ASSIGNMENT-13

The fruit of one's labour shall not be enjoyed by another

Proprietors, who have registered their trademarks under the Act, are given with the exclusive
right to use their trademarks in relation to the goods or services for which it has been registered.
Suppose company 'A' launched electronic goods under the registered brand name and logo 'X'
and subsequently company 'B' launched a range of kitchen appliances under the same brand
name and logo 'X'. Company 'B' has used the trademark without the authorization of its
registered proprietor. Therefore, trademark rights of company 'A' would be said to have been
infringed by company 'B' in accordance with sections 29 and 30 of the Act.

The infringing mark should be identical or deceptively similar to the registered trademark in
order to establish a trademark infringement suit. The Act provides civil and criminal remedies
against the parties who use their trademark without authorization. According to section 134(2) of
the Act, the proprietor of the trademark can file a trademark infringement suit in a court of
competent jurisdiction, at his place of residence or business. The suit would have to be instituted
within three (3) years from the time of gaining knowledge about the infringement. However,
infringement cases usually consist of a series of acts and transactions. For example, each sale of
an infringed product by a company would be considered as a separate transaction. Therefore, the
courts have taken the view that a suit can be filed within three (3) years of each act of
infringement.

Benefits of an Effective Judicial System

The case of  Cadbury India Limited and Ors. V Neeraj Food Products [142 (2007) DLT
724], gave the Indian courts an opportunity to look into circumstances when the trademark of a
party is deceptively similar to that of another. The plaintiff was into the business of production
and manufacture of confectionary and chocolate products and they were the registered proprietor
of the trademark 'Gems' among various other trademarks. The plaintiff claimed that the chocolate
products introduced by the defendant under the trademark 'JAMES BOND' was similar in shape,
size and packaging, to their own chocolate products. Hence, the plaintiff filed an application
under order 39 rule 1 and 2 of the Civil Procedure Code, 1908, to restrain the defendant company
from using the trademarks 'JAMES' or 'JAMES BOND', or any other trademark which was
deceptively similar to 'Gems'. The court observed that the packaging of the defendant's products
were so similar to the packaging of the plaintiff's products that they were likely to deceive
unaware purchasers. The court took the view that the trademark of the defendant was deceptively
or confusingly similar to the plaintiff's registered trademark. The court allowed the application of
the plaintiff and restrained the defendant from using their trademarks or any other trademarks
that would be deceptively similar to the plaintiff's trademark. The court took a steady view on the
situations in which products or marks of one proprietor were deceptively similar to that of
another. This case helped in strengthening the reliance placed on Indian courts by the registered
proprietors of trademarks.

The 2009 judgment of the Delhi High Court in the case of Clinique Laboratories LLC and
Anr. V Gufic Limited and Anr. [I.A. No. 15425/2008, I.A. No. 217/2009 and I.A. No.
2769/2009 in CS (OS) No. 2607/2008] further cemented the rights of the proprietors of registered
trademarks. The plaintiff was the registered proprietor of the trademark 'CLINIQUE', whereas
the defendant was the registered proprietor of the trademark 'CLINIQ'. The plaintiff filed a
rectification application to the Registrar of Trademarks in order to cancel the trademark of the
defendant. Subsequently, the plaintiff filed for an injunction to restrain the defendants from
passing off their goods as the goods of the plaintiff. The plaintiff contented that their goods were
superior and more expensive than that of the defendant and even cited advertisements of their
product in leading magazines. The contentions of the defendants regarding the incapability of a
person to sue the proprietor of a registered trademark, and the large number of people who use
the word 'clinique', did not impress the court. The court observed that a suit for trademark
infringement is maintainable even if the defendant is also the proprietor of a registered
trademark. Therefore, the court granted an interim injunction in favour of the plaintiff until the
rectification application was disposed of by the Registrar of Trademarks.

In the infamous case of The Coca Cola Company V Bisleri International Private Limited
and Ors. [I.A. No. 2861/2009, I.A. No. 12490/2008, I.A. No. 13904/2008 and I.A. No.
13905/2008 in CS (OS) No. 2166/2008], an issue arose as to whether the plaintiff had the right to
register the trademark 'MAAZA' outside India. The defendants had sold their trademark rights,
formulation rights, know-how and goodwill of some of their soft drink products, including
'MAAZA', to the plaintiff through an agreement. In 2008, the defendants learned that the plaintiff
had filed for the registration of the trademark 'MAAZA' in Turkey. Subsequently, they sent a
legal notice to the plaintiff repudiating the agreement between the parties which ceased the
plaintiff from manufacturing the soft drink or using its trademarks. The defendants had also
stated about their intention to use the trademark and the product in India. Thereafter, the plaintiff
claimed for permanent injunction and damages against the infringement of its trademark. The
defendants contended that 'MAAZA' was sold to the plaintiff for distribution and sale within
India. Whereas, the plaintiff claimed that they were the absolute owners of the formulation and
know-how. After hearing the detailed contentions and arguments of the parties, the High Court
of Delhi held that the plaintiff was the registered owner of the trademark 'MAAZA' and granted
an injunction in favour of the plaintiff. This judgment gained fame in the public eye due to the
prompt and precise judgment by the Indian judiciary.

