary meaning but the same is
easier said than done as the mere proof of non-descriptiveness
itself would entail negative arguments showing that despite having
a secondary meaning the term is suggestive because of alternate
pleas in trademark litigation cases.

The following marks come under suggestive marks category

action slacks pants
at a glance calenders
chew ‘n clean dentifrice
stronghold nails

1.4.2.1.1 Descriptive marks:

A term is descriptive if it forthwith conveys on immediately to one
seeing or hearing it knowledge of the ingredients, qualities, or
characteristics of the goods or services with which it is used; whereas a
mark is suggestive if imagination, thought or perception is required to
reach a conclusion on the nature of the goods or services 3. Judge Learned
Hand aptly stated in a case of interpretation of trademark class
classification, the validity of the mark ends when suggestion ends and
description beings which itself is an issue for interpretation for the Courts.
If it is descriptive of: the intended purpose, function or use of the
goods: the size of the goods, the class of users of the goods, a desirable
characteristic of the goods, the nature of the goods, or the end effect upon
the user.
 5 minute glue which sets in five minutes
 Homemakers for family housekeeping
 international for maps and globes
 joy for perfume
 joy for detergent
 paper cutter for paper ornaments
 litter basket for trash receptacles
 quick print printing and duplication service
 savmotor for oil additive
 solar glo for sunlit signs
 TRIM for fingernail clippers
[McCarthy on Trademarks, Page 11-5]
2
Franklin Knitting Mills Ltd. V. Fashionit Sweater Mills Inc., 4 F.2d 1018 (2 Cir.1925).
3
Re Abcor Development Corp., 588 F.2d 811,813-14 quoted in In The Matter of the Application of Quick-Print Copy
Shops,Inc. 616 F.2d 523 (C.C.P.A.1980).
 1.4.2.1.2 Generic marks :

A generic term is one that refers to the genus of which that

particular product is a species. As is the case with “Apple”
although it being a generic name if used with respect to apples as
goods but with respect to computers the same has acquired a
secondary meaning, thus is protectable.
Apple would also signify an arbitrary use of a word to
goods and thus being not even suggestive leave alone descriptive
of the goods. But due to excessive marketing even an arbitrary
name as a noun instead of as an adjective in relation to a product
can become generic as and when it enters publici juris as was in
the case of nylon, cellophane tapes4 etc.

1.4.3 Grounds of Refusal of Registration :

The Trade Marks Act 1999 prescribes two grounds for refusal of
registration. They are Absolute grounds for refusal and Relative
grounds of refusal for registration under the 1999 Act.

1.4.3.1 Absolute grounds of refusal :

The absolute grounds for refusal of registration are:

a. The marks that are devoid of distinctive character, i.e.

not capable of distinguishing the goods or services of
one person from those of another shall not be
registered.[S.9(1)]

The Abercrombie test discussed above indicate the kind of

distinctiveness that is expected of the mark to be called as a
trademark. Further, this requirement ensures the source and
guarantee functions of the trademark. Simple signs, letters,
numbers and grammatical signs are considered to be devoid of
distinctive character. Simple pictorial marks like line, a square,
diamond, circle, word mark surrounded by common place borders,
general get-up [Proctor and Gamble v. Reg of TM, (1999) RPC
673], General names and signatures are not generally considered to
be distinctive.

4
Bayer Co. v. United Knitting Mills Ltd. V. Fashionit Sweater Mills Inc., 4F.2d 1018 (2 Cir.1925); Dupont Cellophane
Co. v. Waxed Products Co., 85 F. 2d 75 (2 Cir.) in the case of cellophane tapes
 b. The marks that consist exclusively of marks or
indications which may serve in trade to designate the
kind, quality, quantity, intended purpose, value,
geographical origin or the time of production of the
goods or services shall not be registered. [S.9(1)]

The descriptive marks do not qualify as trademarks.

Examples of those that indicate the Kind, quality, quantity are:
TREAT for desert sauces, FRUIT LOOP for cereals, LASTING
PERFORMANCE for perfumes.
Examples for Intended purpose: PERFECT BROW for cosmetics
held descriptive: FOODSAVER for vacuum packing machine.
Examples of geographical names: EUROLAMB for meat was
refused registration while MAGNOLIA for metallic was permitted
and FARAH for clothes was permitted. However, SIMLA for
cigarettes was refused
Time of production/rendering service: marks meaning
CENTURIES, DECADES-NINTIES, YEARS-A.D, PUBLIC
HOLIDAY—HAPPY CHRISTMAS would become descriptive
and hence likely to be rejected.

c. The marks which consist exclusively of marks or

indications which have become in the current language
or in the bonafide and established practices of the trade
shall not be registered. [S.9(1)]

The generic marks are those that refer to a genus or type of product
rather than particular product originating from particular source.
Some of the trademarks have become generic by associating
themselves with the products themselves, like Aspirin, Cellophane,
gramophone etc.

1.4.3.2 Acquired Distinctiveness / Secondary meaning

However if the marks that are devoid of distinctive character and

those of descriptive nature may be registered if it has acquired a
distinctive character as a result of the use made of it or is a well-
known trademark. There will have to be an inquiry into the
customer perception. On the question whether there must be
displacement of the primary meaning of the mark, there two
different opinions. One view states that unless the word has in
practice displaced its ordinary meaning, it will not properly denote
the trader’s goods and none other. Whereas the other view is that
the mark may become distinctive even when primary meaning is
not displaced. As regards the extent of recognition by the
customers, there is no unanimity by the courts. The evidence that
support the transformation of the non-distinctive into distinctive
marks are length of use, volume of goods marketed, extent of
service provided, use of an advertising slogan, use in combination
with other marks, advertising expenditure, evidence of trade and
consumer surveys. All or any of these would prove that the marks
have acquired distinctive character. On the whole the proof would
indicate that the mark has acquired a ‘secondary meaning’
Proof of secondary meaning is not necessary to establish
legal protection for all kinds of trademarks. Marks that are
inherently distinctive are regarded as capable of functioning
immediately upon use as a symbol of origin - that is, as a
“trademark”. Inherently distinctive marks are given legal
protection immediately upon adoption and use. Neither fanciful,
arbitrary nor suggestive marks require secondary meaning for legal
protection. Those types of marks are treated as being inherently
distinctive because of their nature. In a sense, they are irrebuttably
presumed to have achieved customer recognition and association
immediately upon adoption and use.

The general rule regarding distinctiveness is clear: an

identifying mark is distinctive and capable of being protected if it
either (1) is inherently distinctive or (2) has acquired
distinctiveness through secondary meaning. If a given symbol or
word is not inherently distinctive, it can be registered or protected
as a mark only upon proof that it has become distinctive. This
acquisition of distinctiveness is referred to as “secondary
meaning”. The symbols that are not inherently distinctive,
acquisition and priority of ownership is determined by looking to
when, where and how secondary meaning was established in the
symbol. Marks that are merely descriptive of a product are not
inherently distinctive. When used to describe a product, they do
not inherently identify a particular source, and hence cannot be
protected. However, descriptive marks may acquire the
distinctiveness which will allow them to be protected under the
Act. In general, to establish trademark infringement or unfair
competition, the law has traditionally required proof of two basic
elements: (1) Validity: that the public recognizes plaintiff's symbol
as identifying his goods or services and distinguishing them from
those of others, and (2) Infringement: that defendant's actions
cause a likelihood of confusion among the relevant buyer class.
Element (1) could be shown in either of two ways: (a) that
plaintiff's symbol was inherently distinctive, or (b) that even if not
inherently distinctive, the symbol has become distinctive through
the acquisition of “secondary meaning”.
d. The trademark is of such a nature as to deceive the public or
cause confusion shall not be registered. [Section 9(2)]

The marks containing false or misleading words or

statements do not get registration. For example the word
ORLWOOLA was considered to be descriptive of goods of
wool and deceptive of goods not made of wool. LITERAC
that is phonetically similar to ‘light track’ considered
deceptive when used in relation to electric welding
apparatus. CHINA-THERM refused for containers and
cups because there are chances of people mistaking that
they are made in china [1980, FSR, 21]

In Amritdhara Pharmacy v. Satya Deo Gupta [AIR

1963 SC 449] the respondents filed application for
registration of “Laxmandhara” for their biological
medicinal preparations. Amritdhara pharmacy opposed and
the Registrar held it to be deceptive and allowed
registration for sale of the product under the name in Uttar
Pradesh only. The High Court stated that there is no
confusion as the words amrith and dhara mean nectar and
flow respectively whereas laxman and dhara mean laxman
of Ramayana and flow respectively. The Supreme court
held that the point is to be approached from the point of
view of a man of average intelligence and imperfect
recollection. ‘Dhara’ by itself is not decisive. Overall
similarity of composite word is to be considered as the
customer of average intelligence and imperfect recollection
would go more by phonetic and structural similarity. The
court restored the Registrar’s orders. The registration for
the purpose of sale with Uttar Pradesh was allowed because
of the ‘honest concurrent’ user.

In Hoffman La Roche and Co., Ltd v. Geoffrey

Manners and Co. Pvt Ltd., [AIR 1970 SC 2067] the
appellant had registered ‘PROTOVIT’ and the respondents
‘DROPOVIT’. The application for rectification refused on
the ground they are not deceptively similar and not
descriptive. The Supreme Court cited Lord Denning in
Parker Knoll v. Knoll International Ltd.,” to deceive is one
thing and cause confusion is another. ..when you deceive a
man, you tell him a lie. You make a false representation to
him and thereby cause him to believe a thing to be true
which is false. You may not do it knowingly, or
intentionally, but still you-do it, and so you deceive. .. you
cause confusion without making any false representation to
him. You may indeed tell him the truth, the whole truth and
nothing but the truth, but still you may cause confusion in
his mind, not by any fault of yours, but because he has not
the knowledge or ability to distinguish it from the other
pieces of truth known to him or because he may not even
take the trouble to do so” The court said that it is necessary
to apply both the visual and phonetic tests. The word
DROPOVIT was held to be not a descriptive word but an
invented word. The court held that the letters “D” and “P”
in DROPOVIT and the corresponding letters “P” and “T”
in PROTOVIT cannot possibly be slurred over in
pronunciation and the words are so dissimilar that there is
no reasonable probability of confusion between the words
either from the visual or phonetic point of view.

e. If the trademark contains or comprises of any matter

likely to hurt the religious susceptibilities of any class or
section of the citizens of India it shall not be registered.
[Section 9(2)]

Hallelujah: [praises the Lord, song of praise to God]

[1976 RPC 605] refused for clothing as affecting generally
accepted mores of the time.

f. If the trademark comprises or contains scandalous or

obscene matter it shall not be registered. [Section 9(2)]

g. If the use of trademark is prohibited under the Emblems

and Names (Prevention of Improper Use) Act, 1950 it shall
not be registered. [Section 9(2)]

h. If the trademark consists exclusively of the shape of

goods which results from the nature of the goods
themselves it shall not be registered. [Section 9 (3)]
Example: apple design to package of apples, round shape
for the tennis ball.

i. If the trademark consists exclusively of the shape of

goods which is necessary to obtain the technical results
[Section 9 (3)]
 In Coca-Cola Co’s Applications [1986, RPC 421], the
House of Lords had held that an article of a distinctive
shape such as a container or a bottle could not be registered
as a trademark as the function of the 1938 Trademark
Act was to protect a distinctive mark and not the article
marked. In Koninkijke Phillips Electronics NV v.
Remington Consumer products Ltd, [ECJ, 18 June 2002,
Lawtel] Phillips which had been marketing its three header
electric shaver called phillishave had registered the
graphical representation of the shape and configuration of
the head of the shaver as a trademark on the basis of use.
Remington began to manufacture and sell its DT 55 shaver,
a three-headed rotary shaver whose blade heads were
arranged in an equilateral triangle, similar to that used by
Phillips. Phillips sued Remington for infringement of its
trade mark and Remington counter-claimed for revocation.
The High Court ordered revocation. It held that the mark
lacked distinctive character and consisted exclusively of a
sign which served to designate intended purpose of the
goods and of a shape that was necessary to obtain a
technical result. Court of Appeal, after staying, referred the
matter to the European Court of Justice. European Court of
Justice gave its opinion on the four issues raised by the
court of Appeal. It said that there was no class of marks
having a distinctive character by their nature or by the use
made of them which was not capable of distinguishing
goods or services. In order to be capable of distinguishing,
the shape of the article in respect of which the sign is
registered does not require any capricious addition, such as
an embellishment. Responding to the final question, the
Court stated that a sign consisting exclusively of the shape
of a product is unregisterable by virtue thereof if it is
established that the essential functional features of that
shape are attributable only to the technical result. It further
said that the ground for refusal or invalidity of registration
imposed by that provision cannot be overcome by
establishing that there are other shapes which allow the
same technical result to be obtained.

j. If the trademark consists exclusively of the shape of

goods which gives substantial value to the goods it shall not
be registered. [Section 9 (3)]

1.4.3.3 Relative grounds of refusal

 A trademark shall not be registered under the following
circumstances:

a. If there exists a likelihood of confusion including likelihood of

association with the earlier trademark, by reason of the fact of
the trademark being identical with the earlier trademark and
similarity of the goods or services; or being similar to the
earlier trademark and identical or similar goods or services.
[S.11(1)]

Lord Parker in Pianotist Co. Ltd’s application [(1906) 23

RPC 774] stated about the tests for comparison of the two
word-marks as follows: “you must take the two words. You
must judge of 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…”

While considering whether a mark is identical, the added or

extraneous matter is generally ignored. For example:
TREAT and ROBERTS TOFFEE TREAT. While
determining the similarity of the marks, the oral, visual and
conceptual similarity will have to be considered. In
addition, the distinctive and dominant components are
looked into. The similarity varies with circumstances.
Words having common suffix or prefix might look similar
if the remaining parts are similar, relative emphasis given
to other parts. EX: TURBOGAZ and TURBOTORCH are
similar; MOLIVAR and BOLIVAR for cigarettes,
TREVICOL and FEVICOL, VIMCO and SIMCO,
ESQUIRE and EWQUARE. Similarity may occur because
of slurring of syllables. Ex: BALI and BARLEI. Similarity
may be by reason of translation, such as REDFORT and
LAL QILA. Similarity may be by reason of one mark
containing the whole of the other. Ex: FROLLICK and
ROLLICK for ice-cream, CONSOLETTE and CONSOLE
for gramophones. Expressions may have common words
like RUSTOM INDIA and RUSTON, STARDUST and
STARMIST. If the earlier mark is highly distinctive, then in
the absence of substantial modification, subsequent mark
might remain similar. For ex: the word VAPORUB on
Vicks chemical company’s products was so distinctive that
the use of VAPOR RUB along with KARSOTE by
Decardova was still considered to be similar and leading to
 confusion among the consumers. [De cardova v. Vicks
Chemical Co 1951 68 RPC 103

For determining the likelihood of confusion, the standard

of ‘consumer with average intelligence and imperfect
recollection’ is being applied. The ‘first impression’ that
consumer may have is to be considered.

Summary of the Principles:

a. Main idea or salient features considered.

b. Marks remembered by general impression or by some
significant detail rather than by a photographic
recollection of the whole.
c. Overall similarity is the touchstone.
d. Marks must be looked at from the view of first
impression of a person of average intelligence and
imperfect recollection
e. Overall structure, phonetic similarity and similarity of
idea are important and both visual and phonetic test to
be applied.
f. Marks must be compared as a whole, microscopic
examination being impermissible.

b. If the earlier trademark being a well-known trademark and the

trademark sought to be registered is identical with or similar to
an earlier trademark and the goods or services are dissimilar
and the use of the mark would take unfair advantage of or be
detrimental to the distinctive character or repute of the earlier
trade mark. {S.11 (2)}

This rule is a reflection of what is called the ‘Doctrine of

Dilution’. This doctrine prevents the weakening or reduction of
the ability of a mark to clearly and unmistakably distinguish
one origin of goods or services for the other and protects the
distinctiveness of a mark.5 Dilution has two dimensions:

i. Blurring: This is the classic or traditional impact

of dilution. The unique and distinctive
significance of the mark to identify and
distinguish one source may be diluted and

5
The doctrine of dilution as a separate basis for protection of trademarks originated in Britain and Germany and was
introduced into the United States through the writings and Congressional testimony of Frank Schechter.
 weakened. There is no confusion as to source,
sponsorship, affiliation or connection.6
ii. Tarnishment: Here, the effect of the junior mark
is to tarnish, degrade, or dilute the distinctive
quality and reputation of the senior mark. The
junior mark is used on a product or in a context
which degrades the reputation of the mark
established by the senior user or is totally
dissonant with the image projected by the senior
mark.7

Dilution is independent of source confusion and applies

even in the absence of the latter. It is based on the principle
that the primary purpose of the trademark today is the
creation and retention of custom, rather than designation of
source, and that the preservation of the uniqueness of
individuality of the trademark is of paramount importance
to its owner. It is concerned with protection of property in
the “trademark”.8

For determining a mark as a well-known mark the registrar

shall take into account any fact which he considers relevant
such as
i. the knowledge or recognition of that trademark in the
relevant section of the public including knowledge in India
obtained as a result of promotion of the trademark;
ii. the duration, extent and geographical area of any use of
that trademark
iii. the duration, extent and geographical area of any
promotion of the trademark, including advertising or
publicity and presentation, at fairs or exhibition or the
goods or services to which the trade mark applies
iv. the duration and geographical area of any registration or
any publication for registration of that trademark under the
Trademark Act to the extent they reflect the use or
recognition of the trademark;
v. the record of successful enforcement of the rights in that
trademark, in particular, the extent to which the trademark
has been recognized as a well-known trademark by any
court on Registrar under that record. [S. 11(6)]
vi. the number of actual or potential consumers of the
goods or services
6
See Tiffany and Co. v. Boston Club Inc., 231 F. Supp. 836; Sally Gee Inc v. Myra Hogan Inc., 699 F. 2d 621; Mead
Data Cent Inc. v. Toyota Motor Sales Inc, 875 F. 2d 1026
7
See Bean Inc v. Drake Publishers Inc., 811 F. 2d 26; Coca Cola Co v. Gemini Rising Inc., 346 F. Supp 1183
8
See Thomas McCarthy, Trademarks and Unfair Competition § 24: 70 124-5 (St. Paul, Minn: West Group, 1996)
 vii. the number of persons involved in the channels of
distribution of the goods or services.
viii. the business circles dealing with the goods or services
[S.11(7)]

c. If the use of trademark in India is liable to be prevented

because of any law protecting an unregistered trademark used
in the course of trade or because of law of copyright [S.11(3)]

2 PROCEDURE FOR OBTAINING REGISTRATION OF

TRADEMARK:

2.1 General principles in application

The Trade & Merchandise Mark Act, 1958 has been revised and replaced by the
Trade Mark Act, 1999. The process started as it was felt that a comprehensive
review of the 1958 Act be made in view of new developments in trading and
commercial practices, increasing globalization of trade and industry.

The Trade Marks Bill, 1993 was introduced in the Lok Sabha on 19.5.1993, which
was passed by the Lok Sabha on the lines recommended by the Standing
Committee. However, as the Bill failed to get through the Rajya Sabha, it lapsed
on the dissolution of the Lok Sabha. A new Bill titled as Trade Marks Bill, 1999
(Bill No.33 of 1999) was introduced in Rajya Sabha and eventually passed by
both the Houses of Parliament. The Bill received the assent of the President on
30.12.1999 and became an Act.

Examiners should be careful to ensure that they do not assume that a mark is not
registrable prima facie just because one or more earlier applications of a similar
nature have been either refused under old law (as not adapted to distinguish, in
spite of evidence) or were allowed to proceed only on the basis of evidence of
acquired distinctiveness. The test of registrability under the current law is very
different from the old law. The law is greatly simplified so that many marks are
registrable today that would have been refused registration under the old law.
Therefore applications must be judged against the current standard of
registrability under new law.

2.2 Procedure on receipt of application

The application must be finalized in the office of the Trademarks Registry within
whose territorial limits the principal place of business in India, of the applicant is
located. After application for registration of a trademark is complete the same is
sent for examination.
 Examination of Trade Mark application will cover examination as to compliance
with–
1. Filing requirements governed by procedure prescribed under the Trade
Marks Act and Trade Marks Rules
2. Substantive requirements for registrability of the mark
In particular, the official assigned examination duties will scrutinize the
application as to-
1. whether the application has been filed in the manner as prescribed in the
Trade Marks Rules 2002
2. whether any same/similar mark in respect of same/similar goods/services is
there on record
3. whether the trademark applied for registration can be accepted for
registration under the Trade Marks Act 1999
4. whether any restriction, condition or limitation is required to be imposed.

