CHAPTER - 6

INFRINGEMENT OF REGISTERED TRADE MARKS

Chapter IV of the Trade Marks Act, 1999 is an important chapter. It deals
with the effect of registered trade mark and unregistered trade mark, rights
conferred on the proprietor of registered trade mark and infringement of
registered trade marks under Sections 27 to 36. The reliefs in suits for
nfringement or for passing off is dealt with under Section 135. Now we will
proceed to consider these topics in detail.

1. Rights conferred by registration

registration is necessary. Now let
order to get protection under the Act,
proprietor on registration of
s disCuss what are the rights conferred on the unregistered trade mark.
see what is effect of
mark and then we will
Section 28 deals with rights conferred by registration.
protectable right in trade mark. They
a
of acquiring permission or licence ; and (iv) by
ere are four modes registration (iii) by
user; (ii) by registered, he acquires valuable
Uyby his trade mark
Sgnment. When a person getsSection 28 confers two rights to the proprietor
rights.
"gnts by reason of such
Of registered trade
mark. They are :
relation to the goods or services;
in
Exclusive right to use it
1.
of ts intringement against those
action in case
The ripht to take deceptive similar in
2. by using itor its
infringing it,
who might be goods or services.
relation to their
 MARKS
INERINGEMENT OF REGISTERED TRADE
61

The trade mark is a kind of property and is entitled to protection under the
law irrespective of its value in money so long as it has some business or
commercial value. It is not only the interest of the public but also the interest of
the owner which is subject concerning trade mark legislation.! The Registration
of his trade mark gives him exclusive right to the use of the trade mark :
connection with the goods in respect of which it is registered and if there js any
invasion of this right by any other person using a mark which is the same or
deceptively similar to his trade mark, he can protect his trade mark by an action
of infringement in which he can obtain injunction, damages or account of profits
made by the other person. In Indo-Pharma Pharmaceutical Works Lid Vs.
Citadel Fine Pharmaceuticals Ltd, the Madras High Court has held that the
registration of atrade mark shall give to the registered proprietor of the trade
mark, the exclusive right to the use of trade mark in relation to the goods
respect of which the trade mark is registered and to obtain relief in respect of
infringement of the trade mark in the manner provided under the Act.
The Act confers an exclusive use of the right in respect of a
in relation to the goods in respect of which it trade mark only
out by the Madras High Court in Parry and Co. been has registered. This is pointed
In this case, the appellant have Ltd., Madras Vs. Perry & Co."
been manufacturing
under the registered marks 'Parry's' and the
design confectionary products
which
Parry's' writen in script form in respect of sugar and contains the word
while the latter was confined to all all kinds of
kinds of confectionary,
were engaged in the
under the registered trademanufacture confectionary.
and sale of biscuits The respondents
mark since the
Perry (Registered in 1950). Theyear 195+
protested against the use of the words
amount to colourable imitation of Perry as according to them, appellant
High Court held that the that mark. In this they woula
tade mark only in Act gives an exclusive use of the connection, the Madras
relation to the
registered owner wants to goods right in
it has beenrespect of a
If a in respect of
use a mark which
particular class, he will have to
goods. The court observed that apply for
in
respect of several goods registered.
biscuits
registration is granted under the Trade and registration in respect all those
of
in a