ASSIGNMENT- 6
 1. Design is considered a statutory right whereas passing off and trade mark are considered
as sui generis right.  A statutory right entails its origin and extinguishment happens in
terms of the statue.  Prior publication of a design is a ground for its revocation under
Design Act.  On the other hand, Section 9 (3) prohibits registration of certain marks. 
There is an overlap between design and trade mark in the matter of shape of articles.

2. Way back in 1999 in the case of Smithkline Beecham Plc vs. Hindustan Lever Ltd.,the
Delhi High Court accepted that there could be passing off in design dehors the Design
Act.  The Court held:

"13.I am, therefore, inclined to hold that passing off action is also available to case of design and
such right could be enforced provided the same is available in accordance with law even in a
case of design, for otherwise a latitude would be given to a manufacturer to misrepresent and to
deceive unwary customers by manufacturing and selling its products as that of products of some
other manufacturer or seller."

3. Thereafter, the Courts have granted injunction where it was found that the act of the
Defendant could lead to a misrepresentation, the Defendant was restrained.  In the case
of Gorbatschow Vodka KG vs. John Distilleries Ltd., the Bombay High Court restrained
the Defendant from using the same shape of a bottle, while holding:

22. The test is whether the shape that has been adopted by the Plaintiff is one that is adopted
capriciously, purely to give the article a distinctive appearance or characteristic of the goods of
the manufacturer. If that be so, the manufacturer may be able to establish that he has a reputation
and goodwill in the distinctive appearance of the article itself which would furnish a cause of
action in passing off.

4. The full bench of the Delhi High Court in the case of Micolube India Ltd. vs. Rakesh
Kumar & Ors., by a majority held that a passing off action lies in the case of a design
also.  The Court held that:

i. A plaintiff could institute a suit for infringement of a design against a defendant,

who was also a holder of a registered design. The expression "any person" found
in Section 22 of the Designs Act would not exclude a subsequent registrant as,
according to us, no such words of limitation are found in said Section.

ii. The plaintiff would be entitled to institute an action of passing off in respect of a
design used by him as a trade mark provided the action contains the necessary
ingredients to maintain such a proceeding. The argument that such a suit could be
 instituted only after the expiry of the statutory period provided under Section 11
of the Designs Act, does not find favour with us. This is for the reason that in a
given fact situation the plaintiff may have commenced the use of the design as a
trademark after its registration. While Section 2(d) of the Designs Act excludes
from the definition of a design, any trademark which is defined as such in clause
(v) of sub-Section (1) of Section 2 of the 1958 Act or property mark, as defined in
Section 479 of the IPC, or any artistic work as defined in clause (c) of Section 2
of the Copyright Act - the use of the design as a trademark post its registration, is
not stipulated as a ground for cancellation under Section 19 of the Designs Act.

5. In the case of Eicher Goodearth Pvt. Ltd. vs. Krisha Mehta, the Delhi High Court
restrained the Defendant from use of design on fabric material.

6. In the recent case of Cello Household Products vs. Modware India, the Bombay High
Court while restraining the Defendant from using same shape of bottles on the ground of
infringement of design and passing off held that:

"28. I must reject too Mr Tolia's argument of mosaicing. I believe it to be misapplied to this case.
It is not a requirement of the law in infringement or passing off in relation to a design that every
single aspect must be entirely newly concocted and unknown to the history of mankind. If that
were so, we should never see any new or original design at all. It is a general rule that
"mosaicing" of prior art, i.e., combining selected features in different prior art publications, is not
permissible when assessing whether an invention is new..."

7. Courts have protected shape of articles, which are novel on the ground of passing off.  In
these cases, Court have considered the reputation of the product through the shape,
novelty in the shape to evaluate whether the shape could be considered as having attained
secondary meaning.

8. It is important to register shapes as Design.  However, if a shape which is consumer

facing, has novelty and unique attributes, it should be registered as a trade mark also. 
Benefits of registration as a trade mark assists in stronger enforcement and protection of
the shape.