The Examiner (includes a Senior Examiner) doing the examination work will give
a consolidated ‘Examination Report’ mentioning the objections (if any) as to the
acceptance of application for registration; or as the case may be, forward a
proposal to accept the application with or without any restriction, condition or
limitation on the use of trademark. A computer generated ‘Search Report’ short
listing conflicting marks on record will be attached with the Examination Report.
The examiner will mention all existing deficiencies in the application and will
raise all applicable objections to the acceptance of application for registration of
trademark. The applicant (it includes the applicant’s authorized agent) is required
to respond to the Examiner’s objection(s) within a period of one month from the
date of receipt of Examination Report. The reply to the Examination Report
together with evidence of use of the trademark in India and other documents
attached with the reply will be duly considered. In case the objections cannot be
waived an opportunity of a Hearing will be given to the applicant. The application
will thereafter be accepted with or without any restriction, condition or limitation
on the use of trademark; or as the case may be, it will be refused for registration.
The decision as to acceptance or refusal of the application will be communicated
to the applicant. The accepted application will thereafter be advertised in the
Trade Mark Journal

2.3 Acceptance & Advertisement

Where an application is Advertised before Acceptance and there is no opposition,

it is a necessary statutory requirement that the application should be accepted on
the file by the Registrar or an authorized officer before the mark is allowed to be
registered. Section 20 of the Trade Marks Act 1999 states that- When an
application for registration of a trade mark has been accepted whether absolutely
or subject to conditions or limitations, the Registrar shall, as soon as may be after
acceptance, cause the application as accepted together with the conditions or
limitations, if any, subject to which it has been accepted, to be advertised in the
prescribed manner: Proviso to section 20 enables the Registrar to cause an
application for registration of trade mark to be Advertised Before Acceptance if it
 relates to a trade mark to which subsection (1) of section 9 and sub-sections (1)
and (2) of section 11 apply. Such a course can also be adopted by the Registrar in
any other case where it appears to him to be expedient “by reason of any
exceptional circumstances so to do”.

It is felt that this provision should not be routinely used by the Examiner to
advertise trade marks even in cases where there is strong objection to the
registration of the mark under section 9 or 11. After advertisement if there is no
opposition the mark may generally proceed to registration. Thus, the provision for
Advertisement Before Acceptance, as the law itself enacts, should be invoked in
“exceptional circumstances” . Where the Examiner finds strong evidence of
bonafide commercial adoption and use of the mark, the Examiner or the Hearing
Officer may “Accept” the application and order the mark to be advertised “as
accepted”. A cross notice may be issued to the registered proprietor or the prior
applicant in suitable cases or when there is request on form TM-58. This will
enable him to oppose the registration, if he chooses to do so.
Section 19 enables the Registrar to withdraw acceptance of an application in error
or in circumstances that the trade mark should not be registered or should be
registered
subject to conditions or limitations

2.4 Opposition

The individual application are vital, it is to be noted that ‘Precedents’ are of great
value, though not decisive.
A Notice of Opposition to the registration of a trade mark must be given within
three months from the date of advertisement or re-advertisement of the
application in the
Trade Marks Journal or within such further period not exceeding one month in the
aggregate as the Registrar, on application made to him on Form TM-44 may allow
[(See Rule 47(6)].
Section 11(3) provides as follows:
A trade mark shall not be registered if, or to the extent that, its use in India is
liable to be prevent by virtue of any law in particular the law of passing off
protecting an unregistered trade mark used in the course of trade; or by virtue of
law of copyright. Objection under section 11(3) call for evidence of facts from
which it could be properly concluded that normal and fair use of the trade mark
for the purpose of distinguishing the goods/services of the applicant from those of
others was liable to be prevented at the date of application for registration of the
later mark by enforcement of rights in a passing of action or under copyright law.
Section 91 of the Trade Marks Act, provides for an appeal against an order or
decision of the Registrar to the Intellectual Property Appellate Board (IPAB). In
some cases, parties may also invoke the writ jurisdiction of High Courts. It is
obvious, therefore, that whenever the Registrar or any officer acting for him
passes an order as a tribunal under the Act it should be a reasoned and a speaking
order.[See Rule 40 of Trade Marks Rules, 2002].
 In this reference, the principle laid down by the Supreme Court, “The Court
insists upon disclosure of reasons in support of the order on two grounds – one,
that the party aggrieved in a proceeding before the High Court or this Court has
the opportunity to demonstrate that the reasons which persuaded the authority to
reject its case were erroneous; the other, that the obligation to record reasons
operates as a deterrent against possible arbitrary actions by the executive authority
invested with judicial power” (Travancore Rayon v. Union of India AIR 1971 SC
862, at p.866)

2.5 Procedural formalities

The examination of trade marks for acceptability under the Trade Marks Act
1999 must be by reference to the provisions of that Act and Rules structured there
under taking into account the recognized practice of the Registry and the law as
laid down or approved by the Intellectual Property Appellate Board (IPAB) and
by Courts in India which is binding on the Registrar.
India accepted the International Convention for Protection of Intellectual Property
and TRIPS Agreement, the administration of the Act will need to be in harmony
with international practice. Accordingly, European Trade Mark Reports
(ETMRs), Fleet Street Reports (FSRs) the US Trade Marks Reports will continue
to be followed by India. The Registry in India broadly matches up with the
practice existing in the U.K.
An Application for registration of registered user will be filed by the registered
proprietor and proposed user jointly on form TM-28 along with the prescribed
fees together with the following documents.
1. Agreement in writing between the registered proprietor and proposed user or
duly authenticated copy thereof with respect to the permitted use of the trade
mark. It is to be noted that in terms of sub-rule (4) of Rule 80 no application will
be entertained unless the same has been filed within 6 months from the date of
agreement.
2. Document and correspondence, if any mentioned in the agreement or
authenticated copies thereof
3. An affidavit of the registered proprietor or by some person authorized,
testifying to the genuineness of the documents accompanying the application.
Section 50(1)(d) empowers the Registrar to cancel the registration of a registered
user of his own motion or on an application of any person on the ground that any
stipulation in the agreement regarding the quality of goods/services is either not
being enforced or not being complied with. Section 47 provides two alternative
grounds for removal of mark on ground of non-use. Correction or amendment
similar to those envisaged by section 58(1) in respect of registered trade mark is
contemplated under sub-section (2) in respect of the registered users. Such as, a)
any error in the name, address or description of the registered proprietor of a trade
mark, or any other entry relating to the trade mark; b) any change in the name,
address or description of the person who is registered as proprietor; c)
cancellation of the entry of a trade mark; d) striking out of any goods or classes of
goods or services in respect of which the mark is registered. Rule 91 prescribes
the procedure for the purpose. Section 59(1) expressly prohibits any addition or
 alteration in a manner substantially affecting the identity of the registered trade
mark. Section 25(4) provides for restoration of removed trade mark to the register
and its renewal upto one year after the expiration of the last registration. In such
cases, the request has to be made on form TM-13 along with prescribed fees plus
the applicable renewal fees otherwise sub-section (3) of section 25 enables the
registered proprietor to get the registration renewed for a period of 10 years, on an
application made in the prescribed form (TM-10) and payment of prescribed fee
and surcharge within six months from the expiration of last registration.

2.6 Registration of Certification Marks

Sections 69 to 78 of the Act deal with registration of certification trade mark. The
purpose of a certification trade mark is to show that the goods or services in
respect of which the mark is used have been certified by some competent person
in respect of certain characteristics such as Origin, mode of manufacture, quality
etc Section 2(1)(e) defines certification trade mark to mean “a mark capable of
distinguishing the goods or services in connection with which it is used in the
course of trade which is certified by the proprietor of the mark in respect of
origin, material, mode of manufacture of goods or performance of services,
quality, accuracy or other characteristics from goods or services not so certified
and registrable as such under Chapter IX in respect of those goods or services in
the name as proprietor of the certification trade mark, of that person”.
Section 70 of the Act makes it clear that the proprietor of a certification trade
mark should not himself carry on a trade in the goods of the kind certified or a
trade of the provision of services of the kind certified. Besides, the certifying
authority who may be an individual or a company or association of persons
should be competent to certify the goods in respect of origin, material, mode of
manufacture or performance of services, quality, accuracy or other characteristics

a) Application for registration should be made on form TM-4 or TM-65, TM-

68 or TM-69 as the case may be accompanied by prescribed fee.
b) Draft regulation in triplicate to be deposited under section 64 along with
TM-49.
c) File a Statement of Case in triplicate under rule 136

2.7Registration of Collective Marks

Special provisions have been made for registration of collective marks in section
61 to 68 of the Act. “Collective mark” is defined to mean a trade mark
distinguishing the goods or services of members of an association of persons (not
being a partnership within the meaning of Indian Partnership Act, 1932 ) which is
the proprietor of the mark from those of others”- section 2(1)(g). To be register
able, the collective mark must be capable of being represented graphically and
meet other requirements as are applicable to registration of trade marks in general.
The points to be noted by the Examiner in such cases are –
(1) The collective mark is owned by an association of persons not being a
 partnership.
(2) The collective marks belong to a group and its use thereof is reserved for
members of the group .
(3) The association may not use itself the collective mark but it ensures
compliance of certain quality standards by its members who may use the
collective mark.
(4) The primary function of a collective mark is to indicate a trade connection
with the association or organization who is the proprietor of the mark.

Application for registration as collective mark should be made on form TM-3.

Where appropriate form TM-66 , 64 or TM-67 will be used. The draft regulations
governing the use of the collective mark is to be submitted with the application on
form
TM-49. It shall include –
a) the name and object of association
b) the persons authorized to use the mark and the nature of control the
applicant would exercise over the use
c) The condition of membership of association
d) Conditions of use of the mark
e) Sanctions against misuse
f) Procedure for dealing with appeals against the use of collective marks The
Rules 127 to 133 of the Trade Marks Rules, 2002 make special provision in this
context. It is expressly provided that provisions of the Trade Marks Act will
apply to collective marks subject to the special provisions contained in Chapter 8.
Accordingly, the examination of an application for registration of collective mark
will also be subject to the same standards as applicable to registration of trade
mark in general subject to the additional requirements to scrutinize the draft
regulations governing use of the collective mark and statement of case filed under
rule 129. In the case of acceptance of the application subject to conditions or
limitations the provisions of rule 38(4), 39, 40, 41 and 42 will be applicable.

2.10 Brief Summary

This chapter gives a detailed outlook to the concept of trademark together with
the significance of protecting it in the light of different rationales. Different
concepts of trademark like the concept of secondary meaning/ acquired
distinctiveness, concept of dilution, concept of likelihood of confusion etc. are
discussed in detail. The chapter also details the procedure in obtaining the
registration of trademarks. The relevant forms for obtaining registration of
trademarks are also given at the end of the chapter.

2.11 Self-Evaluation Questions

1. X advertised its product, mineral water by comparing it with another famous

trademarked mineral water. Whether comparative advertisement is allowed, and to
what extent. Analyze the position in different jurisdictions in the light of decided
case laws.

2. Whether smell and sound can be registered as trademarks. Examine in the light
of statutory provisions and case laws.
3. RIGHTS OF THE OWNER OF TRADEMARKS

3.1 Objective:
In this unit, we will see how the concept of trademark has changed with rapid global
industrialization. Trademark has taken a turn where it not only represents the goodwill
attached to the goods, but is now also invested in the form of grant of licenses,
assignments, etc.

3.2 Introduction:

Rights in trademark arise the minute it is registered. The status in U.S. is different in this
aspect. We shall in the unit, see how and to what extent it is different. Based on the
rights, the infringement can be claimed. The main concept that one has to bear in mind
while dealing with trademark is that Courts interpret whether there is consumer confusion
with regard to the origin of the goods and services.

3.3 Rights of a Trademark Owner:

The protection of the trademark is based on the principle of the protection of the
reputation and goodwill of the trademark owner which the trademark owner acquires
through constant and exclusive use. The law seeks to protect the established trademark
of a person from being violated by another by not permitting any others to use the
trademark. Besides through use, rights in a trademark can be obtained by registration, by
permission or by license or by assignment.

To claim right in a trademark, it is not necessary that the trademark should be used for a
definite period of time. Even a single use of the trademark with an intention to use it
continuously is sufficient. The right of property that is acquired in a trademark is based
on the association of the mark in question with the goods or services.

Section 28 of the Trade Marks Act, 1999 deals with the rights conferred by registration.
This section corresponds with Section 28 of the Trade and Merchandise Marks Act, 1958.
According to this Section, on the valid registration of a trademark, the trademark owner
gets the exclusive right to use the trademark in connection with the goods and services in
respect of which it is registered and he can also obtain relief in respect of infringement, if
one invades his right by using a mark which is the same or deceptively similar to his
trademark.

 Also the rights conferred under Section 28 of the Act are subject to
various limitations like,
 the rights can be challenged on the ground that the registration is not
valid9,

9
Section 28(1) of the Trade Marks Act, 1999
  the exclusive right to use the trademark is subject to conditions and
limitations to which the registration is subject10,
 the exclusive right conferred by registration will not operate against
persons who are registered proprietors of identical or similar marks 11,
 the registered user cannot interfere with or restrain prior user of the same
or similar trade mark provided the mark must have been used from a date
prior to the use of the registered trade mark, or its date of registration,
whichever is earlier, the prior use claimed must be by the proprietor by
himself or his predecessor in title and the claimed use must be
continuous12,
 the registered user cannot interfere with or restrain honest concurrent use
of the same or similar trademark13, and
 the registered proprietor cannot interfere with any bonafide use by a
person of his own name or that of his place of business, or the use of any
bonafide description of the character or the quality of his goods 14.

The exclusive right of the owner of the trademark to sue for infringement of
trademarks is subject to certain limitations15 like,
 the use of the mark in accordance with honest practices in industrial or
commercial matters,
 the use not as such to take unfair advantage of or be detrimental to the
distinctive character or repute of a trademark,
 the use in relation to goods or services to indicate the kind, quality, quantity,
etc. of the goods or of rendering of services,
 the use of the trademark in a manner outside the scope of registration where a
trademark is registered subject to conditions or limitations,
 the person using the mark in relation to goods or services for which the
registered owner had once applied the mark, and had not subsequently
removed it or impliedly consented to its use,
 the trademark being registered for any goods it may be used in relation to
parts and accessories to other goods, or services and such use is reasonably
necessary and its effect is not likely to deceive as to the origin, and
 the registered trademark being one of two or more registered trademarks
which are identical or similar, in exercise of the right to the use of that
registered trademark.

A trademark is based on the use of a mark in relationship with certain goods and
services in commerce. The basic principle for granting protection for trademark
is that the public come to associate the mark with the said goods and services.
They rely on that mark and the goodwill and reputation attached with it in its
purchasing and consuming decisions. Hence, it is implied that the trademark
owner should have the monopoly to use it exclusively on his own without any
external encroachment. This can be provided only if the statute guarantees the

10
Section 28(2) of the Trade Marks Act, 1999
11
Section 28(3) of the Trade Marks Act, 1999
12
Section 34 of the Trade Marks Act, 1999
13
Section 12 of the Trade Marks Act, 1999
14
Section 35 of the Trade Marks Act, 1999
15
Section 30 of the Trade Marks Act, 1999
 right to use exclusively use the mark and to approach the appropriate authority in
case of infringement of the rights of the trademark owner.

3.4 Transfer of Trademarks:

An assignment of a trademark must be in writing by act of the parties

concerned.16 No specific form has been prescribed for the purpose.
“Transmission” means transmission by operation of law, devolution on the
personal representative of a deceased person and any other mode of transfer, not
being assignment.17

Under the Trademark Act 1999 there can be a transmission of unregistered

trademark with or without goodwill of the business concerned. 18 This is also
called the assignment “in gross”. Certain restrictions on assignment and
transmission are imposed to prevent the creation of multiple exclusive rights. 19
Where there is assignment of a trademark that has goodwill, there are special
conditions that have been imposed. 20 The associated trademark can be assigned
as a whole.21 The certification trademark cannot be assigned or transmitted
without the consent of the Registrar of trademarks 22

3.4.1 Assignment and License of Trademarks

3.4.1.1 Assignment of Trademarks :

Essentials of assignment

Assignment has to necessarily be in writing and in the prescribed form with the
consent of the registrar.23 An oral assignment is not a valid form of transfer. The
power to assign is given to the “person for the time being entered in the register
as proprietor of trademark”. An assignment has to be made for a consideration
and the quantum or nature of the consideration is immaterial. After an
assignment is done it has to be registered and then advertised according to the
directions of the Registrar and within the prescribed time. 24 Registration is
compulsory.25 This is applicable only where the marks have already been used.
This is because no public confusion could follow the assignment of unused marks
and hence advertisement is not necessary. 26 Section 39 stipulates prior use of a
trademark for assignment without goodwill of the business.

16
Section 2(1)(f).
17
Section 2(1)(ac).
18
Section 37.
19
Sections 40 and 41.
20
Section 42.
21
Section 44.
22
Section 43.
23
Section 43.
24
Section 42.
25
Section 28(1) and Section 45..
26
Reuter v. Mulhens (1953) 70 RPC 102 at 249.
Limitations on assignability of exclusive rights

In transactions where there is creation of multiple exclusive rights, questions

arise whether the similarity of the trademarks assigned and the similarity of the
goods for which they are assigned is likely to deceive or cause confusion amidst
the people concerned. If there is any confusion then it invalidates the assignment
under Section 40. In such cases, the proprietor may, under section 40 (2) submit a
statement to the Registrar setting out the circumstances and the registrar may
issue to him a certificate stating whether the proposed assignment would or
would not be invalid. Also as per this section, such certificate is subject to appeal
and unless it is shown that it was obtained by fraud or misrepresentation, is
conclusive regarding validity or invalidity under section 40 in so far as the
question depends upon the facts of the case. A certificate in favour of validity
will be conclusive only if an application for registration under section 45 of the
assignee’s title is made within six months from the date of issue of the certificate.

The splitting of a trademark on a territorial basis is not permitted as can be seen

from Section.40, under which the assignment or transmission of a trademark that
would result in the creation of exclusive rights in different persons in different
parts of India is prohibited. An exception to this is where such use of the
trademark would not be contrary to public interest. The Registrar must grant such
approval and this type of transfer would not be invalid except where obtained by
fraud or misrepresentation.

Registration of assignments and transmissions

The procedure as regards registration is prescribed in section 45. As per this

section, a person entitled by assignment or transmission to a registered trademark
shall apply in the prescribed manner to the Registrar to register his title. The
Registrar must be satisfied as to proof of his title before registering him as
proprietor of the trademark. In an application under section 45 where the
assignment is effected along with the goodwill of the business, the Registrar is
bound to satisfy himself that, as between the assignor and assignee, there is, on
the true construction of the document, an assignment of the trade mark in
question in connection with the goodwill, within the territorial limits to which the
Act extends, of the business concerned in the goods for which the mark is
registered. The Registrar is not bound to go behind the terms of an assignment in
order to ascertain whether the assignment would have the effect of destroying the
trademark by causing it to become deceptive.

As per the proviso to section 45(1), where the validity of an assignment or

transmission is in dispute between the parties, the Registrar may refuse to register
the assignment or transmission until the rights of the parties have been
determined by a competent court.

Parties adversely affected

Although the rules do not expressly require a notice to be issued or a hearing to

be given to the party adversely affected by the order when an application is made
 before the Registrar, in the eye of law there is a necessary implication that the
party adversely affected should be heard before an order for the removal of his
name is made against him.27

As was discussed in Kohinoor Paints v Paramveer Singh 28, once an order is

passed in violation of the principles of natural justice the order is void in law and
if that order is relied upon it can be challenged whenever and wherever it is
produced. Where an assignment or transmission has been entered in the register
without giving notice to the affected parties, the Registrar may expunge the entry
from the register.

Alteration of registered trademark necessitated by assignment

Assignment of a registered trademark may sometimes necessitate certain

alteration in the mark, such as a change in the name of the proprietor. Any such
alteration can be carried out in the register only under the provisions of Section
59. If the alteration would substantially affect the identity of the mark, it may not
be allowed under Section 59 and a fresh registration may be necessary.

3.4.1.2 Licensing of Trademark :

Licensing of Trademark

As is in the case of assignment a licensing too has to be in writing and oral

licensing is no licensing. The term “licensing of trademark” was not present in
the 1958 Act though there was reference to “permitted use” and “registered
user”. Under the present 1999 Act “permitted use” means not only the use by a
third person of a registered trademark as registered users but also use by a third
person of a registered trademark by consent of the registered proprietor in a
written agreement without registering that person as registered user. The Act is
silent on the question of an unregistered trademark but such licensing is lawful
under the common law.