cannot obviously give a right to its

confectionary. The court restrained the proprietorconfectionary identical.
Marks ofAct, with are
the markrespect
When
confectionary under label containing to use to biscuits, it
London Rubber Co Lid Vs. Durex
2 American Home Products
words,
Products and
r'Pespondent
erry's s
Another AIR
or from
Perry &
that mark for
selling
Co.'
their
Corporation
Pvt. 1959
Vs. Mac Laboratories
3 AIR 1998 Mad 347 at 350. Cal 56.
4 AIR 1963 Mad 46
Lsd. AIR 1986 SCC137.
 2. MARKS
Effect of
The owner of the
in respect of that trade
unr
rcgistered
trade egi
mark mark
stered trade mark
infringement. Without and he canhas becn given
the
thal
no person shall be regientitled
he
to
strationtakc
cannot bring legal
that actionexclusive rights
in case of
action.
Over damages for, the
any institute 27 its
Section provides
the provisO clause provides i
mark. This provISO clause,
inremedics
fringement unregiprocecdi
of
to the
to
stered
mark.
n g
trade prevent,
or to
oWner totake action against any the
person
recognises common
for law unregistered proprietor However
rights of the
of a
trade
another peson as services trade mark
provided by anotherpassing-off
person goods as the goods of
as the
An action for passing-off : The
action for
remedies thereof.
remety andlits gist is deceit. The law casts an passing-off is a
-off his own goods (or
work) common law
as if they hadobligation on the defendant
son hose goods has been been not to
passed-off by produced
another
by the
plaintiff.!for
nrotection his right. He S entitied to file a
of can avail remedy
rade mark is registered. suit for passing-off, as if his
An action for
passing-off is a common law remedy being in
ion for deceit, that is
pass1ng-off by a person of his own substance an
zoher: one of the ways,
It is goods as those of
nober in a manner calculated to whereby the goods of one trader are sold by
z due goods of the deceive the purchaser into thinking that they
former. This topic is disqussed in detail in a later chapter.
3. Infringement of registered trade mark
Ine registered proprietor of a trade
Orade mark in relation to the
mark is entitled to the exclusive right to
goods or services and to obtain relief in
Ontnngement of the trade
stered trade marks. This section mark. Section 29 deals with infringement
trade mmark. The mentions what amounts to an infringement
tions (1), (2),(4),acts which(8)constitute infringement are provided under
Tegistered propri(5),(),
ithte suit for etor
and (9) of Section 29. Aperson who is not
or a person using by way of permitted use, can
rthe
fhaaimrraaji Shri infringement
tof trade mark.

AR 1965 Pandit
Kishan
Das Vs. Garg &Co. - AIR 1975 Del 130.
hrlo SC 990. Durga Datt Sharma Vs. Nav Rattan Pharmaceuticals Laboratories -
Indion Drug and
Chemica! Co. Vs. Swastika Mill Co. Lud. - AIR 1935 Bom 101.
 63 proprietor
registered
by resneto aas s because
iwhich
using
a as in whichhas unfalr
ls go005
name) (5)J be services.
used used advantage
which in manner (2)]. mark or to
29 intended
reputation
thevisual in
person services mark is for character in in
being or
if
29 and takes part [Section included
dealing or their mark,
MARKS mark such public
trade [Sectionthose
mark
trade
(or goods :
unfair
the
a cause by
or a or as or to registered material
mark registered.
distinctive against as registered
trade,goods in taken the registered
or ; similar name) takes
advertising are
TRADE and ; services trade
mark mark due or
well
of his advertising
is constitute :
registered the a as thereof
of to registered
be part trade
not without as to or a
REGISTERED coursesimilar to the tradeor are the the markof part
is
mark
mark
for
character mark, USCS
likely the goodsregistered and to
which or trade personpackaging
which
deceptively on with registered similar the
to registered
use detrimental
registered
(ortrade goods such
infringedthe is mark(1). confusion association of registered
concern if
or (8)] element
distinctive ofregistered
identity services (4)].
its words, (Section
29
(9)) a
mark which packaging mark 29
in 29 with and the
For
29, the
OF beinguses the the 29 the (Section
thea Section or
INERINGEMENT (Section similarity or
India of applies that
be[Sectionbusiness goods
is
mark not use, or tradeof
with, cause
an
with similarity
or or
withgoods
is
mark or
uses respect
or of
isthe
to
advertising
of
mark. use
permittedthe use have identity in of he wholabelling
[Section
(7)]
29 of to
trade who identical identical reputation
his detrimental representation.
mark to to reputation
advantage
if in spoken purposes it
trade
whichthe likely
to its relation of services
person person trade distinctive
he: affixes
particular,
person
1.
registered render
trade likelyitsof the name for
any the 5.the
(a) (b) (c) is used
of is to is (m)
a
By or or By
a
By of By the (a)
a way ) (i)
By 2. 3. 4.
A
 TRADE MARKS
64