ASSIGNMENT-11
The TRIPS provides minimum standards of protection of industrial designs. The Designs
Act, 2000 duly adheres to the said minimum standards by providing protection to original
and aesthetically appealing designs capable of being applied commercially and is in
consonance with the changes in technology and economic advances.
Term of Design The total period of validity of registration of an Industrial Design under the
(Indian) Designs Act, 2000 is 15 years. Initially, a design is registered for a period of 10
years, giving the owner of registered design exclusive rights to sell, make or import the
articles and initiate a legal action against infringement. This initial period of 10 years can be
further extended by a period of 5 years on the payment of renewal fees.

The design should be new or original, not previously published or used in any country before
the date of application for registration. The novelty may reside in the application of a known
shape or pattern to new Subject matter. Practical example: The known shape of “Kutub
Minar” when applied to a cigarette holder the same is registrable. However, if the design for
which application is made does not involve any real mental activity for conception, then
registration may not be considered.
The design should relate to features of shape, configuration, pattern or ornamentation applied
or applicable to an article. Thus, designs of industrial plans, layouts, and installations are not
registerable under the Act.
 The design should be applied or applicable to any article by any industrial process. Normally,
designs of artistic nature like painting, sculptures and the like which are not produced in bulk
by any industrial process are excluded from registration under the Act.

The features of the design in the finished article should, appeal to and are judged, solely by
the eye. This implies that the design must appear and should be visible on the finished article,
for which it is meant; Thus, any design in the inside arrangement of a box, money purse or
almirah may not be considered for showing such articles in the open state, as those articles
are generally put in the market in the closed state.

Any mode or principle of construction or operation or anything which is in substance a mere

mechanical device, would not be registerable design. For instance, a key having its novelty
only in the shape of its corrugation or bend at the portion intended to engage with levers
inside the lock associated with, cannot be registered as a design under the Act. However,
when any design suggests any mode or a principle of construction or mechanical or other
action of a mechanism, a suitable disclaimer in respect thereof is required to be inserted on
its representation, provided there are other registerable features in the design.

The design should not include any Trade Mark or property mark or artistic works as defined
under the Copyright Act, 1957.

ASSIGNMENT-12
As per Section 2(1)(e) of the Geographical Indications of Goods (Registration and
Protection) Act, 1999, a geographical indication refers to an indication capable of identifying
goods, including natural goods, agricultural goods, or manufactured goods, as manufactured or
originating in a country’s territory, or a locality or region within that territory, where a specific
quality, reputation, or any other attribute of such good is particularly a characteristic to its
geographical origin. In the case of manufactured goods, one of the activities corresponding to the
processing, production, or preparation of goods, should take place in the territory, region, or
locality.

As per the Indian Trademarks Act 1999, a trademark is defined as a mark, which can be

represented graphically and can distinguish the goods or services of one individual from those of
others.

Without any second thoughts, these definitions can deceive, and at times get mixed up.
Trademarks include the names of places as well for increasing brand awareness, reputation, or its
advertising, which has, in turn, led to a lot of perplexities in the minds of the layman, for instance
– Darjeeling Lounge of the ITC.
Let us now consider a few points that shall help us in differentiating between a trademark and
GI.

1. A trademark can be name, sign, or identity of a brand or business, which further

differentiates the goods or services of one business entity from the others. A technology
company is still a technology company; however, based on the manufacturer’s trademark,
it can be well-distinguished. For instance, Microsoft and Apple are the Registered
Trademarks of individual technology companies.

2. A Trademark Registration is usually filed by a single business entity or individual,

whereas Geographical Indication Protection is granted to a group of manufacturers, who
belong to a particular location, where the good was first originated.

3. Only a single person, business entity, or a manufacturer can use a registered trademark,
while all the producers or manufacturers in the same locality or region are permitted to
the use the same GI.

4. A trademark can be a word, letter, numeral (or numerals), a combination of numerals and
letters, hologram, sound, smell, an abbreviation, a name, or a device. However, GIs can
only be names or symbols corresponding to a particular region or place.

5. A trademark is a result of human creativity or intellect, which further determines its

uniqueness or distinctiveness. A trademark can be suggestive, arbitrary, or distinctive. On
the other hand, GIs identify the goods based on their place of origin. Factors like climate,
topography, human work (of a specific geographical location), amongst many others,
determine the nature of the GIs.

The prime similarity (and the only one) between a trademark and a GI is that both function as
source indicators. The distinction between the two in this context again corresponds to the fact
that a trademark identifies a service or good originating from a specific producer, while a GI
identifies the geographical location or region from where the good originates. As both these
forms of Intellectual Property (IP) work as a tool for identifying a good or service, people often
tend to get confused between a trademark and a GI.