The unregistered common law trademarks can be as validly licensed as that of

registered trademarks. The right to use an unregistered trademark remains subject
to the common law rule that it is assignable only with the goodwill of the
business in which it is used under the 1958 Act that has been subsequently
changed in the 1999 Act. An unregistered trademark can now be licensed
without the goodwill of such a mark. The provisions on this are contained
between sections 48 and sections 52 and are governed by the common law. 29 The
use of the word ‘may’ in section 48 shows that registration of a trademark is not
mandatory but permissive in nature. The object of section 48 and 49 is to prevent
trafficking in trademarks. A registered and an unregistered trademark is now a
‘permitted use’ under the definition of section 2 (1)(r). Further an unregistered
trademark user can use with the consent of the proprietor of the registered
trademark holder subject to the conditions and limitations The main concern of

27
Radha Kishan v Assistant Registrar AIR 1969 Del 321. This was cited with approval in State Bank v
Rajendra Kumar AIR 1969 SC 401.
28
(1996) PTC 69.
29
Gujarat Bottling v. Coca Cola (1996) IPLR 201 at 219.
 unregistered trademarks is that licensing should be permitted provided that the
licensing does not result in causing confusion or deception among the public;
does not destroy the distinctiveness of the mark; a connection in the course of
trade consistent with the definition of trademark continues to exist between the
goods and the proprietor of the mark. This in other words is called common law
licensing.

The function of a trademark is to indicate trade origin and any use of the mark by
a person other than the proprietor leads to deception of the public indicating that
the goods come from a particular source when in fact it does not. This might
cause deception and confusion as to the source of origin in the minds of the
consumers. Such licensing of trademark is fatal to its distinctiveness and is a
sufficient ground of removal from the register. A trademark licensed ceases to be
valid if there is no connection in the course of trade with the registered proprietor
or otherwise becomes deceptive by the act of the registered owner. 30 Care has to
be taken that the licensee does not challenge the validity of the trademark
especially if it has been applied for registration and such situations should be
taken care that it does not arise. A licensee should not be able to prove that there
are implied terms in the agreement or that the licensee is free to use the mark in
accordance with the terms of the trademark or that the non-compliance of the
terms of the agreement including the terms as to financial provisions, would
preclude any further user without license. 31 Further a licensee cannot use a
licensed trademark after the expiry of the term of license or after the license has
been revoked or cancelled.32

If it is shown that the mark is associated with the goods in course of their
production and preparation for the market it is valid enough. This connection is
established if the proprietor of the mark associates himself with the goods or
services in the course of their production and preparation for the market.

There are precautions to prevent the abuse of the privilege of “permitted use”.
The definition of “permitted user” means the use of the mark by the registered
user and the person other than the registered proprietor and registered user of the
trademark in relation to the goods and services in respect to what it is connected
in the course of trade, where the trademark remains unchanged to the time being.
Where the registered user is registered as a registered user and that complies with
any conditions and limitations with regard to the subject matter of registration. In
the case of persons other than the registered proprietor there has to be a written
consent in a written agreement by the registered proprietor and such an
agreement should comply with the conditions and limitations while registering
the trademark.

The rights of the licensee in an unregistered trademark are the same as the rights
of the licensee in a registered trademark. It is yet to be seen how license of
unregistered trademarks without goodwill can be made and the nature of
litigations that might arise out of such license.

30
Bowden Wire v. Bowden Brake (1913) 30 RPC 45 at 580.
31
Sport International v. Hi-Tec Sports (1988) RPC 329.
32
Rob Mathys India v. Synthes A.G. Chur (1997) PTC 669 at 683 (Del) (DB).
 3.4.2 Difference between assignment and license :

There are some basic differences between assignment and license is that
assignment is a permanent transfer whereas license is a temporary transfer.
Assignment is with or without the assignment of the goodwill and it is preferable
to have licensing with control over the quality than to assign without goodwill.
License is revocable whereas the assignment is not revocable.

4. INFRINGMENT OF TRADEMARK AND ACTION FOR PASSING OFF

4.1 Infringement of Trademark:

Any person who trespasses the rights conferred by registration of a trademark

infringes the registered trademark for example by adopting identical or deceptively
similar trademark.33 In case a trademark is not registered then the trademark can be
protected under passing off. The idea used for infringement is the same used for
passing off but the two differ in two fundamental aspects; passing off is concerned
with only one method of passing off, namely use of a trademark; once a mark is
shown to offend, the user of it cannot escape by showing that he has adopted the
name outside the area where the proprietor of the actual mark has attained distinction.
The present Act of 1999 now gives recognition to certain concepts like dilution of
trademark, erosion of distinctive character of trademark and damage to reputation.
These were not covered under the previous Act of 1958. The concept of dilution has
been dealt with in the I module under the “concepts” subtopic.

4.1.1 Essentials:

When the rights conferred upon registration are trespassed, amounts to infringement.
An infringement should constitute the following essentials (a) the infringing mark
must be either identical with or deceptively similar to the registered trade mark; (b)
the goods or services in respect of which it is used must be specifically covered by
the registrar.

It was held in Parker Knoll 34 that the marks have to be very similar marks have so as
to “nearly resemble” the registered mark and “likely” to deceive or cause confusion
among consumers. It is not a necessity that it should be intended to deceive or
intended to cause confusion. It is the probable effect on ordinary people that have to
be taken into consideration for determining deception or confusion.

The question of similarity between two trademarks and the likelihood of deception or
confusion arising from their use is not to be decided in vacuo but to be determined
always in the background of the surrounding circumstances. The following factors
are taken into consideration:35

33
Castrol v. Automotive Oil (1983) RPC 315.
34
Parker-Knoll v Knoll International (1962) RPC 265 at 273-274.
35
Essco v. Mascot AIR 1982 Del 308 at 311.
  The nature of the marks, i.e. whether they are words, coined or
descriptive or non-descriptive, surname or geographical name,
devices, letters or numerals or a combination of two or more of
the above,
 The degree of resemblance between the marks and essential
features, i.e. similarity in phonetic, visual and in idea,
 The nature of the foods in respect of which they are used or
likely to be used as trademarks,
 The similarity in the nature, character and purpose of the foods
of the rival traders,
 The class of purchasers who are likely to buy the goods bearing
the marks, their level of education and intelligence, and the
degree of care they are likely to exercise in purchasing the
goods,
 The mode of purchase of the goods or of placing orders for the
goods,
 Any other surrounding circumstances.

To determine infringement the following factors are taken into consideration:

 If the mark nearly resembles the plaintiff’s registered trademark so as to cause

confusion or deceive the general public.36
 Once it is found that the defendant has used the trademark nothing said or done
by the defendant can make available the trademark to the defendant since the
infringement consists in using the trademark, as trademark is indicative of the
origin.37
 Even if the trademark is descriptive and not registrable and the defendant too
uses a name that is descriptive but confusingly similar to the previous trademark,
the defendant cannot use it as a defence to a claim for infringement action. Thus
plaintiffs are not deprived of statutory provision of the fact that the defendants
may be using a descriptive work “ as a trademark”. 38
 The proprietor does not necessarily have to establish instances of actual
confusion or deception arising from the defendant’s use of the mark. 39
 Whether certain trademark causes confusion is a question of fact and degree in
each case. The court has to take into account all the relevant circumstances in the
comparison of the marks. The risk of deception must be real and not fanciful. The
factors that are taken into consideration are the degree of similarity of the two
marks in sight and sound, looking not just at the registered mark as a whole but
also at its essential or distinguishing features or the essential idea behind it the
whole range of potential customers for the goods protected by the registered
mark and not just customers for the goods of the particular type marketed by the
defendant’s goods, the manner in which the purchasers of the goods are normally
made. All circumstances of the trades must be considered. 40
36
Saville Perfumary v.June Perfect (1941) 58 RPC 147 at 161.
37
Saville Perfumary case at pp.161, 174
38
Picot v. J.P.Co Goya (1967) RPC 573.
39
Lever Bros.v. Sunniwite (1949)66 RPC 84; Electrolux v. Electrix (1954) 71 RPC 23.
40
Caudius Ash v. Invicta (1911)28 RPC 252 at 597; Lever Bros.v.Sunniwite (1949) 66 RPC 84; Electrolux
v
 The question of resemblance and the likelihood of deception are considered by
reference to the whole mark and by the distinguishing essential feature. 41
Intention is not essential to determine infringement 42 but it does help further in
determination of infringement. It has also been held that any mark has to be
sufficiently big to be seen by the eye. 43 For example unauthorised printing of
labels is held to be infringement of the registered trademark 44, use of plaintiff’s
mark on reconditioned goods also may constitute infringement even if it is made
clear that the goods are not original but only reconditioned 45, import or
possession of the spuriously marked goods for personal consumption but not for
trading purposes, may not constitute infringement. Import of such goods for sale
in India is an infringement in the country of origin. 46 Even the use of a registered
trademark as part of the trading style of another dealing in the same kind of
goods is held to be infringement of the mark under section 29(3) of the 1999
Act.47

In Amritdhara Pharmacy48 the question of phonetic similarity was elaborately

discussed. It was alleged by the plaintiff that the two words Amritdhara and
Lakshmandhara were phonetically so similar so as to cause confusion among
consumers and hence Lakshmandhara should not be allowed registration. The
names were adopted as tradenames for the same type of medicines. The plaintiff
stated that this was a clear case of passing off because they were being used for
the same type of medicines due to phonetic similarity for an average Indian
consumer and an ultimate purchaser. The Court stated that the words 'Amrit' and
'dhara' were common words in the Hindi language and the combined word
'Amritdhara' meant ‘current of nectar' or the ‘flow of nectar’; the two words
'Lakshman' and 'dhara' were also well-known common words and combined
together they meant 'current or flow of Lakshman'. The Court also held that it is
not right to take a part of the word and compare it with a part of the other word;
one word must be considered as a whole and compared with the other word as
whole. It also stated that it is a dangerous method to adopt to divide the word up
and seek to distinguish a portion of it from a portion of the other word.' It took
into consideration the ordinary Indian Villager or townsman who perhaps might
know Lakshman, the story of the Ramayana being familiar to him; but doubted if
would apply it in cases as the present one. They would go more by the similarity
of the two names in the context of the widely known medicinal preparation
which he wants for his ailments.

The Court then held that both the words are overall and phonetically similar.

Electrix (1954) 71 RPC 23; Lancer Tm. (1987) RPC 303 at 324, 325.
41
Brooke Bond v. National Coffee Traders (1977) ALT 772, the defendants had imitated the colour
scheme
and design on the label. It was held to be an infringement.
42
Parker-Knoll v.Knoll International (1962)RPC 265 at 273 (HL).
43
Unic v. Lyndean where the mark applied to the foods to identify a patent agreement subsisting between
the defendant and another company was held infringement of the mark.
44
Paterson Zochoris v. Merfarken (1966) RPC 7.
45
Rolls-Royce v. Dodd (1981) FSR 517.
46
Dunlop Rubber v. Booth (1926) 43 RPC 139.
47
Elora Industries v. Banarasi Dass AIR 1980 Del 254.
48
Amritdhara Pharmacy v. Satya Deo AIR 1963 SC 449 at 452
 49
The test of infringement was laid down elaborately in Durga Dutt’s case, as
follows:

1. The onus would be on the plaintiff,

2. Where the two marks are identical, no further question to establish that there
is infringement arises,
3. Where the two marks are not identical the plaintiff would have to establish
that the mark used by the defendant so nearly resembles the plaintiff’s
registered trademark as is likely to deceive or cause confusion in relation to
goods in respect of which it is registered,
4. The court has to compare the two marks; the degree of resemblance. The
purpose of the comparison is for determining whether the essential features
of the plaintiff’s trademark are to be found used by the defendant. The base is
to find out if the mark used by the defendant as a whole is deceptively similar
to that of the registered mark of the plaintiff.
5. The identification of the essential features of the mark is in essence a
question of fact and depends on the judgment of the court based on evidence
led before it as regards the usage of it he trade.

4.1.2 Dilution of Trademark—Blurring and Tarnishment

4.1.2 Infringement And The Likelihood-Of-Confusion-Standard In USA

In the landmark case of Polaroid Corp.50 the Second circuit Court enunciated eight factors
for evaluating likelihood of confusion between non-identical goods or services:
 The strength of plaintiff's mark;
 The degree of similarity between the two marks;
 The proximity of the products or services;
 The likelihood that the prior owner will bridge the gap;
 Proof of the actual confusion;
 Defendant's good faith in adopting the mark;
 The quality of defendant's product or service; and
 The sophistication of the buyers.  

The likelihood-of-confusion test has prevented a grant of property rights in gross to

trademark owners by examining infringement strictly from the perspective of the
consumer rather than simply enjoining each and every unauthorized use of the mark. As a
result, the test focuses primarily on consumer confusion. Accordingly, a trademark owner
who is unable to demonstrate consumer confusion may not prevent the unauthorized use,
and subsequent weakening of a mark through an infringement action.
This focus on consumer confusion has caused courts to balance two competing factors:
prevention of public deception and encouragement of marketplace competition. Congress
49
Durga Dutt Sharma v. Navratna Pharmy Laboratories AIR 1965 SC 980.
50
Polaroid Corp. v. Polaroid Elects. Corp., 368 U.S. 820 (1961)
 has echoed this dual-purpose policy in Trademark legislation that the purpose underlying
any trademark statute is twofold. One is to protect the public so it may be confident that,
in purchasing a product bearing a particular trade-mark which it favorably knows, it will
get the product which it asks for and wants to get. Secondly, where the owner of a
trademark has spent energy, time, and money in presenting to the public the product,
pirates and cheats protect him in his investment from its misappropriation.

4.2 PROTECTION OF GOODWILL AND CROSS-BORDER REPUTATION

To claim passing-off a trader must have acquired goodwill, further in the case of A.
Bernardin et Cie,51 the Court held that a trader cannot acquire goodwill for the purposes
of a passing off action without their being an actual user of some sort of its products.
Although in certain cases slight activities might be sufficient, the mere dissemination of
material advertising the business activities abroad would not constitute user in the
country that is protectable in the passing off action. Extra territorial reputation of a mark
is also recognised in the matter of Vitamins LD's Application for Trade, Mark.52
The Bombay High Court in Kamal Trading Co Bombay Gillette U.K. Limited, Middle
Sex, England,53 laid down as follows:
“...........It is necessary to note that the goodwill is not limited to a particular country
because in the present days, the trade is spread all over the world and the goods are
transported from one country to another very rapidly and on extensive scale. The
goodwill acquired by the manufacturer is not necessarily limited to the country
where the goods are freely available because the goods though not available are
widely advertised in newspapers, periodicals, and magazines and in other media.
The result is that though the not available in the country, the goods and the, mark
under which they are sold acquire wide reputation. Take for example, the Video
Cassette Recorders manufactured by National, Sony or other well-known Japanese
Concerns. These televisions and V.C.R are not imported in India and sold in open
market because of trade restrictions, but is it possible even to suggest that the word
National or Sony has not acquired reputation in this country. In our judgment, the
goodwill or reputation of goods or marks does not depend upon its availability in a
particular country.
A Division Bench of the High Court of Madras in the Caesar Park Hotel; and Resorts
Inc. vs. Westinn Hospitality Services Ltd., opined as below:
"Though the hotel business has not been carried on in India, the plaintiff could
bank upon trans-border reputation, so as to maintain a passing off action in India.
The documents filed in this case by the plaintiff prima facie establish that there has
been trans-border reputation and goodwill in India and the service mark
'Westin' had been advertised in magazines having international circulation including
India. In other words the reputation of the plaintiff- company was travelling trans-border
to India as well through commercial publicity made in magazines which are available in
India."

51
A. Bernardin et Cie v. Pavilion Properties Ltd. (1967) RPC 177.
52
In re Vitamins LD's Application, 1956 RPC 1
53
3988 PTC 1
 In the case of Taittinger v. Allbev Ltd.54 the concept of dilution exists not to prevent
customer confusion, but to stop the erosion of the advertising power of the trademark.
Then the logical conclusion is that there is a property in an unregistered trademark too.
In Jolen Inc. v. Doctor & Company, with regard to the protection of good will the court
expressed its opinion as follows:

“To except a foreign trading company of repute copy of trademark from a non-
decrepit, small time trader is mind boggling and hard to ram down the throat. In a
situation like this, the inevitable conclusion is the adoption by a non-entity of a
trademark of a party that has already established widespread reputation and
goodwill as on the one hand adopter encashes and traders upon the goodwill of the
trademark while on the other the established trademark suffers dilution and earns
bad name. “

It was concluded that it involves elements of misrepresentation and deceit. The object of
adopting the trade name or deceptively similar name of another person is to trade upon
and derive the financial benefit from the reputation and goodwill of that person. As a
consequence the business or the goodwill of the other person suffers damage in financial
as well as in terms of reputation. That is why the remedy against passing off action is
independent of the infringement action arising from the violation of the statutory right to
a trademark.

4.3 Comparative Advertising Law:

4.3.1 England
At common law comparative advertising using a competitor's trade mark is lawful unless
such advertising includes false statements about another's goods, services or business
which are made maliciously causing damage, amounting to trade libel, or contains a
misrepresentation which is likely to mislead the public into buying the defendant's goods
and thus harming the plaintiff amounting to passing off. 55 In addition there are other
restrictions on advertising such as controls on price comparison in the Consumer
Protection Act 1987, on credit advertisement in the Consumer Credit (Advertisements)
Regulations 1989, and generally in the Control of Misleading Advertisements
Regulations 1988 and the Trade Descriptions Act 1968.
With regard to registered trade marks, in lrving's Yeastvite v. Horsenail56 the House of Lords held
that the exclusive right of the proprietor to use a mark conferred by section 39 of the Trade Marks
Act 1905 had to be construed in the light of the definition of a trade mark contained in section 3
of that Act, being to indicate a commercial connection with the goods. Accordingly only
traditional acts of piracy were covered, not comparative advertising. Following the Goschen
Committee Report of 1934 57, the 1938 Trade Marks Act in section 4(1)(b) broadened the
definition of trade mark infringement to include "importing a reference" to a registered mark. It
was confirmed in Bismag Bismag v Amblins (Chemists) Ltd 58, where the defendants produced a
54
[1993] 2 CMLR 741.
55 Such as in McDonald's v Burger King (1986) [1986] 1 FSR 45
56 [1934] RPC 110
57 [1934] RPC 110
58 [1940] RPC 209
chart comparing products, that the new subsection did indeed prevent the use of a registered trade
mark in comparative advertising where such use obtained for the defendant a benefit from the
reputation enjoyed by the plaintiff's goods. This remained the case until the repeal of the 1938
Act.59
However the ban on the use of registered marks in comparative advertising was not complete.
Where use was not of the proprietor's mark but of the proprietor's business name containing the
mark no infringement arose60 and there is nothing in the 1994 Trade Mark Act to suggest that the
Court's approach on this issue will change, unless the definition in the Act of a "sign" covers such
use, but without apparent enthusiasm. In addition the exclusive rights granted by section 4 of the
1938 Act were subject to statutory exceptions, notably the bona fide use by a person of his own
name or of the name of his place of business, or the bona fide description of the character or
quality of a person's goods as long as this did not import a reference for the purposes of Section
4(1)(b)61.
Section 10(6) of the 1994 Act reverses this approach by excluding from infringement use of a
registered mark by any person for the purpose of identifying goods or services as those of the
proprietor or a licensee, but subject to the proviso that such use otherwise than in accordance with
honest practices in industrial or commercial matters shall be treated as infringement if the use
without due cause takes unfair advantage of, or is detrimental to, the distinctive character or
repute of the mark.
The present liberalisation after Barclays and Vodafone cases may well be seen as something of a
"golden age" for comparative advertisers, since the onus is now on the plaintiff to prove, on a
balance of probabilities, that the use of its mark by a competitor is not "honest", which appears to
equate with the use being "significantly misleading". This is quite a high threshold, and the
present approach, putting the onus of proving dishonesty on the plaintiff, is to be contrasted with
that under the draft comparative advertising Directive, which in its requirement that such
advertising be "always verifiable" puts the onus on the advertiser to prove the accuracy of its
claims. Once the draft Directive comes into force (assuming it does so in its present form) the
position for comparative advertisers will become more restrictive.
4.3.2 India
Comparative advertising is not well developed in India as in England. And the case law that can
be culled out is heavy borrowed from the English Law. In Kshetrapal v. Panchan Singh62 and in
Jawahar v. Jawahar63 it was held that advertisement of the defendant’s mark in the Trademarks
Journal was an infringement. The court opined the same view in the case of Amar Soap v. Public
Gram Udjog.64However, this view is open to debate. The trade Marks Journal is an official
publication of the Trade Marks registry where application for registration of trade marks are
advertised as required under the Act. It is not a commercial advertisement offering goods for sale.
Mere application for registration of a trade mark proposed to be used may not constitute
infringement but may offer material for a quia timet action. Where the applicant has claimed user
in the application, it may raise a prima facie presumption of admission that the mark was used,
and therefore, sufficient for filing the suit and for the purpose of determining jurisdiction of the
court.