(b) offers or exposes goods for sale, puts them in the market or stocks
them for those purposes under the registered trade mark, or offers
or supplies services under the registered trade mark ;
(c) imports or exports goods under the mark : or
(d) uses the registereditrade mark on business papers or in advertising.
General principles regarding infringement
There may arise three types of cases, where use of a trade mark by the
defendant constitutes infringement of registered trade mark of plaintiff.
These are:
() whether the defendant's trade mark is identical with the plaintiff's
trade mark ;
() whether the trade mark of defendant contains or consists of the
whole or any essential or leading features of the plaintiff's mark
combined with other matter ; and
(iü) whether the mark of the defendant is identical with any of them in
the plaintiff's mark.!
The taking of any essential or leading features of the trade mark or taking
the whole of the mark and then making a few addition and alteration would
constitute infringement. The use of a trade mark by a person who not
thereof
Deing a registered proprietor of the trade mark or a registered user
Which is identical with or deceptively similar to a registered mark amounts to
infringement.
In order to constitute the infringement what is necessary is the user of any
similar
hak not nccessarily absolutely identical in all respects but deceptively
0a registered trade mark likely to misleada purchaser of average intelligence
purchaser by its
pertect memory and cause confusion in the mind of that the
Oustanding features of resemblance. The main element to be considered is of
in the course
vaomty of deception, The infringing mark must be used
tae, that is in a regular trade wherein the proprietor of the mark is engaged.
ingredients constituting an infringement
a sut for infringement the cssential
De proved by the plaintiff. The essential ingredients are
the Plaintiff must be registered proprietor of a trade mark ;
Tata Oil Mills Co. Ltd, Vs. Wipro Ltd. AIR 1986 Del 346.
Pharmaceuticals LId- AIR 1998
Works Ltd Vs. Citadel Fine
MadIndo-Pharma
347 Pharmaceutical
3 Vikas Manufacturing Co. Vs. Bhoraj Manufacturing Co.- AIR 1980 P&H 127.
 INFRINGEMENT OF REGISTERED TRADE MARKS
65
2. the defendant must have imitated the mark for the
the market with other articles of a similar purpose
description ;
of passing in
3. the mark used by the
defendant must cause confusion or deception on
the part of the public;
4. the plaintiff must suffer
business and reputation due to the use of his
trade mark by the defendant ;
S. the defendant should have
used the essential features of the
of the plaintiff ; trade mark
6. the defendant used the trade mark in the course of
7. the goods or services used by trade ;
of the plaintiff ;
the defendant is covered by the registration
8. the plaintiff has
trade mark. acquired reputation and goodwill in trade by using that
The question whether the two
or deceive is one of first markS are so similar as likely to
impression. It is for the court to cause contusto
applying the doctrine of fading memory ; ie., from the decide this question by
of average intelligence
having imperfect point of view of a man
visual and recollection and
or cause phonetic similarity of the two marks is likely to whether the overal
defendant confusion
for
that he may make
mistake in deceive such a ma
(i) who are the
those of the
plaintiff and the other recognising the gooas o
persons who are likely to be questions which arise are
comparison to be adopted in judging whether
are deceived, and (ii) what rules o
For the purpose of such resemblance exists.
show that there had been
that which another
establishing a
the use of case
of
infringement, it is not
person
amark in
has acquired an all respects necessary
resemblance is
be likely to such as not only to show
make
exclusive
intention to
corresponding
right to use. But if the
article sold by the unwary purchasers suppose deceive but also such as
the standard of party to whom the right to use that they are
the unwary purchasers? the
comparison is not that of experts buttrade mark purchasing
belong.
The use of the
it is of Theretores
the.lay public and
plaintiff"s
infringement even if it is clarified that goods are not
mark on
reconditioned oripinal
goods may
but onlv constitute
2
|
Anglo-Dutch
AIR 1977 Del 4I Paints, Colour and Varn1sh
Works Pyt Ltd Vs India
reconditioned.
Nagendra Nath Suha Vs State AIR Trading House
1930 Cal
274 at p. 276
66

Unauthorised printing of labels of the plaintiff will constitute infringement.

copyright subsistsin labels, it will constitute infringement of such copyright
Ifa
as well
infringement :
lee of registered trade mark not constituting
constituting infringement.
Section 30specifically cxcludes certain acts as not
infringement:
The following uses will not constitute
practices in industrial or
L where the use is in accordance with honest
commercial matters
of or be detrimental to
2. where the use is not as to take unfair advantage
the distinctive character or repute of the trade mark;
character, quality or
3. the use is in relation to goods or services indicating
geographical origin ;
been applied
4. in relation to services to which the trade mark has already
object of the use is to indicate
by the proprietor or registered user, the registered
that the services have been performed by the proprietor or
user;