59 On 31 October 1994 - see Chanel Limited v Triton Packaging Limited [1993] RPC 32
60 Pompadour Laboratories Limited v Frazer [1966] RPC 7, Duracell International Ltd v Ever Ready Ltd [1989] FSR 71
,
61 Section 8 Trade Marks Act 1938
62
AIR 1915 All 262
63
(1979) 3 ILPR 199
64
(1985) PTC 85
In Reckitt & Colman of India Ltd 65 and in Reckitt & Colman66 the court after considering the
cases on the subject summarized the law on comparative advertising as follows:
 A tradesman is entitled to declare his goods to be best in the world, even though the
declaration is untrue.
 He can also day that his goods are better than his competitors, even though such
statement is untrue.
 For the purpose of saying that his goods are better than his competitors, say that his
competitors goods are bad. If he says so, he really slanders the goods of his competitors.
In other words he defames his competitors and their goods, which is not permissible.

 If there is no defamation to the goods or to the manufacturer of such goods no action lies,
but if such defamation an action lies and if an action lies the recovery of damages for
defamation, then the court is also competent to grant an order of injunction restraining
repetition of such defamation.67

The Court held, in the above case, that comparative advertisements were admissible. However,
the advertisement should not be in such a manner as to disparage the goods of the competitor.
Mere puffing of goods without disparagement is not actionable. The advertisements must be
viewed in light of the aforesaid tests.

It should be noted that though this case dealt with disparagement of goods and not trademarks,
the same criteria can be applied to trademarks as well as long as the trademark forms the focal
point or the core of the comparative advertisement.

In Bismag v. Amlins.68, the defendant used the plaintiff's registered trade mark 'Bisurated' in its
comparative advertising. The advertisement related to a comparison of the prices between the
plaintiff's and the defendant's products. It was held that defendant had infringed upon the
exclusive right of the plaintiffs.69

In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories 70 case the
Supreme Court observed as under:
"When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark
is shown to be "in the course of trade", the question whether there has seen an infringement is to
be decided by comparison of the two marks. Where the two marks are identical no further
questions arise; for then the infringement is made out. When the two marks are not identical, the
plaintiff would have to establish that the mark used by the defendant so nearly resembles the
plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods
in respect of which it is registered.
A point has sometimes been raised as to whether the words "or cause confusion" introduce any
element which is not already covered by the words "likely to deceive" and it has sometimes been
answered by saying that it is merely an extension of the earlier test and does not add very
materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the

65
Reckitt & Colman of India Ltd. v. M. P. Ramachandran (1999) ILPR 96 cal
66
Reckitt & Colman v. Kiwi TTK (1996) PTC 193 at 399 Del
67
see s. 29(9) under which te advertising the mark constitutes infringement in certain circumstances.a
68
1940 (2) All ER 608
69
Also see, Montana Wines v. Villamaria Wines Ltd., 1985 FSR 400; Gallaher (Dublin) Limited v. The
Health Education Bureau, 1982 FSR 464; and Compaq v. Dell Computers, 1992 FSR 93.
70
AIR 1965 SC 980
question arises in an action for infringement the onus would be on the plaintiff to establish that
the trade mark used by the defendant in the course, of trade in the goods in respect of which his
mark is registered, is deceptively similar. This has necessarily to be ascertained by comparison of
the two marks- the degree of resemblance which is necessary to exist to cause deception not being
capable of definition by laying down objective standards, the persons who would be deceived are,
of course, the purchasers of the goods and it is a likelihood of their being deceived that is the
subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented
by the plaintiff's mark.
The purpose of the comparison is for determining whether the essential features of the plaintiff's
trademark are to be found in that used by the defendant. The identification of the essential
features of the mark is in essence a question of fact and depends on the judgment of the Court
based on the evidence led before it as regards the usage of the trade. It should, however, be borne
in mind that the object of the enquiry in ultimate analysis is whether the mark used by the
defendant as a whole is deceptively similar to that of the registered mark of the plaintiff." 71
In Pepsi Co. Inc. and Anr. v. Hindustan Coca Cola and Ors. 2001, the Court laid down the
following conditions in a case of comparative advertisement:

1. In order to decide the question of disparagement the Court has to come to the conclusion
as to how many customers so would be influenced by advertisement material into not
purchasing a particular product instead of purchasing the rival product.
2. Secondly, the prayer of damages is sought in respect of said comparative advertisement
in the contest of the continuing marketing wall between two companies, one had to ask
whether any substantial damages could properly be attributed to a particular comparative
advertising and, if so, how this could be proved and damages assessed.
3. It is well known law that merely puffing is not dishonest and mere 'poking fun' at a
competitor is a normal practice of comparative advertising and is acceptable in the
market. The comparative advertising is a part of people's nature, everyone starts very
young. They compare everything from their teams to their toys, and most everything in
between. It is fun and can be informative. Some of the most effective advertising is
comparative, but it is not without its risks.
4. Effective advertising delivers a message that it remembered. It can change the way the
world views a product or service and can generate sales. If the market for a service or
product is well-defined, comparative advertising can be held the product or service
distinguish itself from the competition. Nothing seems to do this more efficiently than
comparative advertising.72

The Court laid down the following key elements, which have to be satisfied in order to
succeed in an action:
(1) A false or misleading statement of fact about a product.
(2) That statement either deceived, or had the capacity to deceive, substantial segment of
potential consumer, and
(3) The deception was material, in that it was likely to influence consumers' purchasing
decisions.

4.4 Passing Off:

71
Also see, Ruston and Hornby Limited v. Zamindara Engineering Company, Supreme Court
72
See also, the law laid down in 1996 PTC 393 and the judgment of 1999 PTC 741.
In case of infringement of unregistered trademark the passing off can be used a common law
remedy of torts. The plaintiff has to prove that his goods or services have a reputation and
goodwill in the market. The basis of passing off is false representation. In an action of passing off
it is not necessary that there should be absolute identity between the articles of the plaintiff and
the defendant. The basis for an action is deception and false representation. 73 There has to be
direct false representation, adoption of trademark which is the same or colourable imitation of the
trademark of the rival traders, adoption of an essential part of the rival trader’s name, copying the
get-up or colour scheme of the label used by the trader, imitating the design or shape of he goods
and adopting the word or name by which the rival trader’s goods or business is known in the
market.
The concept now has changed from protecting the manufacture’s goodwill and reputation to the
concept of protecting the manufacture’s monetary benefit and to bar unfair reaping by others of
what has been sowed by the manufacture. The ultimate concept remains same that is to protect
the consumers from the ultimate confusion while buying the goods, services etc. In the early
nineteenth century tort as a remedy was available for name, trademark or product or business but
now it is inclusive of television, radio programme, and other non-trading activities like
professional associations, business of looking after children, organizing exhibitions, beauty
contests, so on and so forth.
In the English case of Erven Warnink,74 which is also known as the Advocat case, the essential
characteristics which must be present in order to create a valid cause of action for passing off are:
1. misrepresentation,
2. that is made by a person in the course of trade,
3. to prospective customers of his or ultimate consumers of goods or services,
4. supplied by him which is calculated to injure the business or good-will of another trader,
and
5. which causes actual damage to a business or goodwill of the trader by whom the action is
brought.
4.4.1 General Principles
a) Misrepresentation
No one is entitled to represent his goods or business as being the goods or business of another
whether such representation is made by the use of any mark, name, sign, or symbol device or
other means.75 It is therefore an actionable wrong to pass off by whatever means that result is
achieved.76
Where the ultimate purchasers get confused from the overall getup of the unregistered mark, it is
sufficient to claim for passing off though a prerequisite is to have goodwill in an unregistered
trademark.77 It is an invasion of the proprietary rights vested in the plaintiff. The
misrepresentation should also have deceived or is likely to deceive and that the plaintiff is likely
to suffer damage by such deception. Mere confusion that does not lead to sale is not sufficient.”
This is a condition precedent to success in an action for passing off where the alleged
representation consists of the use of a name in connection with the goods, that the name should
have become distinctive of the plaintiff’s goods. 78

73
Cadila Health Care Ltd. v. Cadila Pharmaceutaicals Ltd., (2001) 5 SCC 73.
74
Erven Warnink v. Towned 1980 RPC 31.
75
Singer v. Loog (1881) 18 Ch D 395 at 412.
76
Rogers v. Rogers (1924) 41 RPC 277.
77
(1842) 6 Beav 66 at 73.
78
Oertli v. Bowman (1959) RPC 1 at 4 (HL).
b) Representation that defendant’s goods or business is connected with the goods or
business of plaintiffs

In certain circumstances passing off action lies when there is a representation there is a
connection or association with the goods or business of the plaintiff. The association or
connection must be sufficiently close to affect the goodwill of the injured party. The test is:
would consumers believe or at any rate would some of them believe that it is associated with the
same source of manufacture as the plaintiff’s product. 79

The principle of passing off unlike the case in early nineteenth century now encompasses other
descriptive material such as slogans or visual images, radio, television or trademark of a product
or a business. A plaintiff does not have to be in direct competition with the defendant to suffer
injury80. The passing off action has also been applied to professional associations, business of
looking after children, organizing exhibitions and beauty contests.

Passing off is a wrongful invasion of a right of property vested in the plaintiff, but the property
which is protected by an action for passing off is not the plaintiff’s proprietary right in the name
or get-up which the defendant has misappropriated but the goodwill and reputation of his
business which is likely to be harmed by the defendant’s misrepresentation. 81

4.4.2 Essential elements of passing off

There are three elements of the tort of passing off which are as follows:
(1) Reputation (2) deception (3) damage.

These are sometimes called the “classical trinity”. 82

Once a misrepresentation is established it is reasonable to infer that customers of the goods

bought them on that misrepresentation unless there is evidence to the contrary. 83
In the recent case of Reckitt & Colman84 it was stated that according to the law of passing off no
man could pass off his goods as those of another. It may be expressed in terms of the elements
which the plaintiff in such an action has to prove in order to succeed. Firstly goodwill has to be
established or reputation attached to the foods or services which he supplies in the mind of the
purchasing public by association with the identifying “get-up” (whether it consists simply of a
brand name or a trade description, or the individual features of labeling or packaging) under
which his particular goods or services are offered to the public, such that the get up is recognized
by the public as distinctive specifically of the plaintiffs goods or services. Secondly, he must
demonstrate a misrepresentation by the defendant to the public leading or likely to lead the public
into believing that goods or services offered by him are the goods or services of the plaintiff.
Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods
or services is immaterial, so long as they are identified with a particular source which is in fact
the plaintiffs. Thirdly, he must demonstrate that he suffers or that he is likely to suffer damage by
reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of
the defendant’s goods or services is the same as the source of those offered by the plaintiff. There
are two necessary elements, first a misrepresentation, express or implied but not necessary
79
Bulmer v. Bollinger (1978)RPC 79 at 117, 142 (CA).
80
Cadbury-Schweppes v. Pubsquash (1981) RPC 429 at 490(PC)(Australian case).
81
Reddaway v.Banham (1896) AC 199; Spalding v. Gamage (1915) 32 RPC 273 at 284.
82
Harrods v.Harrodian School (1996) RPC 698 at 713.
83
Mirage Studio v. Counter Feat Clothings (1991) FSR 145
84
(1990) RPC 341 at p.406 (HL).
fraudulent and second a consequent likelihood of damage to the plaintiff’s goodwill. 85
Misrepresentation may be express or implied. The cases on implied misrepresentation is more
common than express misrepresentation. It is however very difficult to classify all the possible
ways in which a man may make the false representation relied on. 86

4.4.3 Difference Between Infringement And Passing Off

An action for Trademark infringement is a statutory right, conferred on the registered proprietor
of a registered Trademark for the vindication of the exclusive right to its use in relation to those
goods. Passing off is a common law remedy, an action for deceit that is passing off by a person of
his own goods as those of another. In the case of infringement what needs to be proved is that the
plaintiff was the first to adopt and use the mark and the mark is registered. In a passing off action
the use of a mark for a sufficient long time so as to be known to the public is one of the
conditions precedent to the filing of such action. The use by the defendant of the Trademark of
the plaintiff is not essential in an action for passing off but is the sine qua non in the case of an
action for infringement.
In infringement action the issue is whether the defendant is using a Trademark which is the same,
or which is a colourable imitation of the plaintiffs registered mark. Whereas in the passing off
goods, the important thing is whether the defendant is selling goods so marked as to be designed
or calculated to mislead the purchasers that they are goods of the plaintiffs.
Passing off action is based solely on deception. In an infringement action the plaintiff must make
out that the use of the defendant mark is likely to deceive but where the similarity between two
marks is so close and the court reaches the conclusion that there is an imitation no further
evidence is required to establish that the plaintiff’s rights are violated. If the essential features of
the trade mark of a plaintiff have been adopted by the defendant, the fact that the get-up,
packaging, other writing or marks on the goods show marked differences or indicate clearly a
trade origin different from that of the registered proprietor of the mark is immaterial.
In an infringement, the defendant must use the offending mark on the same goods for which the
plaintiff’s mark is registered. In passing off, the defendant’s goods need not be same it may be
allied or even different. In an infringement action, an injunction can be issued against using the
TM. In a passing off action the defendant is prevented not only from using the TM but is also
stopped from using it in such a way to pass off his goods as that of another. In an infringement
case the main issue that the court is concerned with is what the defendant is doing and not with
what it might do.
The statutory recognition and protection of well known TMs and tests for their determination
have also been inserted so as to protect the interests of persons who have adopted and used the
mark in bonafide manner. The new law defines well-known TMs in relation to any goods or
services, a mark which has become so to the substantial segment of the public which uses such
goods or receives such services that the use of such TM in relation to other goods or services
would be likely to be taken as indicating a connection in the course of trade or rendering of
services between those goods or services and a person using the mark in relation to the first
mentioned goods and services.
The jurisdiction of district court to entertain suits for infringement and passing off has been made
same as for infringement of copyright thus enabling a plaintiff to file the suit in the district court

85
Bulmer v. Bollinger (1978) RPC 79 at 99; Centuery v. Roshanlal AIR 1978 Del 250 at 254.
86
Spalding v. Gamage (1915) 32 RPC 273 at 284.
within whose jurisdiction he resides or carries on business. There has also been substantial
enhancement of punishments for offences relating to trade marks and false description.

4.4.4 Passing off and protection of well-known trademarks

Passing off law, which is also called the common law remedy is basically designed to protect the
goodwill of the plaintiff in his business or his goods. It provides remedy against false
representation tending to deceive customers. False representation may be made by statement,
conduct, adopting distinctive marks, designs, get up or appearance. This doctrine is very much
recognized and used by the Courts in India.
While dealing with passing off what is essential is the presence of misrepresentation made by a
person in the course of trade to customers, which is calculated to injure the business or goodwill
of another trader which causes actual damage to the business or goodwill of the trader by whom
the action is brought is essential.
The plaintiff may prove either intent to deceive or an actual damage, and it is enough if it is
shown that the conduct of the defendant was calculated to deceive or mislead the public. The
plaintiff must show that there is a reasonable probability of being injured by the defendant’s
action. Common law remedy is available to the proprietor of an unregistered trademark if it is
infringed.

4.4.5 Reverse passing off

Issues in reverse passing off:

1. Whether the plaintiff has established a goodwill or reputation in connection with a business,
profession, service or any other activity, among the general public or among a particular class of
people, prior to the first use of the defendant.
2. Whether the defendants activities or proposed activities amount to a misrepresentation which is
likely to injure the business or goodwill of the plaintiff and cause of likely to cause damage to his
business or goodwill.
3. Whether the defendant succeeds in one or more of the defences set up by him.
4. If the plaintiff succeeds what relief he is entitled to.
Defenses in Trademark Infringement:

When an infringement action has been initiated against a defendant, he may set up any of the
defences provided by the Act, depending upon the applicability of the relevant defence to his
case. He can either claim that the plaintiff is not entitled to use as has no title or proprietorship or
that the use of the mark by the defendant is not an infringement or it is protected by the
provisions of Section 30 of the 1999 Act which lists out acts that do not constitute infringement.
He can claim that he has been using the trademark in accordance with honest
practices in industrial or commercial matters, and is not as such as to take unfair
advantage of or be detrimental to the distinctive character or repute of the
trademark.

A registered trademark is not infringed where the use in relation to goods or services indicates the
kind, quality, quantity, intended purposes, value, geographical origin, the time of production of
goods or of rendering of services or other characteristics of goods or services;

a. A trademark is registered subject to any conditions or limitations, the use of the trademark
in any manner in relation to goods to be sold or otherwise traded in, in any place, or in
relation to goods to be exported to any market or in relation to services for use or available
or acceptance in any place or country outside India or in any circumstances, to which,
having regard to those conditions or limitations, the registration does not extend;

b. the use by a person of a trademark-

i) in relation to goods connected in the course of trade with the proprietor or a

registered user of a bulk or which they form part, the registered proprietor or the
registered user confirming to the permitted use has applied the trademark and has
not subsequently removed or obliterated it or has at any time expressly or
impliedly consented to the use of the trademark; or
ii) in relation to services to which the proprietor of such mark or of a registered user
conforming to the permitted use has applied the mark, where the purpose and
effect of the use of the mark is to indicate, in accordance with the fact, that those
services have been performed by the proprietor or a registered user of the mark;

c. The use of a trademark by a person in relation to goods adapted to form part of, or to be
necessary to, other goods or services in relation to which the trademark has been used
without infringements of the right gives by registration under this Act or might for the time
being be so used, if the use of the trademark is reasonably necessary in order to indicate
that the goods or services are adapted, and neither the purpose not the effect of the use of
the trademark is to indicate, otherwise than in accordance with the fact, a connection in the
course of trade between any person and the goods or services, as the case may be;

d. The use of a registered trademark, being one or two or more trademarks registered under
this Act which are identical or nearly resemble each other, in exercise of the right to the
use of that trademark given by registration under this Act.

3) Where the goods bearing the sale of the goods in the market or otherwise dealing in those
goods by that person or by a person claiming under or through him is not infringing of a
trade by reason only if-

a) The registered trademark having been assigned by the registered proprietor to some
other person, after the acquisition of those goods, or

b) The goods having been put on the market under the registered trademark by the
proprietor or with his consent.
4) Subsection (3) shall not apply when there exists legitimate reasons or the proprietor to
oppose further dealings in the goods in particular, where the condition of the goods, has
been changed or impaired after they have been put on the market.

a) The defendant is the prior user of the disputed mark;

b) The defendant has been an honest concurrent user,
c) The defendant has a right to use the contested mark in view of he concurrent
registration;
d) The trademark of the plaintiff became a common word; public juris,
e) The registration of the plaintiff’s trademark was invalid,
f) The plaintiff is debarred from suing due to his own conduct like acquiescence, delay or
laches.

Many of these defences are also available for passing off too.

Registration is just a prima facie evidence of validity as laid down under Section 28(1). The
defendant has to specifically state in his defence claims that the registration is not valid. He also
has to make an application for rectification before the appellate board. If no action as required
under Section 113 is taken by the defendant, the issue as to validity of registration will be deemed
to have been abandoned. A defendant can further admit that his use does not amount to
infringement within the meaning of Section 30.

4.6 remedies:
Trademarks
A trademark, being an important component in the present industrialized, competitive era, the
counterfeiting of trademarked goods is an ever-happening phenomenon. To combat this, the
criminal remedies had come up with all the possibilities of tracking and punishing the offenders
of the rights of the owners of the trademarks. An analysis of the Trademarks Act in India reveals
that the criminal provisions in India is in conformity with the TRIPs obligations regarding the
enforcement of intellectual property rights.
The Act first provides an explanation of what constitutes application of trademarks and trade
descriptions87. The concept of falsifying and falsely applying trademarks is alse dealt with in
detail in the Act88. According to the provision, a person shall be deemed to falsify a trade mark if
he without the assent of the proprietor of the trade mark makes that trade mark or a deceptively
similar mark or falsifies any genuine trade mark, whether by alteration, addition, effacement or
otherwise. A person shall be deemed to falsely apply to goods or services a trade mark who,
without the assent of the proprietor of the trade mark applies such trade mark or a deceptively
similar mark to goods or services or any package containing goods or uses any package bearing a
mark which is identical with or deceptively similar to the trade mark of such proprietor, for the
purpose of packing, filling or wrapping therein any goods other than the genuine goods of the
proprietor of the trade mark.

The Act provides a penalty for falsifying any trademark, or for falsely applying to any goods or
services any trade mark, or for making, disposing, possessing any die, block, machine, plate or
other instrument for the purpose of falsifying or of being used for falsifying, a trade mark, or for
applying any false trade description to goods or services, or for appling to any goods any false
indication of country, place, name or address, or for tampering with, or altering or effacing an
87
Section 101 of the Trademarks Act, 1999
88
Section 102 of the Trademarks Act, 1999
indication of origin which has been applied to any goods, of an imprisonment for a term which
shall not be less than six months but which may extend to three years and with fine which shall
not be less than fifty thousand rupees but which may extend to two lakh rupees 89.

Penalty for selling, hiring or exposing for sale goods or providing services to which false trade
mark or false trade description is applied shall be imprisonment for a term which shall not be less
than six months but which may extend to three years and with fine which shall not be less than
fifty thousand rupees but which may extend to two lakh rupees 90.