any conditions or limitations

5. where a trade mark is registered subject tosuch conditions or limitations
any use of the mark beyond the scope of
will not constitute infringement.
of the
Thus if registration is limited to certain territories, any use
such use
mark outside the territory will not infringe a trade mark. But
may amount to passing-off [Section 30 (2)
(b)]
which the mark has been
6. the use of the mark in relation to goods to
to the
lawfully applied or where the registered proprietor has consented
use of the mark.
purchased in bulk and
This applies to cases where the goods are
sold in retail applying the mark.
the goods in
I. the use of the mark in relation to parts or accessories to
necessary
respect of which the mark is registered ifthe use is reasonably
to indicate that the goods are so adapted (Section 30 (2)(d)])
cycles,
This generally arises in the case of machinery, automobiles,different
manufactured by
Ctc., whcre the parts and accessories are
persons.
conferred
n the uSC of the mark or a similar mark in the exercise of aright
by independent registration.
 INFRINGEMENT OF REGISTERED TRADE MARKS
67
This arises where identical or Similar marks are
than one person.
registered by moes
9. assignment ofthe registered trade mark to another person will not affect
the right of a person to sell or deal in the goods
bearing the mark lawfully
purchased by him before assignment [Section 30 (3)].
This will not apply when the condition of the goods has
impaired. been changed and
Effect of acquiescence : Section 33 contains a
acquiescence on the trade mark. The proprietor ofprovision
as to the effect of
the earlier trade mark or
carlier right cannot contest the validity of
mark, if he has acquiesced in the use of registration of a subsequent trade
the subsequent trade mark for a
continuous period of 5 years, unless he can prove that the
subsequent trade mark was not obtained in good faith. registration of the
that where sub-section (l) applies, the Sub-section (2) states
oppose the use of earlier trade mark.proprietor of the later mark is also entitled
4.
Remedies against infringement of trade
The Trade Marks Act, mark
1999
of a trade mark. Theprovides various remedies in the case
infringement
remedies under the aggrieved person can seek the
provisions
(a) civil remedies;
of the Act.
They are follows
(b) criminal
proceedings
;and
(c) administrative remedies.
Now we will
discuss the remedies in detail.
Suit for infringement
The most
common
file asuit for remedyin available for the
infringement
injunction. It can be filed civil courts. infringement of trade mark iS
suit. The suit may be (i) before the Section 134 deals with suit for
for the district court
filingto try the
(ii) relating to any right in a
Who can sue for infringement having
registered
registjeuredrisdiction
of a
trade mark ; or
(iii) trade mark ; or
any of the following caninfringement? In a
suit :for for
sue for passing-off.
(i) The proprictor of the
infringement
(ü) A registered user, if the
registered trade infringement
mark or
of a trade mark

proprietor refuses to his legal heir:

file
the suit ;
68 TRADE MARKS
(ii) An applicant for registration of the
reojstered before the hearing of thetrade
suit :
mark provided the mark is
(iv) Assignee of a registered mark :
() Any one of the joint proprietors of a
trade mark.
Focts to be proved by the
plaintiff : The action for infringement is a
statutory remedy. The rights oT a proprietor of
the Act, In case.of trade marks are protected under
infringement registered trade mark, one has to establish
of a
by cogent evident that
() he has been using his trade
mark or trading style for quite a long
period continuously;
(i) he has acquired reputation and goodwill in
trade by using that trade
mark :
(ii) his goods have acquired distinctiveness and are associated in the
mind of general public;
(iV) the nature of his business and activities and of the defendant is
same or similar ;
() his goods and goods of thedefendant are similar;
(vi) the use of his trade mark by the defendant is likely to deceive or
cause confusion in the mind of public and injury to the business
reputation of the plaintiff;
(I) the sphere of his activities and market of consumption and that of
the defendant are the same; and
ot
(VI) his customer include unwary purchasers also who are capable
being deceived or confused or misled.
Defences available in a suit for infringement
ofa trade mark, the defendant
Ina suit for proprietor
rinfringement, filed bythe
ay set up any of the following defences :
usethe trade mark in question;
that the plaintiff has nooright to registered and is liable
validly
that the trade mark has not been trade marks ;
the register of
tO be removed from has not infringed
the
question he
3
that by using the tradec mark in
registered trade mark ;
 MARKO
INERINGEMENT OF REGISTERED TRADE
69
to use the
4 that he has acquired the statutory right trade
virtue of concurrentregistration ;
mark by
Z. that he has been using the trade mark prior to registration and
use
of the plaintill:
that he has a right to use the trade mark by virtue of honeet
COncurrent use:

that he has been using his own name or name ofhis place of business
or the name of place of his predecessors in business bona fde or
for the descriptive purposes ;
that the trade mark used and registered by the plaintiff has become
popular as the common name of goods or has become common to
the trade
that the plaintiff is disentitled to relief on the
ground of estoppel,
acquiescence, laches or abandonment of the mark and is debarred
from filing suit by lhis own
conduct.
Reliefs in a suit for
passing-off infringement of registered trade mark or
Section 135 ofthe Trade Marks Act, deals
by courts in suits for with reliefs which may be
mark or passing-off theinfringement. suit for
In a
infringement of
granted
(i) an plaintiff may seek any of the registered trade
injunction, restrainingfurther use
following
of the
reliets i
(ii)
darmages account of profits :
(i1) an
or an infringing mark :
order for
delivery up of the
destruction or erasure.
The plaintiff is
entitled to cither
infringing labels and marks for
exercise the option. The order of damages mayor an account of f profits. IHe has to
or any
interlocutory order for any ofinjunction include an ex-parte
the
(a) for
discovery of documents :
(b) preserving of
following matters, namely :-injunction
are related to infringing
(c)
thc subject goods,
matter documcnt
of s or
the suit . other
restraining the defendant
in a manner which from
disposi
may adverscly
n g
ofor
evidence which
damages, costs or other affect deal ing
135 plaintif 's
pccuniary
awarded to the plaintiff|Section with his assets
remedi(2)1 ces whichabilmayity to
be
recover
finally
70
TRADE MARKS
() Injunction
injunctionisthe most effective
An remedy
directingthe defendant to refrai from the act of
as it is
specific
order of the court
the continuance or repetition of the infringement
infringementor
or passing
offor
injunction passing-off
orderof injunction may include :an action.
The
discovery of documents ex-parte or any
orderfor
etc.[Section 135 (2)] The
Sor preserving of
Indian laws are very strong
interlocutory
infringingit goods, documents,
when
action consisting by interim injunctions, Anton Piller order comes to deterrent
and Mareva injunctions (freezing of assets). (search and seizure)
Anton Piller Order is an ex-parte order to
inspect defendants premises.
Acourt may grant such an order to the plaintiff where thare is a possibility of
the defendant destroying or disposing of the
incriminating material. Mareva
injunction is granted to freeze the defendants assets. This order is granted to
prevent the assets from being dissipated.
The court may order ex-parte interim injunction on an application made by
the petitioner in exceptional cases where justice requires intervention of court.
without notice to the defendant. The grant of ex-purte injunction order is a
discretionary relief. The essence of an application for interlocutory injunction is
that it should be made with promptness. Improper delay although does not amount
to acquiescence deprives a plaintiffof his right to an interlocutory injunction.!
Factors to be considered for grant of interim injunction : It is a settled!
law that the grant of injunction is a discretionary relicf. The exercise thereof is
subject to the court, satisfying that :
() there is a prima facie case in favour of the plaintif ;
injury to the
() if an interim order is not made, it will cause irreparable
plaintiff;
of the plaintitt.
() that the balance of convenience is in favour
granted to mitigate the risk
of
The relief by way of interlocutory injunction is
before that uncertainly could be
injustice
resolved.
to the plaintiff during the period the plaintiff
injunction isto protect adequately
The object of the interlocutory which he could not be
against the injury by violation of his right, for action if the uncertainty were
Compensated in damages recoverable in the kind oforder, the court exercises
resolved
its equity
in his
favour at the trial. In granting
this
intended to maintain status quo
injunctionis further order
jurisdiction.
and not conclusive of aTemporary provisional-andis operative till
of the right. It is

|
court or for some specific time. Dvarka Fate Chand- AlR 1933
Sind 26.

Yoshimi Bashaka Ka Sha LId. and Another Vs.

 INFRINGEMENT OF REGISTERED
TRADE MARKS
There are number of decided cases with respect to grant of
us consider a few of them. It has been held in Tata Oil Mills
Wipro Lid. and Another where a prima facie case is
will grant injunction. In this case the plaintiff had not only
injuCo.nctiLion.d. Le
established, the Vs
made a court
case but had also succeeded in establishing that in case the prima facie
allowed to continue with manufacture and sale of his product defendant
under was
name 'BUBBLES", the plaintiff would suffer
irreparable loss and the trade
court granted injunction against the defendants
restraining them to useinjury.
the
The
trade
mark BUBBLE', similar to the trade mark
Gopal Engg. and Chemical Works Vs. PomxDUBBLE the plaintiff. In Shri
of
to grant injunction to the petitioner where Laboratory the court refused
respondent was same under the trade mark,brand name of both petitioner and
there was nothing to show that because of 'DOCTOR'. The court held that
presence of
of plaintiff has suffered or its
sale have shown decline. defendant, the business
The grant of injunction
the adoption of the mark is becomes necessary if it prima facie appears that
Bhatia,' the plaintiff was the dishonest. In Midas Hygiene
prior and prominent user of theIndustries Vs. Sudhir
Rekha". The defendant later adopted the trade mark "Laxman
failed to explain why he did so. He had mark "Magic Laxman Rekha" but
before starting his own
business. When the
formerly worked with the plaintitt
colour scheme of his carton defendant first started business, the
stage, changed the carton to was different from the
was afit case look similar to the plaintiff'It s, but at a lai
have been where an interim injunction should plaintiff' s. was held tma
In Heinzcontinued. case was followed in have been granted and should
This
that in an Italia and Another Vs. George Records Vs. Kiran Jogani."
application
trade mark, it has for ad interim Dabur India Ltd.,s the Court has said
in the two
is so words
to be seen
and injunction,
whether
the test is as to there a is
in a suit
against tinfringementof
acquiredsimilarby that it can easily whether aremarkable phonetic similarity
opposite side. In this markconfuse
the
particular in the
a particular
purchaser enviable
and the
mark and the packaging
registered trade mark case market is sought to be repute
plaintiffs Appellants
similar product under the
"Glupackages
con-D'""Gl.Theucose-forD'"
deceptively similar to the name exploited
are the byof the

2
1 AIR
1986 Del345.
AIR 1992 Del 302.
used by using proprietowhich
rs, was
defe"Glndauncon-t-resDpo'"n.packagi
dent ng
later launched a

3 2004 (28) PTC 121 The Court observed

4 (SC).
(2004) 28 PTC 347, 354.
S (2007) S MLJ 594 (SC).
 TRADE MARKS

"Glucon-D" andGGlucose-D" are items containing glucose and there is

thatboth phonetic:similarity in theseewords. The packaging was so similar that
remarkable
caNeAsilyconfuse apurchaser. Thee Court allowed application for adinterim injunction.
Ifthere is no chance of confusion betweenthe two marks, injunction will not
egranted. In Surya Agro Oils Ltd. Vs. Surya Coconut Oil Industries the
markof the plaintiff was "SURYA' consisted of the sun device in a halr
ile with lines radically projecting out of its circumferences, alternate line
wing long and alternate lines being short, on the other hand, the defendant's
device comprised of avery stylized representation by 'SUN' which has flames
anound it with eyes, nose and mouth. The Delhi High Court held that no
reasonable person can be confused or deceived in believing that one mark is
the same as the other. There is no chance of confusion between the two marks.
Neither of the parties are entitled to injunction against the other than for
restraining the other of them from using their own marks.
The injunction will be granted where the two marks are not identical but
strikingly similar. In Kali Aerated Water Works, Tiruchirappalli Vs Rashid
md others, the plaintiffs were manufacturing and selling under the name of
"Kali Mark' various kinds of aerated waters in Tiruchirappalli. The defendants
Who appeared to be the erstwhile employees of the plaintiff firm started a
business in the name and style of 'Sri New Kali Mark Soda Factory' and
Were manufacturing aerated waters and selling them under the trade name
Sn New Kali Mark'. The plaintiff filed a suit for declaration of its title for
CxClusive use of the trade mark and trade name or business name O
"Kali Mark' and for restraining the defendants and their men from using trade
mark of'Sri New Kali Mark' in relation to aerated waters manufactured and
Mnem and for rendition of a true account of the sale. In this case, the
Madras
High Court has heldthat tthe trade mark adopted by the defendants and
the plaintiffs in getup, packing and other writing or mark on the goods or on the
bottles in which the goods are offered for sale, is similar and is likely to deceive
or cause confusion public. Though the colour
the minds of the consumingdescriptive matters different
scheme of the label is not identical aand there are
from that of the plaintiffs' label... they are strikingly similarthough not identical
with that of the plaintiffs phonetic similarity is not lost by the additional words
'Sri New' used in the defendant's trade : name. The court held that the plaintiffs
are
entitled decree.
to
The plaintiff is entitled to an injunction when the defendant usesPvt.a trade
mark which has phonetic similar marks. In Bombay Oil Industries Ltd.
1
2 AIR 1995 Del 72.
AIR 1989
Mad9.
 TRADE MARKS
INERINGEMENT OF REGISTERED
73

Vs. Ballarpur Industries Ltd'the defendant used a trade mark, SHAPOLA'