The Act provides for enhanced penalty on second or subsequent conviction with imprisonment
for a term which shall not be less than one year but which may extend to three years and with fine
which shall not be less than one lakh rupees but which may extend to two lakh rupees 91.

If any person removes or attempts to remove or causes or attempts to cause to be removed for
sale from any premises or sells or exposes for sale or has in his possession for sale or for any
purpose of trade or manufacture piece goods or cotton yarn or cotton thread which is not marked
as required by Section 81, every such piece and every such bundle of yarn and all such thread and
everything used for the packing thereof shall be forfeited to Government and such person shall be
punishable with fine which may extend to one thousand rupees 92.

For falsely representing an unregistered trademark as registered one, there is a penalty of

imprisonment for a term which may extend to three years, or with fine, or with both 93.

If any person uses on his place of business, or on any document issued by him words which
would lead to a wrong belief that his place of business is, or he is officially connected with, the
Trade Marks Office, he shall be punishable with imprisonment for a term which may extend to
two years, or with fine, or with both94.

Any person who makes a false entry in the Register of Copyright, or makes a writing falsely
purporting to be a copy of any entry in such register, or produces or tenders evidence of such
wrong entry or writing, knowing it to be false, is punishable with imprisonment which may
extend to two years, or with fine, or with both95.

In the case of offences by companies, the company as well as every person in charge of and
responsible to the company for the conduct of its business at the time of the commission of the
offence shall be deemed to be guilty and shall be liable to be proceeded against and punished 96.

Except on complaint in writing made by the Registrar or any officer authorised by him in writing,
no court shall take cognizance of an offence under Section 107 or Section 108 or Section 109 of
the Act. No court inferior to that of a Metropolitan Magistrate or Judicial Magistrate of the first
class shall try an offence under this Act. The offences under Section 103 or Section 104 or
Section 105 shall be cognizable. Any police officer not below the rank of Deputy superintendent
of police, may search and seize without warrant the goods, die, block, machine, plate, other
89
Section 103 of the Trademarks Act, 1999
90
Section 104 of the Trademarks Act, 1999
91
Section 105 of the Trademarks Act, 1999
92
Section 106 of the Trademarks Act, 1999
93
Section 107 of the Trademarks Act, 1999
94
Section 108 of the Trademarks Act, 1999
95
Section 109 of the Trademarks Act, 1999
96
Section 114 of the Trademarks Act, 1999
instruments or things involved in committing the offence and all the articles so seized shall be
produced before a Judicial Magistrate of the first class or Metropolitan Magistrate. Any person
having an interest in any article seized may within fifteen days of such seizure, make an
application to the Judicial Magistrate of the First Class or Metropolitan Magistrate for such article
being restored to him and the Magistrate, after hearing the applicant and the prosecution, shall
make order on the application97.

For abetting the commission of any offence while the person is within India for the offence to be
committed outside India, which if committed in India would be an offence, he may be tried for
such abetment in any place in India in which he may be found, and be punished with the
punishment to which he would be liable if he had himself committed in that place the act in
which he abetted it98.

4.7 Brief Summary

From this unit, we have seen how the trademark has changed gradually and how it is interpreted
now. Even when there is passing off, one can file suit for passing off as one of the relief apart
from infringement.

4.8 Self-Evaluation Questions

(1) Analyse the provisions on assignment in the 1957 Act and the 1999 Act and its practical
consequences in the trademark competition which leads to “trading of trademarks” concept.

(2) A, a chocalate company marketed its product, cocoacake in a brown wrapper with a distinct
white creamish font and a small girl wearing a white frock holding one piece of cocoacake. The
wrapper wass very familiar with kids and on seeing the wrapper they were able to identify
cocoacake. B, another chocalate company came up with a product, cocoacream cake using A’s
idea. The wrapper was brown in colour with a white creamish font but with smaller letters and
little grammatical changes. A small boy wearing white trousers holding one piece of cocoacream
cake was displayed on the wrapper. Whether this will amount to passing off.

(3) X, planning to launch one mosquito repeller in the market registred trademark even before he
could come up with the product. Meanwhile, Y, who was already established in the market with
the same market wanted to register the same trademark. Whether Y is entitled to register the
trademark, in view of the fact that X hasn’t come up with the product for a very long time.

5 DOMAIN NAME PROTECTION

5.1 Objective

Imagine a whole world of information available on the internet with no title under which
the information on a particular area is stored. This situation would be very similar to
having bundles and bundles of papers with no title given to them. One would have to
blindly spend to a lot of time looking through each paper to get any information. This
situation would be same if there were no domain names or no URL’s like
www.google.com or www.findlaw.com.

97
Section 115 of the Trademarks Act, 1999
98
Section 120 of the Trademarks Act, 1999
The subsequent topics deal with the legal definition of domain names, why they get a
separate legal recognition etc. These topics will help get a better understanding of the
whole realm of domain names.

5.2 Introduction

‘Domain name’ very simply put is the address of a particular site on the Internet, not
much different from a telephone number. The Domain Name itself acts as a front for a
number sequence which leads to the site on the Internet. The Domain Names map to
unique Internet Protocol (IP) numbers99 that serves as a routing addresses on the Internet.
The domain name system (DNS) translates Internet names into the IP numbers needed for
transmission of information across the network. On the internet, the domain name is that
part of the Uniform Resource Locator (URL) that tells a domain name server using the
domain name system (DNS) whether and where to forward a request for a Web page. The
request will be obviously from the person who has accessed the Internet and logged on to
that Site. The domain name is mapped to an IP address (which represents a physical point
on the Internet).

Without the domain name, a computer would have no idea where to look for a web page,
and e-mail routers would not be able to send e-mail. Domain names are divided into
hierarchies. The top-level of the hierarchy appears after the last dot (‘.’) in a domain
name. This domain is organized in levels. The top level identifies geographic or purpose
commonality.100 For example in “ford.com”, “.com” is the top level domain name. Other
common top-level domain names include .org (for non-profit organization), .net (for
network and Internet related organization), .edu (for four-year colleges and universities)
and .gov (for government entities) and the recently added .biz and .info.

In addition to these generic domain names, each country has been given a unique top-
level domain name. For instance, ‘.in’ indicates a domain in India, and ‘.pak’ indicates
Pakistan. The disputes that arise over domain names involve “second level” domain
names. The second level name is the name directly to the left of the top-level domain
name in an Internet address. For instance, in the address www.ford.com, the second level
domain name is ‘ford’.

There cannot be two identical second level domain names under the same top level
domain name. the second level identifies a unique place within the top-level domain and
is, in fact, equivalent to a unique address on the Internet (an IP address). For example,
even though both the Lee Cooper Company (a company manufacturing and selling shoes)
and Lee (a company manufacturing and selling clothes) would like the “Lee.com”
domain name, only one Lee Company can have Lee.com. Another example would be
though Orient Fans and Orient Longman Book publishers both would like to have
Orient.com as their domain name, only one can have the domain name. Lower levels of
domain may also be used to get narrower and site specific. More than one domain name

99
E.g. 98.37.241.30
100
For example, the nation that the domain covers such as ‘in’ for India or a category such as ‘com’ for
commercial
can be mapped to the same Internet address. This allows multiple individuals, businesses,
and organizations to have separate Internet identities while sharing the same Internet
server.

As more companies move to put information and products onto the Internet, the disputes
over Internet domain names become more common. These disputes are challenging the
existing law and the need has arisen for the Internet community to develop new producers
and legal rules that adequately address the stakes involved. This chapter discusses
domain names and the resolution of domain name disputes by the Internet community.

5.3 Legal Definition of Domain Name

The meaning of domain name has been expanded and affirmed by the Court practice.
Thus an interpretation of a domain name can be given as:-

(i) A common address depends on the location, while the web-address is selected
by an applicant, provided that it is not identical to any other address name;
(ii) A web-address may be often guessed, since in order to enter a site of a firm,
its name should be typed. Therefore, a domain name is not a common address;
it is rather a sign, which, like a poster in a shop indicates the place “place” of
goods and services for sale. A domain acquires features, which characterize
industrial property.

5.4 Domain Name and Intellectual Property

As the Internet developed, the significance of the domain name has increased
dramatically, and the concept of a domain name is transferring from mere “address”
indication to an identifier of certain persons, services, and goods provided at this address.
A domain name acquires the features of a trademark, trade name, or brand, and de facto,
it is a means of individualization of a certain business entity, its goods and services. The
value for the trademark of Companies already existing outside the Internet is transposed
and extended on to the Internet in most cases. In other cases such as rediff.com the value
for trademark is built on the Internet right from scratch.

Of 4,000 intellectual property specialists in the U.S. and Europe who were surveyed, 90
percent said they have experienced domain name infringement and are reporting
increases in other types of online abuse. The report says that copyright infringement
involving appropriation of material by Web sites such as Napster has risen 105 percent
during the past three years and counterfeiting of intellectual property such as popular
brand names has increased an astounding 1,650 percent.

And with new top-level domains such as .biz and .info now coming down the pike,
problems will likely to be compounded as people vie to register names in these new
domains that might infringe on the trademarks of others.

5.5 The Organizations for Domain Name Registrations

It is true that the Internet started of as a lawless and unregulated sphere, but this approach
created a lot of problems with various unexpected and unwanted fallouts of the process.
Especially in the case of DNS cyber squatting and Domain Name Disputes became
rampant and counterproductive to a large extent. The fall out not only affected the
relevant industries but also had an adverse effect on the consumers and the web users.
Therefore it becomes imperative to introduce some form of licensing and regulation of
the DNS. This function was taken up by a unique non-governmental organization and
very interestingly by practice this organization has been recognized world over as the
authority and the definitive organization as far as this field is concerned. The organization
is called Internet Corporation for Assigned Names and Numbers (ICANN).

ICANN is a non-profit organization that was created under the direction of the U.S.
Department of Commerce. The goal of the organization is to facilitate privatization of the
technical management of Internet names and addresses, the domain name system (DNS).
As part of this privatization effort, ICANN announced on April 21, 1999, the selection of
five companies to participate in a two-month test of a new shared registration system.

During and after the two-month test period, apart from Network Solution Inc. (NSI),
America Online, CORE (Internet Council of Registrars), France Telecom/Oleane,
Melbourne IT and register.com joined as registrars for GTLD101 names.

Prior to December 1999, a company called Network Solutions Inc. (“NSI”) was almost
solely responsible for the registration of second level domain names for the most popular
top-level domains, including .com, .net, and .org. Since the vast majority of domain
names are under one of these top-level domains (the most common being .com domain
names), Network Solutions had a great deal of control over how domain names were
registered, and how disputes would be resolved. To avoid having to be the arbitrator
between two parties who both desire the same domain name, NSI decided to simply
adopt a first come first serve arrangement with respect to domain name. If the domain
name was available, the applicant was given the name.

As of December 1999, the ability to register .com, .net, and .org domain names was
spread out among many registrars. ICANN and NSI continues to assign domain names,
but now they are just one of many domain name registrars. Following NSI’s precedence,
all of these registrars assign names on a first-come first-serve basis, and do not do any
checking before assigning a new domain Any Domain Name to be registered today on the
net has to be registered through one of these organizations. There is considerable debate
whether this registration is binding and what happens if a person puts up a site on the web
without such registration. Legal arguments, apart it does make any practical sense to do
so for two reasons:

1. Most entities on the web agree to be bound by the ICANN specifications and it does
not make sense not to register the domain name. Especially for a business entity this will
entail unnecessary complications including no remedy in case of a domain name dispute,
101
Generic Top Level Domains
which is otherwise available in the form of arbitration by WIPO Arbitration and
Mediation Centre.

2. The root servers have accepted the regularity authority of ICANN and all that takes for
ICANN to get the unregistered site to be removed is a direction to the server to do so
which will remove the web site.

5.6 Registration of Domain Names

Register trademarks as domain names in same class of product or service

In cases of domain names in the same class of product or service the issue is an extension
of trademark violation and passing off. The products or services are in the same class and
hence there is a greater possibility of confusion among the users and the infringer can
derive more benefit out of such confusion using the original company’s brand value.
Courts have been very active in granting injunctions in such cases where there increased
chances of infringement and confusion.

In Bell Actimedia, Inc. v. Puzo, et al., the Canadian Court issued a preliminary injunction
against the defendants who had just established a website under the domain
“lespagesjaunes.com” as a French language business directory. The plaintiff telephone
giant has long-standing registered marks for “yellow pages” and “pagesjaunes.” The
injunction prohibits acts of the defendant that infringe on the plaintiff’s marks, including
use of the domain name.

In Affair Sapeso case the defendant registered its competitor’s trademark as a .com
domain. The French Court ordered the defendant to withdraw its domain name from the
Internet and enjoined the company from any further use of the trademark. The Court held
that the offending activity (domain registration) took place outside France and the fact
that trademark rights are defined by territory was no bar to the court’s authority since
doing otherwise would allow trademark infringers to escape liability by simply
registering in a foreign jurisdiction.

In the “Ozu” case, “ozu.es” is Spain’s first search engine created at Advernet. Advernet
received a trademark registration for “ozu” in Spain. Some of Advernet’s partners broke
away and started a competing company and registered the domain “ozu.com” in the USA.
The Spanish court held that the trademark owner had exclusive use of the “ozu” and that
all of the defendant’s use was infringing.

It seems that the Courts in different jurisdictions agree to prohibit registering a domain
name that is identical or similar to its competitor’s trademark. However, they are based
on different legal reasons. The enforcements of an order that applies to an extra-territorial
domain name registration is still a problem.
Register trademarks as domain names in different classes of product or service
In cases where the products or services belong to different classes, the Courts exercise
restraint in granting injunctions. In such cases a tangible link has to be proved by the
plaintiff to show that the domain name registrant is infringing the trademark and is
causing confusion among the same target consumers. If he cannot prove this then an
injunction is not granted. In other words if the Internet users who are guided by the
domain name and the consumers of the Plaintiff are not substantially the same class of
people then an injunction cannot be granted.

In China, a plaintiff registered the trademark “PDA” for the manufacture of electronic
goods in 1997. When the company planned to register the domain name ‘pda.com.cn’ in
late 1998, it found the defendant has registered the domain name and used it to sell
other’s products. An action was brought under China’s Trademark Law and Law Against
Unfair Competition. Because the plaintiff failed to provide any evidence that defendant’s
products were the same or similar, the court was unable to find actual infringement.

In Avery Dennison Corp. v. Sumpton,102 the plaintiff had acquired distinctiveness in the
‘Avery’ and ‘Dennison’ trademarks but the defendant registered ‘avery.net’ and
‘dennison.net’ for sale e-mail address. The court held that the defendant’s customer base
is Internet users who desire vanity e-mail address, while the plaintiff’s customer base
includes purchasers of office products. There was no evidence demonstrated that the
plaintiff possessed any degree of recognition among Internet users or the defendant
directed e-mail service at the plaintiff’s customer base.

In France, the Court refused to apply the trademark concept of speciality (classification
by type of good or service) to domains and specifically prohibited a computer services
company from using “alice.fr” against a trademark owner in a totally non-competing
class of products in Affair Alice. However, this decision was reversed by the Court of
appeal which applied the speciality test to conclude that two trademarks could coexist as
far as there is no confusion between the services or the products. Traditional confusion
analysis was therefore applied in most such cases.

Register well-known or famous trademarks as domain names

In USA, trademark owners have successfully used the Lanham Act to protect their
famous trademark. Under this Act the degree of proof for the products which may be of
different classes and the consumers who may be different classes of people has been
considerably diluted in case of well known or famous trademarks as domain names. Even
in such cases the Court has looked into some tangible connection between the trademarks
and the domain names.

For example, in Hasbro Inc, v. Internet Entertainment Group, Habro brought the action
after discovering that its trademark ‘candyland’, which is the name of one of its most
popular children’s games, was registered as ‘candyland.com’, for a pornographic website.
The Court held that such use of mark as a domain name for pornography could in fact
result in consumer confusion and thereby dilute the mark.
102
189 F.3d 868
Even in the Planned Parenthood Federation of America, Inc. v. Bucci,103 the defendant
registered the plaintiff trademark as a domain name for the purpose of bringing target
audiences to the content to his non-commercial site. However, the Court held that the use
of the trademark had the potential to prevent some Internet users from reaching plaintiff’s
own website, and the use resulted in unfair competition and dilution under the Lanham
Act.

Brazil enforced a new regulation in 1998 that attempted to clarify some domain name
conflicts. The regulation forbids third-party registration of domain names that conflict
with well-known trademarks and reputed trademarks. Well-known trademarks are
protected in Brazil only to the extent that the trademark is used on identical or similar
goods. Reputed trademarks are those registered in Brazil but declared by the Patent &
Trademark Office as being well-being within Brazil and therefore entitled to protection
across all classes of goods and services.

5.7 Disputes Under IPR

Disputes under Intellectual Property Rights can be divided into the following kinds:

5.7.1 Infringement :

This refers to disputes where the original registrant intentionally trades off the
resemblance between the domain name and another famous trademark. Thereafter, the
registrant tries to cash on the reputation of the trademark holder by running a business
similar to that of the trademark holder. The standard factors which determine
infringement under the traditional trademarks law includes:

 The strength of the trademark

 The deceptive similarity between the plaintiff’s and the defendant’s mark
 The likelihood of confusion in the minds of the public

5.7.2 Concurrent Claims:

In this category of domain name disputes, there is more than one legitimate user of the
domain name. Apparently, there is no intention to trade off a trademarked and title or no
potential for confusion between the products of the conflicting claimants. Both parties
have a particular trademark of their own or have a valid reason to use a particular domain
name.

5.7.3 Cyber squatting:

Cyber squatting occurs when domain names bearing a resemblance to famous trademarks
are registered by persons hoping to sell the registration to the corresponding trademark
103
42 USPQ 2d 1430
holder. Typically, in such cases, persons who have absolutely nothing to do with the
name, virtually pirate the name by obtaining a SLD registration with the .com TLD of a
well-known company or brand.

5.8 Domain Name Disputes

In the environment of increased competition in registration services, ICANN is

formulating new rules and procedures for resolving domain name disputes.

Several factors contribute to the occurrence of domain name disputes. While identical or
similar trademarks may co-exist when they are for different goods or services (or in
different geographic locations), domain names are unique globally. In order to foster
acceptance of the Internet by businesses and consumers, NSI has registered domain
names at a relatively low cost (e.g., $70 for two years) on a first-come-first-served basis
and without an exclusion process comparable to the exclusion process of a trademark
registration. These two factors, ease of access and no exclusion process, have contributed
to the frequency of domain name disputes.

Due to these disputes, the NSI policy on conflict between domain name registrants and
owners of trademarks has changed several times, ICANN in response has recommended
and created an exclusion process for famous or well-known marks. The process would
enable an owner of a mark to exclude others from obtaining registration of a domain
name identical to that mark if “the mark is famous or well-known on a widespread
geographical basis and across different classes of goods or services.” A registration
authority would determine whether a mark is famous or well-known using a non-
exhaustive list of criteria, including “evidence of the mark being the subject of attempts
by non-authorized third parties to registrar the same or misleadingly similar names as
domain names.” This last criterion raises the issue of cyber squatting.

It is important to note that the exclusion process would apply to non-U.S. marks, as well
as to U.S. marks. Consequently, the holder of a mark judged to be famous in Europe
could potentially exclude registration by a U.S. company of an identical or similar
domain name.

5.9 Domain Name Dispute Policies

Apart from going to Courts and filing a suit for control over the domain name, which
may be very time consuming, alternative dispute resolution policies may be applied for
resolution of disputes. Disputes prior to December of 1999 were handled under the
domain name dispute policy created by NSI.

This policy has now because of already explained shortcomings, been replaced with a
Uniform Dispute Resolution Policy created ICANN and used by all accredited registrars.
Under this new policy, a trademark owner can initiate a relatively inexpensive
administrative procedure to challenge the existing domain name. In order to prevail, the
trademark owner must show:
1. that the trademark owner owns a trademark (either registered or unregistered) that is
the same or confusingly similar to the registered second level domain name;
2. that the party that registered the domain name has no legitimate right or interest in the
domain name; and
3. that the domain name was registered and used in bad faith.

Initially, the UDRP is meant to deal only with what is referred to as bad faith adoption
and/or misappropriation, through the registration and use of a domain name that infringes
or dilutes another party’s trademark or rights of trademark. This meant that the use of the
domain must be identical or confusingly similar to that of a trademark or trademark rights
and such registration and use must be in bad faith.

What may constitute bad faith is of course determined on a case-by-case basis but the
following factors are among those to be considered. The reader should note that the rights
of the party claiming that the other is acting in bad faith depend in some instances upon
that party being the owner of a registered trademark. This is certainly true under The Act
and goes a long way toward establishing the primacy of the claimant’s rights under the
UDRP. “Bad faith” as used in the URDP means and among other things consists of:

1. If a domain name owner has obtained a domain name primarily for the purposes of
selling, renting or otherwise transferring it to a party who owns a registered trademark or
to a competitor of that trademark owner.

2. Registering a domain name in order to prevent the owner of a registered trademark

from protecting that trademark in the form of a domain name.

3. Adopting a domain name primarily for the purposes of disrupting the business of a
competitor.

4. Intentionally attempting to draw visitors to the website of the domain by creating a

likelihood of confusion between the domain and the trademark.

The owner of the domain has the right to defeat any claims of bad faith by showing that
the owner has legitimate right to use the domain.

If the trademark owner successfully proves all four points in the administrative
proceeding, then the domain name can either be cancelled or transferred to the prevailing
trademark owner. If the trademark owner fails to prove one o these points, the
administrative panel will not cancel nor transfer the domain name.
The domain name owner can prove a legitimate right or interest in a domain name by
showing:

 Use or preparations to use the domain name in connection with a bona fide
offering of goods or services prior to any notice of the dispute;
  That the domain name owner has been commonly known by the second level
domain name; or
 That the domain name owner is making legitimate non-commercial or fair use of
the domain name, without intent of (i) commercial gain, (ii) misleadingly
diverting consumers, or (iii) tarnishing the trademark at issue.

The leading case on this point of law is that of Panavision International v. Toeppen.104 In
this case Toeppen applied for and received registration of the domain name
“Panavision.com”. Toeppen’s registration effectively prevented the plaintiff, Panavision
International from registering and using its own trademark as its Internet domain name.
Toeppen demanded $13,000/- to discontinue use of the name. Panavision asserted that
Toeppen’s sole purpose in registering the ‘panavision.com’ domain name was to extort
money from Panavision. Panavision filed a suit in the Federal Court against Toeppen for,
interalia, trademark dilution and trademark infringement, relying on the Federal
Trademarks and Dilution Act, 1995.105

The Trial Court granted summary judgment in favour of Panavision on its Federal and
State trademark dilution claims. The Trial Court found that Panavision’s mark were
“famous” within the meaning of the trademark dilution statutes, and that Toeppen’s
attempts to register domain names composed of trademarks for the purpose of reselling
them to the owners of those names and marks constituted a “commercial use” of the
marks. However Toeppent preferred appeal to Court of Appeals. The Court of Appeal
upheld the findings of the Trial Court and further added that “the federal trademark
dilution statute was broad enough to include situations potential customers might be
discouraged if they do not find a Web site by typing company’s registered trade name
followed by suffix .com”. It was further observed that involuntarily forcing a company to
leave its registered trade name and reputation to the mercy of a cyber squatter constituted
a “dilution” of the trade name.

Further in Internatic106 the facts were more or less similar. At no point of time did
Toeppen actually use the ‘internatic.com’ domain name in connection with the sale of
any goods or services. Internatic filed a suit against Toeppen alleging, interalia, federal
trademark infringement and trademark dilution. On the basis of Toeppen’s admission that
he intended to sell the intermatic.com domain name, the Court found that Toeppen
making commercial use of the “internatic.com” domain name, Toeppen had lessened the
ability of Internatic to identify and distinguish its goods by using its marks as its domain
name on the internet.

The U.S. has now passed the United States Anti Cybersquatting Consumer Protection Act
(ACPA).107 This statute contains a long list of factors that suggest “bad faith” on the part
of a domain name owner and a trademark owner’s ability to bring an action directly
104
141 F.3d 1316
105
The said Act provides that the owner of famous marks are able to enjoin another’s commercial use of
that mark even if the mark is used in the non-competing market and there is no chance of consumer
confusion, if such use first begins after the mark has already become famous and causes dilution of the
distinctive quality of the mark.
106
Internatic v. Toeppen 947 F.Supp 1227
against offending domain names. In fact, that suggest bad faith goes well beyond the
typical cybersquatting scenario.108

5.10 Jurisdictional Issue

In India, a trademark is associated with a particular product that is traded. An applicant

seeking to register a trademark in respect of a particular product may seek a registration
in respect of all goods falling within the class of goods (provided in the 4 th Schedule) of
which, the specified product is a part or just the specified product that his trademark
represents. The above discussion leads necessitates a detailed study of various
international trademark disputes. Every country has its own trademark law, which
operates only in respect of its territorial sphere. Ordinarily where a particular trademark
has not been registered within a jurisdiction, any person within that jurisdiction should be
able to use that name and register a trademark in respect of that name. But once it has
been posted on the Internet (which cuts through geographical barriers), he is open to risk
of potential litigation.

These disputes give rise to the cross border effects of the Internet which spring problems
like personal jurisdiction, conflict of laws and the question of which substantive law
would be applicable.

The above decision lays open the question whether mere accessibility of a website from a
particular State, would make the hosts amenable to the jurisdiction of the Courts of the
respective State.

A US Court in Bensusan v. King109 has attempted to offer a solution to the above

altercation. The facts are that of the use of a company logo on the home page of a
website. Richard King, who was an operator of a jazz bar and was called ‘Blue Note’ in
Columbia. Missouri had set up a web site on the Internet including the term ‘Blue Note’
on the home page. Bensusan Restaurant Corp, the operator of jazz bars in New York and
other cities in the same name, relying on its registered trademark for the name ‘Blue
Note’, filed an action for the infringement of trademark and unfair competition law
against King before the New York District Court. The Court held that the conditions for
its jurisdiction according to the New York ‘long-arm statute’ were not met. According to
the tort of trade infringement, it was sufficient that only a significant that only a single
product infringing the plaintiffs trademark was offered on the New York market.
107
This Act Come into effect from 29.11.1999. The ACPA, also called the Trademark Cyber Piracy
Prevention Act, calls for a broad protection of business of trademark. Guilty parties can be found liable for
statutory damages of up to $300,000 per trademark if the registration of the Uniform Resource Locator
(URL) is considered “willful”.
108
The ACPA does not center on the fact that a cybersquatter offered to sell or transfer the domain name to
the trademark owner. It also includes factors such as whether a cybersquatter has any intellectual property
rights in a domain name; whether a cybersquatter has been engaging in a bonafied use of a domain name to
offer his own goods or services; or whether a cybersquatter intended to divert customers away from a
trademark owner’s site either for commercial gain or with the intent to disparage a trademark in a way that
creates the likelihood of confusion among consumers.
109
126 F 3d 25
However, the court held that this condition was not satisfied by the mere accessibility of a
web page stating a telephone number.

This line of reasoning was adopted by a US district court at New York in Playboy v.
Chuckle-berry110 where the plaintiff was the publisher of the famous ‘Playboy Magazine’.
The defendant was the publisher of the Italian Men’s magazine ‘Playmen’, which had its
home page set up at the Italian Internet server. Playboy Inc argued that the defendant’s
service infringement the selling and distributing of ‘Playboy Magazine’ at USA. The
Court held that nobody should be prevented from setting up a website under a particular
name merely because this website is also accessible from a country in which the sale of
the products advertised on the website is forbidden as a result of an infringement of
national trademark law.

These cases have given rise to interesting proposition of law, which can be well
illustrated:

“Company X, a manufacturer of cosmetic products bearing the name ‘FLAME’ (with a

registered trademark), whose market extends only to the Indian territory, intending to
post a website on the Internet, discovers that Company Y also manufactures a similar
product with the same name. The distribution of the product of Company Y does not go
beyond the UK. This company which has registered a trademark in the UK, already has a
website in its name. The important question to be considered is whether Company X
would succeed in posting its website on the Internet”.

5.11 The International Perspective

Domain names disputes

Because of the increasing popularity of the Internet, companies have realized that having
a domain name that is the same as their company name or the name of one of their
products can be an extremely valuable part of establishing an Internet presence. A
company wishing to acquire a domain name must file an application with the appropriate
agency. Before doing so, a search is done to see if their desired domain name is already
taken. When a company finds that the domain name corresponding to their corporate
name or product trademark is owned by someone else, the company can either choose a
different name or fight to get the domain name back from its current owners.

Some well-publicizied examples of these types of domain names disputes are:

 Candyland.com: Both Hasbro and an adult entertainment provided desired the

candyland.com domain name. Hasbro sue for the domain name and procured it
from the infringer.
 McDonalds.com: an author took this domain name from Wired magazine who
was writing a story on the value of domain names. In his article, the author
requested that people contact him at ronald@mcdonalds.com with suggestions of
110
486 F. supp 414
 what to do with the domain name. In exchange for returning the domain name to
McDonalds, the author convinced the company to make a charitable
contribution.
 Microsoft.com: The Company Zero Micro Software obtained a registration for
microsoft.com (with a zero in place of the second ‘o’), but the registration was
suspended after Microsoft filed a protest.
 MTV.com: MTV video jockey Adam Curry originally took the MTV domain
name. Although MTV originally showed title interest in the domain name or the
Internet, when Adam Curry left MTV the company wanted to control the domain
name. After a federal Court action was brought, the dispute settled out of court.
 Peta.org: An organization entitled “People Eating Tasty Animals” obtained the
peta.org domain name; much to the disgust of the better known organization
People For Ethical Treatment of Animals, but as of May 2000 the domain name
was still registered in the name of People Eating Tasty Animals.

One of the latest and the most important litigators in Domain Name jurisprudence today
is Playboy Enterprises International Inc. (‘Playboy’), a pioneer when it comes to
developing the law of the Internet. Indeed, from the outset of the commercialization of
the Internet, Playboy has been aggressive in protecting trademarks in cyberspace.
Playboy magazine was first published in 1953. Shortly thereafter, Playboy expanded its
operations by engaging in entertainment businesses related to the content and style of
Playboy magazine. Along the way, Playboy has licensed its trademarks for use in
connection with various consumer products and services.

Playboy claims that its trademarks are critical to the success and potential future growth
of its businesses. Such trademarks include PLAYBOY, PLAYMATE, RABBIT HEAD
DESIGN, and PLAYMATE OF THE YEAR and serve as the basis for numerous domain
names related to Playboy’s online ventures.

The Playboy Online group operates a network of Playboy-branded Web sites, including
playboy.com, playboytv.com, store.playboy.com and Playboy Cyber Club. Playboy claims
that it is one of the best-known and most popular brands in the world. Playboy asserts
that this branding has led to the significant Internet traffic to its Web site and the
tremendous circulation of the Playboy magazine.

The respondent registered more than 70 domain names containing the word PLAYBOY.
Playboy argued that these registrations demonstrate a deliberate attempt to trade off its
trademarks and its extensive international reputation in those trademarks.

The panel of three arbitrators ruled in favour of Playboy and told that all of the 70-plus
domain names should be transferred from Domain Active to Playboy.

5.12 The Indian Interpretation

The first Indian case is Yahoo Inc. v. Akash Arora.111 In this case plaintiff, who is the
registered owner of the domain name “yahoo.com” succeeded in obtaining an interim
order restraining the defendants and agents from dealing in service or goods on the
Internet or otherwise under the domain name “yahooindia.com” or any other trademark/
domain name which is deceptively similar to the plaintiff’s trademark “yahoo”.

This case raises certain points of law. If the argument is accepted true, then registration of
yahoo as a trademark in USA would provide an universal right on the domain names such
as yahoo India and yahoo Australia. As long as yahooindia.com does not try to pass itself
off as yahoo, no offence should be recognized. In recognition of Yahoo’s position in the
industry, yahoo India may be compelled to put up a prominent disclaimer that it is not
part of Yahoo Inc, USA.

The issue on the domain names entitled to trademark protection were discussed in Rediff
Communication Limited v. Cyberbooth. 112 The petitioner Rediff Communications Ltd.,
registered the domain name “Rediff.com” with Network Solutions Inc. on 8.2.97. On
31.1.99, the defendant, Cyberbooth, registered the domain name “Rediff.com” with
Network Solutions Inc. Aggrieved by the action of the defendant in registering the
domain name “Rediff.com” , the plaintiff initiated proceedings under the Trade and
Merchandise Marks Act. The petition alleged that the defendants had adopted the word
“Radiff” as part of their trading style deliberately with a view to pass of their business
services as that of the plaintiffs. The petitioner also contended that this was deliberately
done by Cyberbooth to induce members of the public into believing that Cyberbooth is
associated with the rediffussion group, and thereby illegally trade upon the reputation of
the plaintiff.

Therefore, the court held that there is every possibility of the Internet user getting
confused and deceived in believing that both domain names belong to one common
source and connection although the two belong to two different persons. The Court was
satisfied that the defendants have adopted the domain name “Radiff” with the intention to
trade on the plaintiff’s reputation and accordingly the defendant was prohibited from
using the said domain name.

In Titan Industries Ltd. v. Prashant Kooapati113 case the defendant registered the domain
name “tanishq.com”. The plaintiff Company, which has been using the trademark
“tanishq” with respect to watches manufactured by it, sued for passing off and alleged
that the use of the domain name by the defendants would lead to confusion and deception
and damage the goodwill and reputation of the plaintiffs. The Delhi High Court has
granted an ex-parte ad-interim injunction restraining the defendants for using the name
“TANISHQ” on the Internet or otherwise and from committing any other act as is likely
to lead to passing off of the business and goods of the defendants as the business and
goods of the plaintiff.

111
1999 (2) AD (Del) 229
112
The Bombay High Court has held that the Internet domain names are of importance and are a valuable
corporate asset. AIR 2000 Bombay 27
113
http://www.indiaip.com/main/iplaw/caselawmain.html
 5.13 Brief Summary

The concept domain name, being on rise in this era of information technology, this
chapter affords an insight to the whole realm. The area of domain name is substantially
developing without much issues on jurisdictional differences on treatment of the arising
issues.

5.14 Self-Evaluation Questions

(1) How can situations where domain names are registered with the intention of
selling them be avoided nationally and internationally.
(2) There are two companies that are in totally different business. Both have the
same name registered under the Trademark Act with respect to different classes
of goods. They however want to have the company’s name registered as their
domain name. Please decide with reasons. You are permitted to add facts to the
existing facts in order to support your answers.

Chapter 6 Protection of Geographical Indication

6.1 Objective:-
Geographic indications are the important component which is indicating the source and
the quality of a particular product or process. Nowadays in the modern market oriented
economy use to pirate GI product on a large scale. For which there is a need for
protection arose in such a competitive scenario. This chapter familiarizes with the
concept of GIs and its relevance in the trade economy. Most of the time GIs are confused
with trademarks, though it differs a lot from the concept of trade mark. Both
internationally and nationally, the need for protection of GI had been recognized and
implemented in the form of various conventions and statutes.
6.2 Introduction:-
Protection of Geographic Indication (GIs) refers to protection of products originating
from a certain geographical area having special characteristics, qualities or reputation
may be due to various factors, eg natural factors such as raw material, soil, regional
climate, temperature, moisture etc; or the method of manufacture or preparation of the
product such as traditional production methods; or other human factors such as
concentration of similar business in the same region, specialization in the production or
preparation of certain products and the maintaining of certain quality standard.
Geographic indications have features that respond to the needs of indigenous and local
communities and farmers. Geographic indications are based on collective traditions and a
collective decision making process which allowing traditions for continued evolution and
emphasize the relationship between human efforts, culture, land resources and
environment. For which GIs are not freely transferable from one owner to another. It
should be understood that even if a product is protected as GI, it does not prevent anyone
from producing it anywhere. The only restriction is that the product cannot be marketed
using the name that has been registered as a GI. The name can be used only by authorized
users of the GI for their product or service. So, GI link must inform consumers of some
important characteristics of the product, which is material in their decision to purchase
the good. For example, soil from a particular area might help produce a distinctive testing
tomato, silicon crystals artificially created in a highly controlled environment in the
silicon valley region of California etc.
6.3 Justification for protection:-

The justification for providing intellectual property rights can be broadly classified
as:
 Equity considerations – The custodians of geographically indicated
products should receive some price benefits if marketing of such products
leads to commercial gain. All the authorized users should also get same
benefit out of commercial exploitation of the product protected under GI.
 Conservation concerns – The protection of GI products contributes to the
wider objective of conserving the environment, biodiversity and
sustainable agricultural practices. Concept of registration of GI and
authentication of authorized users help to promote conservation and
sustainable use of protected products.
  Preservation of traditional practices and culture – Protection of GI
products would be used to raise the profile of the knowledge and the
people entrusted with it both within and outside communities.
 Avoiding “biopiracy” – Prevention of appropriation by unauthorized parties;
and promotion of its use and its importance to development should be
there. Due to regulated use of GI protected products and guarantee of a
certain quality and standard by GI, misappropriation and misuse is actually
minimized.

To establish the above mentioned points, there is a need of further clarification

which is as follows:
Intellectual property is protected by a number of tools, most notably trademarks and
patents. These ensure that creators are rewarded for the work and financial risk they took
in developing the invention or idea. Patents and trademarks prevent competitors from
‘free-riding’ on others’ intellectual property investments and protect consumers from
deception. The rationale for protecting GI’s is similar. As with trademarks and patents,
GI’s are subject to free-riding problems and consumer deception. Consumers understand
that GI’s denote the origin and quality of products. Many of these products have acquired
valuable reputations which, if not protected, could be misrepresented by dishonest
commercial operators. False use of GI’s is detrimental to consumers, as well as to
legitimate producers; consumers are led into buying a false product which does not meet
their expectations, while producers suffer because valuable business is taken away from
them. Consumers are protected against both false and deceptive use of geographical
indications. For a GI to mislead consumers, consumers must first perceive that the
original GI refers to a certain geographical area. Geographical denominations that have
become generic or synonymous with the product are not deemed to mislead the public.
For example, Parmesan cheese has become a generic term in the United States that refers
to cheese grated on pasta.US consumers do not relate the cheese to its geographical origin
in Parma, Italy. In other cases, deceptive indications might be literally true, but may be
misleading. For example, if two geographical areas have the same name, but only one has
been used as an indication of source for a certain product, then an indication used from
products originating from the other area would be considered misleading. A false
declaration, on the other hand, would misstate the true name of the place where the
product originated. The wine producing Rioja regions in Spain and Argentina are an
excellent example. Wine from the Rioja region in Spain has acquired a strong positive
reputation, while wine from the Rioja region in Argentina does not have the same status.
The TRIPS Agreement allows both countries to use the same geographical name,
although they must agree on how producers are to distinguish between the two products.
On the other hand, the term Chablis, has been used in the United States to refer to a rather
inferior wine and could be seen as de-valuing white Burgundy wine from the region of
Chablis in France. Furthermore, goods in a market can be categorized based on the nature
of activity required from the consumer in order to derive information on the goods. In a
market where there exists an inequitable distribution of information, producers will be
unable to differentiate their goods. Accordingly, being unable to inform customers of the
superior qualities of their products, producers would cease to invest in increasing quality,
thereby impeding product innovation. The reputation theory logically builds on this basic
hypothesis. It argues that a producer has the incentive to invest in the promotion of his or
her products’ reputation only if the same can be effectively conveyed to the consumer. A
regime seeking to protect geographical indications would therefore seek to bridge the
asymmetry of information between the producer and his or her consumers thereby
allowing him or her to invest to a maximum into improving the quality and, indirectly,
the reputation of the goods.