The Delhi a
which is similar to the trade mark 'SAFFOLA of the plaintiff. simil
Court held that the marks 'SAFFOLA' and 'SHAPOLA' are phonetically
nature of gode i
Both the marks are in respect of edible oils. Therefore, the
between the two marke
same. As there is a great degree of phonetically similarity
the court restrained the defendant from using the trade mark which is deceptively
similar to 'SAFFOLA' of plaintiff's trade mark. Likewise in Pidilite Industriet
Pvt. Ltd Vs. Mitters Corporation and Another as there is visually similar and
identical marks of plaintiff's trade mark FEVICOL' and the defendant's trade
markTREVICOL, the court granted injunction in favour of the plaintif.
In Lakme Limited Vs. Subhash Trading trade mark of defendant, 'LIKE
ME, phonetically resembled to that of the plaintiff's trade mark 'LAKME".
The court restrained the defendant from using that trade mark is likely to cause
confusion and deception to the traders and general public.
Another case which is relating phonetically similar is Scientific Componds and
Processing Pvt. Ltd. Vs. Hanuman Cottage Industry. 4 The petitioner
in this case is the manufacturer of a cleaning powder and he did his
business in the
trade name 'SABENA'. The respondent
powder with the trade name 'SUBEENA. The petitioner manufactured same cleaning
temporary injunction for restraining the respondent from using afiled an application 1or
trade name deceptively
and confusingly similar. The court held
that
even a nomal prudent person is bound to by seeing the pouches of two products,
product. The colours used in both the be mistaken that both are one and the sano
which were almost identical. Further theproducts were purple, magenta and white
phonetically similar. words, 'SABENA' and
In another
The court, made the
casethere was deceptively interim injunction absolute. SUBEENA'were
plaintiff' s trade mark and similar marks ie.
was restrained from "BARAGAN° of BARALGAN
defendant's trade mark. The defendant
of the
manufacturing,
'BARAGAN'. In A.C. Krishnan Vs. selling and marketing the impugned mark
using word'Nambisan' for its milk
"Nameesan' for their milk products. In
Nambisan
products. Dairy
The
Pvt. Ltd., the plaintiff is
'Nambisan' created a good reputation of
has this case defendant
the court
is using the word
held that the word
purchasing public by association of its|s the milk
name, there is likelihood of deception. name and by the products in the mind of the
purchaser is likely to be deceived by theBoth marks are defendant's use of the same
AIR 1989 Del977. defendants usingdecepttheivname
ely similar and the

4
5
2 AIR I989 Del 157.
3 1996 PTR 20 (Del).
2002 (24) PTC (Mad).
Hoechst AG Vs. Unisule Pvt. Lid - 1996 PTR 138 IDel
Nameesan'
6 1997 PTR 17 (Ker) : Bakes Hughers Ltd vs. Hiroo
Khuslani,.20004 29
(PTC)
 TRADE MARKS
74

Wadhwa Vs. Glaxo India Lid,' application sought for registration of

In Raj "GOLDCON" by
mark the appellant, where respondents were registered
trade emark
proprietors oftrade "GLUCON-D" . It was held that though no visual resemblance
were there
between these two marks, close affinity of source between the two
Words sexists. The
application for registration was rejected. In another case,there
"LEMASOL"
ws similarity between the two trade marks namely, "LEVASOL"
The trade mark "LEMASOL was already registered by the respondent. The
application for registration of trade mark LBVASOL" was rightly rejected.
mark "Volmax". The
The application was made for registration of trade "Volfruit" and"Volfarm"
opposition was made by owner of trade mark Voltas",air-conditioners to truck,
which were used for a range of goods from
transformers, pharmaceuticals and consumer products.
difference when viewed from
It was found that both the marks had not much mind
the perception of common man and there was likelihood of confusion in the
application was affirmed.
of consumer. The order of Registrar rejecting the
Deceptively similar marks
Biochem Pharmaceutical Industries
BIOCILIN BICILLIN
Vs. Astran Pharmaceuticals-(2003)
26 PTC 200 Del.
CALMPOSE CALMPROSE - AIR 1989 Del 44
Benekendorff
CATHEDRALE CATHEDRAL - Pidonx & Cook Vs. 65
Berger Co.-(1914) 31 RPC
Silk International M/s V Deepam Silk (M/s) Deepam Silk
Deepam - (1998) 18 PTC Karn.
International Vs. Deepam Silks Moners-AIR 1970 SC 2062
GeofYey
BKOFOVIT -PROTOVIT- F Hattnan Vs. Pharmaceutical Works Ltd. Vs.
ENERJ ENERGY - (Indo-Pharma
Pharmaceuticals Ltd.-AIR 1998 Mad
34)
Citadel Fine Ltd. Vs.
FUNSCHOOL Funkool (India) PTC 911
FUNSKOOL.COM Corporation-(2001) 21
Funschool. Com
Products Refining Co. Vs. Shangrila
LOVITA GLUCOVITA. Com Products Ltd-AIR 1960 SC 162
Food
Edward (1946) 63 RPC
JAROEX- JARO0X KALYANA COVERING ; Thirumoorthy VS.
LYANICOVERING - 581 Mad
Radhakrishnan-(2000) 20 PTC Rajkunar
2: Vs.
National Carbon Co. 1954 All 214
LITREADY-EVEREADY ; AIR