6.4 Definition:-
Since 1883, countries have been struggling with the issue of trade and GI’s. Three
treaties, the Paris Convention for the Protection of Industrial Property (1883), the Madrid
Agreement for the Repression of False or Deceptive Indications of Sources on Goods
(1891) and the Lisbon Agreement for Appellations of Origin (1958) form the basis of the
current definitions of GI’s. The definitions and philosophy underlying these three treaties
have been integrated into the TRIPS Agreement. However, because the rationale for (and
signatories to) each treaty differed, their definitions of GI’s differed as well. In its papers
on the subject, the WTO Secretariat created the term ‘indications of geographical origin’
to avoid confusion with the many different legal concepts arising from such treaties.
Indications of Source: Indications of source are most commonly labels such as ‘Made in
America’ or ‘Product of Mexico.’ The idea originated in the Paris Convention and the
Madrid Agreement. However, neither document actually defines the concept. It is
generally understood that an indication of source is contingent only on the product’s
geographical origin and not necessarily its inherent quality. The Madrid Agreement
provided specific rules for the repression of false as well as deceptive indications of
source.
Appellations of Origin: Appellations of Origin, as defined in the Paris Convention,
convey not only the geographical source of the product, but make a direct link between
the product’s quality and its geographical origin. The Lisbon Agreement goes further,
stating that the geographical name designates a product, whose quality and characteristics
are exclusively or essentially related to the geographical environment, including natural
or human factors. Appellations of Origin must contain the name of a country, region or
locality. This definition constitutes a higher threshold than for indications of source and
narrows the range of products that are eligible for this classification. The Lisbon
Agreement sets out two basic requirements for the protection of Appellations of Origin.
First, the Appellation must be protected in the home market and second, it must be
registered with the World Intellectual Property Organization (WIPO). Once an
Appellation is protected under WIPO, it cannot become a generic name as long as the
product remains protected in its home market. This protection covers usurpation or
imitation, even if the true origin of the product is indicated or is accompanied by a term,
such as ‘kind,’ ‘type,’ ‘make,’ ‘imitation’ or ‘style. ’As of 1999, 766 appellations are
enforced by WIPO. Of the nineteen signatories of the Lisbon Agreement, France
accounts for two-thirds of the appellations and only six parties to the Treaty account for
94 percent of the registrations. Of the products covered, 84 percent are wines, spirits,
cheese, tobacco and cigarettes, with wines and spirits alone accounting for 70 percent.
Geographical Indications: The TRIPS Agreement allows GI’s on goods where a given
quality, reputation or ‘other characteristic’ of the good is attributable to its geographical
origin. The Agreement neither differentiate between agricultural and industrial goods, nor
between handicrafts and manufactured goods, but the definition does not apply to
services. It does, however, distinguish a) between wines and spirits and all other goods
and beyond that, b) between wine and all other goods. There are, therefore, three levels of
definitions: indications of source, Appellations of Origin and geographical indications.
The broadest definition, indication of source, does not require that the product have a
certain quality, reputation or characteristic linked to its origin, but it covers both
Appellations of Origin and geographical indications. Appellation of Origin is the most
specific concept and necessarily corresponds to the name of a country, region or locality.
In between is the term geographical indication, which identifies the product as originating
in a particular place, where quality, reputation or other characteristics are attributable to
their geographical origin. In other words, all Appellations of Origin are geographical
indications but not every geographical indication is an Appellation of Origin. The TRIPS
Agreement definition of GI’s is broader than the one contained in the Lisbon Agreement
because it includes products that do not possess any qualities specifically due to their
origin. However, under the TRIPS Agreement, not every indication of origin can rise to
the level of a GI. Only goods whose quality OR reputation OR ‘other characteristics’ are
linked to its geographical origin, and to consumer’s purchasing decisions can qualify. To
be protected, goods must originate in the territory with which they are associated.
Licensing the name of the good to other growers or processors is therefore, not allowed.
The TRIPS Agreement does not require the use of a real geographical name. Reference to
geographical origin could be a symbol, such as a French flag, the map of Italy or the Taj
Mahal. Denominations that are not a place name, such as Basmati rice, could also be
feasible under the general heading of geographical indications, although this issue has not
been tested. To be considered eligible for a geographical indication, a good must possess
any one of three characteristics—1) quality, 2) reputation or 3)‘other characteristic’
attributable to its geographical origin. Going beyond the definitions contained in earlier
agreements, reputation is a critical component of geographical indications under the
TRIPS Agreement The geographic Indications of Goods (Registration and Protection)
Act 1999 (herein referred to as ‘GI Act’) defines ‘geographic indication’ in relation to
goods, as ‘an indication which indentifies such goods as agriculture goods, natural goods
or manufactured in the territory of country, or a region or locality in that territory, where
a given quality, reputation or other characteristics of such goods is essentially attributable
to its geographic origin and in case where such goods are manufactured goods one of the
activities of either the production or of processing or preparation of the goods concerned
takes place in such territory, region or locality, as the case may be.
It is, however clarified that any name which is not the name of country, region or locality
of that country shall also be considered as the GI if it relates to a specific geographic area,
and is used upon or in relation to particular goods originating from that country, region or
locality.
The term “goods” has been defined to mean ‘any agricultural or natural product and
includes food stuff’. Indication has been defined to include ‘any name, geographical or
figurative representation or any combination of them conveying or suggesting the
geographical origin of goods to which it applies.

Examples of geographical Indications

Some of the GIs are: ‘Pilsen’ and ‘Budweiser’ beers; ‘Champagne’; ‘Porto’; ‘Sherry’;
‘Chainti’; ‘Cognac’; ‘Scotch Whisky’; ‘Basmati’ for rice; ‘Darjeeling Tea’; ‘Assam Tea’;
‘Roquefort’; ‘Real California Cheese’; ‘Tuscany for olive oil’; ‘Vale dos vinhedos for
wines’; ‘Florida Oranges’; ‘New Zealand Lamb’; ‘Indian Carpets’; ‘Swiss Watches’;
‘Czech Crystal’; ‘Idaho for potatoes’; Hereke for carpets; Havana for tobacco.

Thus, protection is provided against the use of GIs for products not originating from the
geographical area to which the indication refers. Such protection has far reaching
implications for both producers and consumers alike. It helps consumers distinguishing
goods produced in a particular geographical region from goods produced elsewhere
thereby preventing the former from being misled. So the idea is to provide protection for
GIs, a kind of intellectual property right, which entitles the enterprises that are located in
the designated area to exclude others from using the indication. Moreover, GIs are
expected to benefit producers by placing a premium on the product concerned by pushing
up its competitiveness and prices. In other words, it seeks trade and commercial
advantage on legitimate grounds.
6.5 International Position
GIs are mostly protected by national laws. As the law is national it is limited in effect to
the state territory. It becomes quickly apparent, once commerce expanded in the 19th
century, that national protection is not sufficient as products are often imitated outside of
the country of origin. Therefore, international cooperation is required to ensure that GIs
are also protected internationally and that there is mutual reciprocity in the level of
protection between states.

The first efforts to adopt a common approach to intellectual property resulted in the Paris
Convention on the Protection of Intellectual Property which was adopted in 1883. The
Convention concerned all aspects of intellectual property and not just geographical
indications The Paris Convention was the first multilateral agreement, which included
“indications of source or appellations of origin” as objects of protection. Article 1(2) of
the Paris Convention states:
“The protection of industrial property has as its object patents, utility models, industrial
designs, trademarks, service marks, trade names, indications of source or appellation of
origin, and the repression of unfair competition”. The Paris Convention identifies
geographical indications as a separate intellectual property right, but does not clearly
define this concept. Article 10(1) of the Paris Convention provides for the certain
remedies in respect unlawful use of indications of source on goods, meaning that no
indication of source may be used if it refers to a geographical area from which the
products in question do not originate. Article 10 of the Paris Convention does mention
appellations of origin expressly. However, they are covered by the term “indications of
source” as all appellations of origin are considered to be indications of the source of
goods. As regards sanction the convention establishes that seizure upon importation must
be provided for, or at least prohibition of importation or seizure inside the country. But if
those sanctions do not exist in a particular country, the action and remedies available in
such cases are to be applied (Article 9). Article 10bis of the Convention gives the basis
for protection against misleading indication of source, including appellations of origin. It
obliges members to provide protection against unfair competition and contains a non-
exhaustive list of acts, which are to be prohibited. The Paris Convention does not provide
for any special remedies against infringement of this provision. Paris Convention in
Article 19 allows the parties “to make … between themselves special agreements for the
protection of industrial property”. Two such agreements of relevance to GIs were duly
made. These are the 1891 Madrid Agreement and the 1958 Lisbon Agreement.

The Madrid Agreement for the Repression of False or Deceptive Indications of Source of
Goods is specific to indications of source. Article 1(1) of the Madrid Agreement provides
that: "All goods bearing a false or deceptive indication by which one of the countries to
which this Agreement applies, or a place situated therein, is directly or indirectly
indicated as being the country or place of origin shall be seized on importation into any
of the said countries." If the laws of a country do not permit seizure upon importation,
such seizure shall be replaced by prohibition of importation (Article 1.3). The Agreement
also states that in the absence of any special sanctions ensuring the repression of false or
deceptive indication of source, the sanctions provided by the corresponding provisions of
the laws relating to marks or trade names shall be applicable (Article 1.5). Article 3bis
obliges the States party to the Agreement to prohibit the use, in connection with the sale
or display or offering for sale of any goods, of all indications capable of deceiving the
public as to the source of the goods. Article 4 provides that the Courts of each country
have to decide what appellations, on account of their generic character, do not fall within
the provisions of the Madrid Agreement. The Agreement has 33 member states signed to
it (as on July 15, 2003), but India is not a party to it. The Madrid Agreement was the first
multilateral agreement to provide specific rules for the repression of false and deceptive
indications of source. The Madrid Agreement did not add much to the protection already
given by the Paris Convention, but it extended protection to deceptive indications of
source in addition to false indications. A deceptive indication of source can be the true
name of the place where the good originates from, but nevertheless confusing the
purchaser in respect to the true origin and quality of the good.

6.5.1. Lisbon Agreement

The Lisbon Agreement for the Protection of Appellations of Origin and their
International Registration was adopted in 1958. Any State which is party to the Paris
Convention for the Protection of Industrial Property may become a party to the Lisbon
Agreement. Contracting Parties are currently 26 and constitute the Lisbon Union.
Article 2 of the Lisbon Agreement defines an appellation of origin as:
“ (1)… the geographical name of a country, region, or locality, which serves to designate
a product originating therein, the quality and characteristics of which are due exclusively
or essentially to the geographic environment, including natural and human factors”.
"(2) ..The country of origin is the country whose name, or the country in which is situated
the region or locality whose name, constitutes the appellation of origin which has given
the product its reputation”.
The French text (which is the authentic one) of Article 2.1 reads as follows (la qualité ou
les caractères sont dus exclusivement ). As a result, the corresponding part of the English
text should be read as “quality or characteristics”.

The international registration system set forth by the Lisbon Agreement offers the
possibility of obtaining the protection of an appellation of origin within contracting
Parties through one single registration procedure. To be eligible for protection under the
Agreement an appellation must be first protected in its country of origin. Any application
must be filed with the WIPO Secretariat by the competent national authority of the
country of origin. As a result, interested associations of producers have to pass through
their respective national authorities. The application must be filed in English, French or
Spanish on the official form and be accompanied by the payment of registration fees (500
Swiss francs). WIPO then records the appellation of origin in the International Register
and notify the registration to the national authorities of the Lisbon Union.

The competent national authorities have the right, within a period of one year from the
date of receipt of the notification, to issue a refusal of protection in relation to the
appellation of origin at issue. The declaration of refusal has to specify the ground for
refusal. On receipt of a declaration of refusal within the prescribed period, WIPO
registers the declaration in the International Register and notifies it to the competent
authority of the country of origin. The latter communicates it in turn to the associations of
producers that had requested the registration, who may avail themselves of the same
administrative and legal remedies against the refusal as nationals of the country that
pronounced it. A refusal is not definitive and can be withdrawn at any time (any
withdrawal has to be notified to WIPO as well).
If no declaration of refusal is notified within the relevant time limit, the protection of the
appellation of origin takes effect in that country as from the date of international
registration.

According to Article 3 of the Lisbon Agreement, the international registration of an

appellation of origin ensures protection against any usurpation or imitation of the
appellation of origin, even if the true origin of the product is stated or if the appellation is
used in translated form or accompanied by terms such as "kind," "type," "make,"
"imitation" and the like. The international registration of an appellation of origin ensures
its protection for as long as the appellation is protected in the country of origin. No
renewal is required. Once protected, the appellation is also prevented from becoming
generic.

Amendments approved at the 2009 Assembly of the Lisbon Union (1 October 2009)

In September 2008, WIPO established a Working Group (WG) responsible for exploring
possible improvements of the procedures under the Lisbon Agreement. The WG met in
Geneva in March 2009 (origin was actively involved in it). The WG elaborated proposals
of amendments of the Lisbon Regulations concerning:
i) the option for Member States to issue declarations of grant of protection for the
appellations of origin notified through the Agreement (this is a non-compulsory
alternative to the one-year period during which oppositions are allowed) as well
as statements to the effect that protection is granted (this is a non-compulsory
alternative to the withdrawal of refusals).
ii) The possibilities for Member States (again non-compulsory) to use electronic
communication for the submission of notifications within the framework of the
Agreement.Those amendments were approved by the Assembly of the Lisbon
Union in October 2009.
6.5.2. TRIPs Agreement

The TRIPs Agreement dedicates a separate section to the protection of geographical

indications. WTO Member States must also comply (in relation to GIs as well) with the
general provisions and basic principles laid down in the Agreement.
Article 22 of the TRIPs Agreement provides a definition of geographical indications by
stating that they are:
“... indications which identify a good as originating in the territory of a Member, or a
region or locality in that territory, where a given quality, reputation or other
characteristic of the good is essentially attributable to its geographical origin”.

Article 22.2 provides that WTO Members “shall provide the legal means for interested
parties to prevent:
a) the use of any means in the designation or presentation of a good that indicates or
suggests that the good in question originates in a geographical area other than the true
place of origin in a manner which misleads the public as to the geographical origin of
the good;
b) any use which constitutes an act of unfair competition within the meaning of Article
10bis of the Paris Convention (1967)” .
The use of a geographical indication which does not mislead the public as to its true
origin is, therefore, not an infringement of the TRIPs Agreement. This is one of the key
differences between the TRIPs protection given to all goods and the special protection
given to wines and spirits.
The TRIPs Agreement provides higher protection to wines and spirits, compared to the
standard protection granted to other goods. The extra protection for wines and spirits
encompasses three main elements:
 legal means for interested parties to prevent the use of a geographical indication
identifying wines and spirits not originating in the place indicated by the
geographical indication;
  refusing or invalidating the registration of a trademark for wines or spirits which
contains or consists of a geographical indication identifying wines or spirits,
respectively at the request of an interested party;
 calling WTO Members for negotiations aimed at increasing protection for
individual geographical indications for wines and spirits
Article 23.1 provides that the use of a geographical indication identifying wines or spirits
not originating in the place indicated by the geographical indication is prohibited, even
where the true origin of the wines and spirits is indicated, or the geographical indication
is used in translation or accompanied by expressions such as “kind”, “type”, “style”,
“imitation” or the like. It is not necessary to show that the public might be misled or that
the use constitutes an act of unfair competition. In the case of wines and spirits,
protection becomes objective and automatic. Thus, these provisions give geographical
indications for wines and spirits stronger protection than that provided for in Article 22
for all products.
Articles 23.3 and 23.4 provide an “extra-additional” protection for wines. There are two
components:
 the need to accord protection for each geographical indication for wines in the
case of homonymous indications;
 the establishment of a multilateral system of notification and registration of
geographical indications for wines eligible for protection in the jurisdictions of
those WTO Members participating in the system .

Bilateral agreements:
A further possibility of international protection of GI is that conclusion of bilateral
agreements between two states. A number of countries have entered into such
agreements. In general, such bilateral agreements consist of lists of GI which were drawn
up by the contracting parties and an undertaking to protect the GIs of the respective
contracting parties. The agreement also usually specifies the kind of protection, that is to
be granted. Although in general, bilateral agreements are useful, they cannot constitute
an entirely adequate solution to the problem of the lack of international protection
because of the multiplicity of negotiations required and resulting therefrom an inevitable
diversity of standards.

6.5.3. Regional Developments - EU

The first statute for the protection of GI was enacted in France, The French Law of 1919.
Protection was conferred through a special title of industrial property, namely appellation
of origin. Under this law, an appellation of origin consists of the name of the country,
region or locality, that serves to designate a product originating therein, the quality and
characteristics of which are due to the geographical environment, including both natural
and human factors. A special link must be established between the goods and their place
of origin, the natural and human factors, which are to be found exclusively in the
respective area. Appellation of origin protect only those products which comply with the
quality standards. Earlier, it protected only wines and spirits but later the appellation of
origin was extended to include other products such as dairy products like cheese and
butter, and poultry and plant products.
European Community Regulation like the “Wine Regulation” (Council Regulation EEC
No 2392/89 July 1989) does not speak about appellation of origin or GI as such, it
stipulates that the description and presentation of wine and grape musts should not be
incorrect or likely to cause confusion or mislead the persons who are intended to use.
Council Regulation (EC) No 510/2006 of 20 March 2006 enacted for the protection of
geographical indications and designations of origin for agricultural products and
foodstuffs. This Regulation establishes the rules for protecting designations of origin and
geographical indications for agricultural products and foodstuffs intended for human
consumption in the EU. Geographical names and other terms associating a product with a
particular place have great commercial importance for the consumer, who often makes
choices on the basis of such indications. Therefore national, international and community
jurisdictions provide for the protection of geographical indications and designations of
origin.
This Regulation sets out provisions on agricultural products and foodstuffs (excluding all
wine-sector products, except wine vinegar) from a defined geographical area. If there is a
link between the characteristics of certain products and their geographical origin, they
may qualify for either a protected geographical indication (PGI) or a protected
designation of origin (PDO). The use of corresponding EU symbols on the labels of such
products provides consumers with clear and concise information on their origin. The
introduction of these two terms also benefits the rural economy, since it boosts farmers'
income and maintains the population in less favoured or remote areas.
Designation of origin and geographical indication
The two types of geographical description are different. A PDO (Protected Designation
of Origin) covers the term used to describe foodstuffs which are produced, processed and
prepared in a given geographical area using recognised know-how (such as Mozzarella di
Bufala Campana). A PGI (Protected Geographical Indication) indicates a link with the
area in at least one of the stages of production, processing or preparation (such as Turrón
de Alicante). The link with the area is therefore stronger for PDOs.
Names that have become generic, i.e. those that, although linked to the place or region
where the product was initially produced or sold, denote the common name of a product
in the EU (such as Dijon mustard) may not be registered.
Names that conflict with the name of a plant variety or an animal breed and as a result are
likely to mislead the consumer as to the true origin of the product may not be registered.
A name wholly or partially homonymous with that of a name already registered under
this Regulation must only be registered with due regard for local and traditional usage
and the actual risk of confusion.
A PDO or PGI may not be registered where the reputation and the length of time it has
been used are liable to mislead the consumer as to the true identity of the product.
Product specification
In order to obtain a PDO or PGI, agricultural products or foodstuffs must comply with the
product specification, which must include the following aspects:
 the name of the PDO or PGI;
 the description of the product, with an indication of its main physical, chemical,
microbiological and organoleptic properties;
 definition of the geographical area;
 information proving that the product originates from that area;
 information justifying the link between the product and the geographical area;
  description of the production method and, if appropriate, the authentic and
unvarying local methods as well as information concerning packaging that takes
place in the defined geographical area in order to safeguard quality, ensure the
origin or ensure control;
 the name and address of authorities or bodies that verify compliance with the
provisions contained in the product specification;
 any specific labelling rule for the product in question;
 any requirements laid down by Community or national provisions.

Application for registration

Applications for registration may only be made by a group of producers or processors or,
in exceptional cases, natural or legal persons. If the application concerns a cross-border
area, it may be made jointly by several groups.
The application for registration must include:
 the name and address of the applicant group;
 the product specification;
 a single document setting out the main aspects of the product specification and a
description of the link between the product and its geographical area of origin.

Applications are made to the Member State on whose territory the geographical area is
situated. The Member State examines it and initiates a national objection procedure,
ensuring that the application is sufficiently publicised and allowing a reasonable period
within which any natural or legal person having a legitimate interest and established or
resident on its territory may lodge an objection. Where the Member State deems the
application to be acceptable, it forwards the single document to the Commission together
with a declaration stating that all the necessary conditions have been met.
Where an application for registration concerns a geographical area in a third country, it
has to be sent to the Commission either directly or through the authorities of that country.
Examination by the Commission
The Commission checks that the application is justified and that it meets all the necessary
conditions. This check must be carried out within twelve months. Each month, the
Commission publishes the list of the names for which registration applications have been
submitted. If the conditions are met, it publishes in the Official Journal of the European
Union (OJ) the single document and the publication reference of the product
specification. If the conditions are not met, the Commission will reject the application for
registration.
Objections
Within six months from the date of publication in the OJ, any Member State, third
country, natural or legal person having a legitimate interest may object to the registration
proposed by lodging a duly substantiated statement. Proof must be given that either the
product specification fails to meet the required conditions, or that the name conflicts with
a trade mark or agricultural product or that it has become a generic name.
Where the Commission receives no admissible objection, it will register the name.
Where the Commission judges that an objection is admissible, it invites the interested
parties to engage in the appropriate consultations. If they reach an agreement within six
months, they notify the Commission of all the factors that enabled that agreement to be
reached, including the opinions of the applicant and the objector. If no agreement is
reached, the Commission takes a decision, bearing in mind traditional fair practice and
the actual likelihood of confusion.
Names, indications and symbols
A registered name may be used by any operator marketing products conforming to the
corresponding specification. The terms "protected designation of origin" and "protected
geographical indication" or the associated EU symbols must be included on the labelling
of products originating in the EU and may be included on those originating in third
countries and sold under these designations.
Amending the product specification
A group may request the product specification to be amended to take into account
technical or scientific developments or to revise the definition of the geographical area.
Applications for amendments are made in accordance with procedures similar to those for
registering a designation.
Official controls
Controls on the requirements set out in this Regulation are carried out under Regulation
(EC) No 882/2004. Verification of compliance of a product with its product specification
may be ensured by one or more public authorities set up for this purpose or by one or
more product certification bodies. For EU designations, the costs of such verification are
to be borne by the operators subject to those controls.
Cancellation
If the Commission deems that compliance with the conditions laid down in the product
specification for a protected designation is no longer ensured or if any natural or legal
person with a legitimate interest requests cancellation of the registration, the Commission
may initiate the procedure to cancel a registration.
Protection
Registered names are protected against:
 any misuse, imitation or evocation, even if the true origin of the product is
indicated or if the protected name is translated or accompanied by an expression
such as "style", "type", "method", "as produced in", "imitation" or similar;
 any other false or misleading indication as to the provenance, origin, nature or
essential qualities of the product, on the inner or outer packaging, advertising
material or documents relating to the product concerned, and the packing of the
product in a container liable to convey a false impression as to its origin;
 any other practice liable to mislead the consumer as to the true origin of the
product;
 commercial use of a registered name in respect of products not covered by the
registration if they are comparable to the products registered under that name or if
this use exploits the reputation of the protected name.