1 Himalaya
2 (2005) PTC II6: see also
Ranbary
31 PTC 201. (2005)3I
Laboratories Ltd. vs. (P) Ltd.,
Vets Farma
3. CSCo. vs. Gulfic
Glaxo Group Ltd. vsLtd. AIRLtd.,
Voltas 2004 Bom 32
(2006) 278.PTC 562.
 MARKS
REGISTERED TRADE
INERINGEMENT OF 75

ROYAL MAHARAJA ; Hindustan Machines Vs. Royal

MAHARAJA - PTC 68S Del
Electrical Appliances -1999) 19
-MANIKCHAND; Dharila/ Industries Ltd. Omd
MALIKCHAND 233 (SC)
Another Vs. MSS Food Products-2005 (30) PTC
Co. Lid Vs. Anglo French
MYCOL -MYLOL;Books Pure Drug
Drug Co. - 1957 Bom...
1988 RPC 113
0THER CARE - MOTHER CARE :
Industries Ltd. Vs.
PACITINE - PARKITANE; Sun Phamaceutical
PTC 14 (Bom).
WKiyuth Holdings Corporation and Another-2005) 30
(India) Ltd. -
PICNIC - PIKNIK; S.M. Dychem Ltd. Vs. Cadbury
(2000) 20 PTC 297 (SC)
REDIFF- RADIFF; Rediff Communications Ltd Vs. Cyber booth -
(2000) 20 PTC 209 Bom.
SKINDEW - SKINDEEP;Helana Rubinstein Ltd - 1960 RPC 229
SUNNIWITE SUNLIGHT ; Lever Bros, Sunlight Lid. Vs. Sunniwite
Products Ltd-(1949) 66 RPC 84
SUNRIGHT - SUNLIGHT ; Md. Mahsood Vs. Bhibu Hi Bhushan Gupta
-AIR 1960Cal 63
THANDA PUSHPAM - THANGA BASPAM : N. Arumugam Pillai VS.
A.G Ramachandran Pillai - 1948 (Madras High
Court)
TREVICAL- FEVICOL; AIR 1989 Del 155.
(ii)Damages or account of profits
The plaintiff is entitled to
against invasion of his right.claim
In the
damages or account of profit in the alternative
trade mark cases, the plaintiff is
he succeeds in getting an entitled, if
of the injunction, either to claim damages
made byinfringement
of mark suffered by
which the defendantreason
or to claim the profit
his wrongful act. The had
computation in the two
It is wrong to base the damages suffered cases is different.
by the
profits that the
defendant makes. way to plaintiff upon the amount of
to how much damages the plaintiff has
of the mark is to ascertain what profit Fered reason
by approachof the question as
the plaintiffs would the
best have infri n gement
offending articles hadinnot been put upon market t
of such claim is evidence of any loss of trade and the made if the
that
during the period in which the defendant was import the plaintiff evidencehas support
in
orting the suffered
I Sallary Mahomed Hajee Sulaiman Vs. S.B. Negi and Co. -AIR
i affording
1932 Rang 56 at goods.
58.
 INFRINGEMENT OF
REGISTERED TRADE MARKS
75-A
awarding damages, the court should assess it
percentage of profit on the basis of differencealongwith the plaintiff's
usual
traade earnings before the unfair
between the plaintiff's
usual gross
thereafter with alump sum for any
competition began and his actual
earning expected increased of business.!
(iii) Order for delivering up
An order for delivery-up or destruction or erasure is made with a view to
rouent the defendant from making use of infringing goods which might be in
his possession. This is adiscretionary order of the court.
Groundless threats of legal proceedings
Section 142 protects the persons against groundless threats of infringement
by giving him an opportunity to bring a suit against the person making such
threats and obtain a declaration that the threats are unjustifiable and an injunction
against the continuance of the threats and recovery of damages. It also provides
for the protection of the person threatened by an injunction against of the
groundless threats as well as for recovery of such damages, if any, as he has
Sustained. The threatening may be by means of circulars, advertisements or
otherwise.