Relations between trade marks, designations of origin and geographical indications

Where a PDO or a PGI is registered, applications to register trade marks corresponding to
one of the above situations and relating to the same class of product are refused if they
are submitted after the date of submission of the registration application to the
Commission.
In certain cases specified in the Regulation, a trade mark may co-exist with a
geographical indication or a designation of origin.
Committee procedure
The Commission is assisted by the Standing Committee on Protected Geographical
Indications and Protected Designations of Origin.
Fees
Member States may charge a fee to cover their costs, including those incurred in
scrutinising applications for registration, statements of objection, applications for
amendments and requests for cancellations under this Regulation.
The purpose of this Section is not to provide readers with an exhaustive list of difficulties
that EU GI producers might encounter in protecting their GIs in third countries. Rather, it
seeks to highlight some of the principal problems that EU GI producers have met over
recent years. European GI producers have been pushing for better protection of GIs at the
international level due to the increasing number of misappropriations they face
throughout the world. The abuse of EU GIs has a strong adverse economic impact. The
abuses limit access to certain markets and undermine consumer loyalty. Moreover, the
fight against these abuses is extremely costly. It is interesting to note that, in practice,
there is a clear link between the reputation of the GI product and the number of abuses:
the more famous the GI product is, the more misappropriations it faces, the more
important the need for GI protection is, the more costly it becomes. Most countries have
a legal framework for the protection of GIs. However, the legal instruments and the level
of protection available vary considerably from one country to another. The first difficulty
for EU producers is to understand what legal framework is available in the country where
protection is sought as well as the level of protection that they will enjoy. This is an
important first step as the level and modalities of protection differ widely if the producers
have to rely on unfair competition and consumer protection acts, passing off actions,
trademark laws or a sui generis protection of GIs with or without registration. Many EU
GI producers have secured the protection of their name outside the EU. Wine and sprits
producers have done so mainly thanks to bilateral agreements concluded between the EU
and some countries. These agreements have brought positive results for EU producers,
although some problems remain for famous EU GI wines which continue to face abuses
in some of these countries. These GIs still struggle to secure protection in many
countries, as they are considered generic or semi-generic names, hence not entitled to
protection. The other EU GIs have not been protected via bilateral agreement signed by
the EU. As a result, the protection of these names outside the EU has been left entirely in
the hands of producers themselves.
Case study: Spanish champagne case
In the present case the Spanish wine was so like champagne that it is not improper to call
it champagne with the adjective ‘Spanish’, but for the purpose of the name was calculated
to deceive and was concerned with unfair trading. In this case the plaintiff’s claim was
that champagne produced in France and had high reputation. The main defense of the
defendant was that the prefix ‘Spanish’ was easy to avoid any confusion. The Judge held
that, the same wine sold in Spain under the name “perelada” not the name Spanish
champagne. The name champagne was selected only for the British market. There was
an evidence of the brochure which was distributed by the defendant, entitled ‘giving a
champagne party’ which was found by the judge to be plainly an attempt to secure to the
sell of the defendant company’s wine, with advantage of the goodwill connected with the
word ‘champagne’. In his view, persons whose life or education had not taught them
much about the nature and production of wine, but who from time to time want to
purchase champagne, as the wine with great reputation, likely to be misled by the
description “Spanish champagne”. Based on the above findings, the action succeeded and
the defendants were injuncted from passing off.
6.6 Geographical indication protection in India
In India, the legal system for GI protection has very recently been developed. The
Geographical Indications of Goods (Registration and Protection) Act was enacted in
1999 and has come into force in September 2003 (hereafter called GI Act).
The need for separate legislation for GIs in form of the GI Act was felt in India due to
two reasons. First, the controversial patenting of Basmati rice by a US-based company,
Rice Tec. and the widespread report of tea from other countries being passed off as
Darjeeling tea. India realized that if it needed to protect its own geographical indications
globally, it needed to protect them at the national level to begin with. The second reason
is related to institutional commitment. Being a signatory to the TRIPS agreement, India
is obliged to set into place national intellectual property laws which also include GI laws.
The new Indian GI Act has an elaborate procedure for registering GIs at an office located
in the southern city of Chennai. Authorities claim that this Act has two key
characteristics: (i) protection of producers against counterfeiting and misleading
commerce, and (ii) striking of balance between trademark and GI protection. According
to this Act, once a GI is registered, any person claiming to be the producer of the good
designated by the registered GI can file an application for registration as an authorized
user. The GI Act is to be administered by the Controller General of Patents, Designs and
Trade Marks – who is the Registrar of GIs.

The Geographical Indications Act, 1999 came into force on 15 th September, 2003
followed by very first GI registration in India filed on 27 th October 2003 for Darjeeling
Tea. Since then GI registration has come a long way. Till now the total number of GI
registrations is 120.

In the fiscal year 2009-2010 a total of 14 GI have been registered. Last year is known for
its most GI controversies. The very first GI registration in the year 2009 came up with
“Tirupathi Laddu”. The controversy surrounding this GI engulfed the entire Country
wherein the heart of the controversy was whether religious offerings should be given
commercial significance by granting GI on them. This controversy had not even settled
when another one cropped up with GI application being filed by SIEMA (Southern India
Engineering Manufacturers’ Association) for the pumpsets manufactured in Coimbatore.
Moreover a lengthened objection of GI “Peruvian Pisco” for Alcoholic Beverage, filed in
the year September 2005, came to an end with its registration.

6.6.1 Criteria
Indian GI Act specifies the goods to be either agricultural goods or natural goods or
manufactured goods that can qualify as a GI. Further, in the Indian Act, if a producer
applies for a GI for a manufactured good, he or she must make sure that at least one of
the activities of either the production or processing or preparation of the good must take
place in the territory. In that sense, the GI Act is more restrictive than the TRIPS
definition.
This can be explained by taking ‘‘Darjeeling tea’’ as an instance. Darjeeling tea involves
manufacture because the green tea leaves plucked from the tea bushes have to go through
a range of rigorous processing stages before turning into the final product (called ‘‘made-
tea’’), which is ultimately sold in the market. Now, even if the tea leaves are plucked
from the Darjeeling region, the GI Act will not allow the final product to be designated
as Darjeeling tea, unless the processing also takes place within the Darjeeling region.
The TRIPS definition will, however, allow the final product to be designated as
Darjeeling tea, even if the processing takes place outside Darjeeling, because no matter
where the processing takes place, the given quality or characteristics (such as flavor, etc.)
of the final product will essentially be attributable to its geographical origin.

GIs are valuable property to producers from particular geographical region. They have
basically three criteria:
1. They identify goods as originating in a particular territory or region or locality in
that territory;
2. They suggest the consumers that the goods come from an area where a given
quality, reputation or other characteristics of the goods is essentially attributable
to their geographic origin;
3. They promote the goods of producers of a particular area.

There are other factors are needed to be considered

1. Section 9 of GI Act prohibits the registration of certain GI. Confusion regarding

GI may be visual or phonetic in nature, i.e. contextual confusion or as to trade
origin. The purchaser should not be deceived or induced to believe that the goods
sold under the GI emanates from the same trade source.
2. Where producers apply for registration of GI which are used in contravention of
the provisions of any existing statute the application shall be refused.
3. A GI which comprises or contains scandalous or obscene matter is not registrable.
4. A GI which comprises or contains any matter likely to hurt the religious
susceptibilities of any class or section of the citizen of India is not registrable.
5. A GI which would otherwise be disentitled to protection in a court is not
registrable.
 6. Whether the name has become generic (has lost its original meaning and has
become the common name), account shall be taken of all factors including the
existing situation in the region or place in which the name originates and the area
of consumption of the goods. A GI which, although literally true as to the
territory, region or locality, in which the goods originate, but falsely represents to
the persons that the goods originate in another territory, region or locality is not
registrable.
7. Registration of homonymous GI – Under Section 10 of GI Act the register in that
case would have to consider the practical question to differentiate the two
homonymous indications ensure equitable treatment of the producers of the goods
concerned and avoid confusion in the market.

6.6.2 Procedure for Registration in India

Various stages of filing and granting of geographical indications are explained in the
Figure 1. In the first step, the producers’ organization or a collective body of producers,
like the Tea Board of India for example, has to file an application in the prescribed form
to the GI authority in India.

The details that need to be included in the application for registration of GI are:
 How the indication serves to designate the goods as a GI
 The class of goods
 The territory
 The particulars of appearance
 Particulars of producers
 An affidavit of how the applicant claim to represent the interest
 The standard bench mark or other characteristics of the GI
 The particulars of the special characteristic
 Textual description of the proposed boundary
 The growth attributes in relation to the GI pertinent to the application
 Certified copies of the map of the territory
  Special human skill involved, if any
 Number of producers and
 Particulars of inspection structures, if any, to regulate the use of GI

This application will be examined by experts appointed by GI registry; if accepted then

the application will be advertised in the GI journal for public scrutiny. However, if the
application is objected by experts then a hearing will take place in special courts
designated for GI purposes. If the court refuses to recognize the genuineness of the
application then the applicants can further appeal to the Intellectual Property Appellate
Board (IPAB).
After advertised in a GI journal, if the application did not receive any objection from any
public organization or individual, then it is deemed as accepted to be awarded GI
certification. However, if any individual or producer organization or NGO objects the
validity and genuineness of the GI, then again the applicants can appeal to IPAB and a
hearing takes place. If allowed, then the application goes for acceptance and a registration
certificate is issued.
Figure 1: Granting procedure of Geographical Indications in India

Source: GI registry, DIPP, India

6.6.3 Duration:
Renewal is possible for further periods of ten years. If a registered GI is not renewed, it is
liable to be removed from the register.

Section 18 provides that the registration of a geographical indication and authorized user
shall be for a period of ten years. Both the registration may be renewed from time to time
on the payment of prescribed fee for a term of ten years from the date of last renewal of
registration for an indefinite period. However, if the renewal is not affected within the
prescribed or extended time, the geographical indication or the authorized user, as the
case may be, is liable to be removed from the records. Provision is also made for the
restoration of registration.
Where a GI has been removed from the register114 for failure to pay the renewal fee, it
shall nevertheless be deemed to be a GI on the register, unless the tribunal is satisfied
either – (a) that there has been no bonafied trade use of that GI within two years
immediately preceding its removal; or( b) that no deception or confusion would be likely
to arise from the use of that GI115.

6.6.4 Rights:
Section 21 conferred by registration of a GI. The registration of a GI shall provide,
1. To the register, proprietor116 and the authorized users – the right to obtain relief in
respect of infringement of such GI;
2. To the authorized user – the exclusive right to the use of GI in relation to the goods
in respect of which the GI is registered.
The right of authorized user to use GI is subject to the conditions and limitations to
which the registration is subject. Two or more authorized user of a registered GI shall
have co-equal rights.
The Act makes it clear that the rights conferred by registration shall not be assigned,
transmitted, licensed, pledged or mortgaged (Section 24).

6.6.5 Overlap between trademark and GI

GIs are as valuable as trademarks, yet the functions of GI are different from that of the
trademarks. Trademarks are owned by enterprises and used to identify products and
services in the market, in particular to distinguish them from competing products and
services, whereas a GI never belongs to a particular enterprise. A GI can be used by
several enterprises at the same time, provided that the products for which it is used
originate in the geographic area to which the indication refers.
114
Under section 19 of GI Act 1999
115
Geographical indication of Goods (Registration and protection) Act 1999
116
According to Section 2 (1)(n) in relation to GI means any association of person or of producer or an
organization for the time being entered in the register as proprietor of the GI
A collective mark or certification mark may serve to indicate the origin of goods or
services, and may be suitable for the protection of GI. A collective mark is a mark which
is only allowed to the members of a collective body like an association or co-operative of
manufacturers, producers or traders. It is owned by the association which exclusively
grants its members the right to use it. A GI being registered as collective mark, the
association that owns it has the right to prohibit its use by persons who are not members
of the association. Ordinarily regulations govern the use of the collective mark, with the
application for registration. National law determines whether a GI is registrable as a
collective mark. Certain national trademark laws have expressly excluded the registration
of GI as collective marks.
Certification marks are owned by a certification authority which may be association or
council which is not engaged in the production or the trade of the products concerned.
The owner of the certification marks ensures that the goods bearing the certification mark
possess the certified quality. Certification mark may be used to certify the origin of
products or services. As for the collective marks, the application for the registration of a
certification mark, it has to be accompanied by regulations, which govern the use of such
mark.
Service Marks, Certification Marks, Collective Marks
Trademarks also include service marks, certification marks and collective marks. Service
marks are names used to identify a service, as opposed to a good (e.g. TATA GROUP is
a service mark, whereas TATA INDICA for a car is a trademark) and function like
trademarks.
Certification marks are used to indicate that a good or service complies with a
manufacturing standard or specification (e.g. WOOLMARK which certifies that the
goods on which it is used are made of 100% wool), or that those who provide a service
have certain level of skills or training.
A Collective mark is a mark that belongs to an association which authorizes its members
to use the collective mark (e.g. UAW for United Auto Workers).
6.6.6 Remedies
If the designation or presentation of goods misleads the user by giving a false impression
regarding its geographical origin then it would amount to infringement of that registered
GI. It would also constitute the act of unfair competition and passing off in respect to the
registered GI (Section 22).
The certificate of registration granted by the registrar is a prima facie evidence of validity
and is admissible in all Courts and before the Appellate Board (Section 23).
The Act provides civil and criminal remedies for falsely dealing with GI. Imprisonment
or fine or both are prescribed for falsifying and falsely applying GI (Section 38), for
applying false GI (Section 39), for selling goods to which false GI is applied (Section
40), for falsely representing a GI as registered (Section 42), for improperly described a
place of business as connected with the GI registry (Section 43) and for falsification of
entries in the register (Section 44). In case of groundless threat of legal proceedings, the
Act provides for a declaration to the effect that the threats are unjustifiable and an
injunction against the continuance of the threats and may recover damages for the loss
sustained (Section 73).The Act exhaustively deals with concept and the procedural
formalities to get protection. The rules have also been framed. This Act together with the
international treaties provides a well founded and effective protection for the GI from the
hands of the unscrupulous offenders.

Case study: Darjeeling tea case

Darjeeling tea has distinctive flavor, taste and pleasure. These characteristics are
combination of the environment, climatic condition, cultivation methods, harvesting and
post-harvesting processing etc. The Tea Board of India and the Darjeeling Planters
Association have been involved at various levels in protecting this high-reputation
common heritage. In the year 1983 the Tea Board developed a ‘Darjeeling’ logo to
protect Darjeeling as a GI. Darjeeling logo and word registered in various jurisdiction,
including UK, US, Canada, Japan, Egypt and some European countries as a
trademark/certification trademark/ collective mark. In India it is registered as a
certification mark and after 15th September 2003 these are registered as a GI. At the time
of export the Tea Board adopted vigorous vigilance and strict protection measures to
ensure 100% authentic Darjeeling tea in all their consignments. But, there are several
instances of attempted undue registration have been found, some of these have been
challenged through oppositions and cancellations and some through negotiation. In
Japan, Sri Lanka and Russia still some decisions are pending and some of them
successfully concluded. The key issues faced by the Tea Board are mixing Darjeeling tea
with tea produced from different sources, price stability of the brand, and tasting
consistency. The use of the expression ‘Darjeeling’ would be applicable to a blend of
100% Darjeeling tea and prescribed standard by the Tea Board. However if Darjeeling
tea is one of the component of a tea mixture then the Tea Board requires ratio, name and
percentage of each of the components including Darjeeling tea shall be clearly indicated
on the packaging; the objective being to ensure that there is no misrepresentation
amounting to passing off as to content and origin of mixture and thus protect the actual
value of Darjeeling as a GI. Moreover, consumers must know how much Darjeeling tea
is contained in the mixture.
Unfortunately last few years the Tea Board has spent huge money for watch agency and
fighting infringements in overseas jurisdiction to protect ‘Darjeeling’ GI.
Case Study: Pochampally Ikat case
The Pochampally Ikat case was the first law suit instituted under the GI of Goods
(Registration and Protection) Act 1999. Pochampally Ikat is fabric made of natural
materials out of cotton or silk or a combination of both having design of the diffused
diamond or ‘chowka’ design. This fabric is a traditional art practiced in and around the
pochampally village in Warangal district of Andra Pradesh. So, GI holders of
Pochampally Ikat have the production and marketing rights and legal right to initiate the
infringement action. In May 2005 there was an incidence happened in the form of false
GI of ‘Hyco Pochampally’. Further investigation revealed the manufacturing and
retailing the sarees with the label ‘Hyco Pochampally’ which is visually and phonetically
similar to the GI and product Pochampally Ikat. The adoption of the word pochampally
in Hyco Pochampally in respect of identical goods would lead to confusion and
deception in the minds of the consumers leading to the passing off and unfair
competition. Thus the adoption of the mark Hyco Pochampally is the dishonest and mala
fide attempt to derive unfair advantage by creating the impression that the products have
some connection, association and affiliation with the Pochampally Ikat. So, suit decreed
in favour of Pochampally Ikat GI holders.
Information provided by the Geographic Indication Registry , Chennai, India

Following GI registrations were granted in financial year 2009-2010:- 

Sl No. GI Appliction number GI Goods
1. 121 Tirupathi Laddu Foodstuff
2. 125 Mango MalihabadiAgricultural
Dusseheri
3. 128 Puneri Pagadi Handicraft
4. 99 Banaras Brocades andHandicraft
Sarees
5. 127 Tangaliya Shawl Handicraft
6. 130 & 141 Vazhakulam Pineapple Agricultural
7. 131 Devanahalli Pomello Agricultural
8. 132 Appemidi Mango Agricultural
9. 133 Kamalapur Red Banana Agricultural
10. 138 Santipore Saree Handicraft
11. 144 Cannanore HomeHandicraft
Furnishings
12. 43 Peruvian Pisco Manufactured
13. 147 Sanganeri Hand BlockHandicraft
Printing
14. 152 Balaramapuram SareesHandicraft
and Fine Cotton Fabrics

6.7 Summary
The concept of GIs was existed from the late 19 th century, which is effected from the
period of Paris Convention of the protection of industrial property. At that time
designation of source and appellation of origin were used for the concept of GI. With
time, the relevance of GI increased and the international community was to forced to
look upon the matter. TRIPS mandates afford protection for GI for the member
countries. Many countries enacted domestic legislation to protect their GIs; India has
also enacted Geographic Indications of Goods (Registration and Protection) Act in 1999
to protect the GI.
6.8 Self examination questions:
1. Discuss the blurring overlap between the concept of GI and trademark.
2. Analyze the necessity of separate legislation for protection of GI.
3. Under controlled climatic condition tea, exactly similar to Darjeeling tea was
produced in France, the producer named it as Darjeeling tea and claimed GI. Are
they entitled to protection under the category of GI, explain it.
4. Discuss international agreements in context of GI to establish importance of
protection of GI.
5. What are the legal measures taken by EU for protection of GI and explain the reasons
behind it.

Bibliography:
1. Council Regulation (EC) No 510/2006
2. Clark W. Lackert (2007) International symposium on Geographical indication,
Jointly organized by WIPO and SAIC of People’s Republic of China,
WIPO/GEO/BEI/07/3
3. Dr. P. Ganguly (2009) Geographical Indications: Its Evolving Contours, prepared by
MVIRDC World Trade Centre Mumbai, published by SVKM’s NMIMS University’s
Institute of Intellectual Property Studies at www.iips.ac.in
4. Discussion Paper from the international Food and Agriculture Trade Policy Council
(2003) Geographical Indication, available online at: www.agritrade.org
5. Ina Dimireva (2010) Protection of Geographical Indications and Designations of
origin, available online at: http://www.eubusiness.com/topics/food/origin-protection/
6. INTA Issue Brief (2000) Lisbon Agreement for the protection of Appellation of
Origin: Violation of TRIPS Agreement, prepared by the Issue Advocacy
Subcommittee of the External Affairs Committee.
7. Matthijs Geuze (2009) Protection of Geographical Indications – International Legal
Framework, National Roving Seminars on GI
8. Sachin Chaturvedi (2002) India, the European Union and Geographical Indications
(GI): Convergence of Interests and Challenges Ahead, RIS Discussion Paper.
9. V. K. Ahuja, (2007) Law Relating to Intellectual Property Rights, LexisNexis
Butterworths, Chapters 35 – 44.
10. WIPO Summer School Reading Material (2008) prepared by WIPO Worldwide
Academy for WIPO Summer School Programs, Chapter 3.