Infringement of Trademark

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Infringement Of Trade Mark:

• Infringement is a breach or violation of another’s right.

•
As per Black’s Law Dictionary “Infringement” means “an act that
interferes with one of the exclusive rights of a patent, copyright and
trademark owner”.
• According to the Trademark Act, ‘A registered trade mark is
infringed by a person if he uses such registered trade mark, as his
trade name or part of his trade name, or name of his business
concern or part of the name, of his business concern dealing in
goods or services in respect of which the trade mark is registered”.
•Infringement of trademark means use of such a mark by a person
other than the registered proprietor of the mark.

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As per Trademark Act, a mark shall be deemed
to be infringed mark if:

1. It is found copy of whole registered mark with a few additions and

alterations

2. The infringed mark is used in the course of trade

3. The use of the infringed mark is printed or usual representation of the

mark in advertisement. Any oral use of the trademark is not
infringement.

4. The mark used by the other person so nearly resembles the mark of
the registered proprietor as is likely to deceive or cause confusion and in
relation to goods in respect of which it is registered.

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Protection Against Infringement Of Trade
Mark:

Under section 29 of the Trade mark Act, 1999,

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

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 In an action for infringement if the two marks
are identical, then the infringement made out,
otherwise the Court has to compare the two
marks, the degree of resemblance by phonetic,
visual or in the basic ides represented by the
registered proprietor, whether the essential
features of the mark of the registered
proprietor is to be found used by other person
than only the Court may conclude the matter.

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In an action for infringement of
trademark

(a) the plaintiff must be the registered owner

of a trademark
(b) the defendant must be using a mark
deceptively similar to the plaintiff’s mark
(c) the use must be in relation to the goods in
respect of which the plaintiff’s mark is
registered,
(d) the use by the defendant must not be
accidental but in the course of trade.

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27. No action for infringement of
unregistered trade mark

(1) No person shall be entitled to institute any proceeding to prevent,

or to recover damages for, the infringement of an unregistered trade
mark.

(2) Nothing in this Act shall be deemed to affect rights of action against
any person for passing off goods or services as the goods of another
person or as services provided by another person, or the remedies in
respect thereof.

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Section 29 : Various types on Infringement in
each of its nine sub sections

1. A registered trade mark is infringed by a

person who, not being a registered proprietor
or a person using by way of permitted use,
uses in the course of trade, a mark which is
identical with, or deceptively similar to, the
trade mark in relation to goods or services in
respect of which the trade mark is registered
and in such manner as to render the use of the
mark likely to be taken as being used as a
trade mark.
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Section 29 : Various types on Infringement
in each of its nine sub sections
2. A registered trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use,
uses in the course of trade, a mark which because of-

(a) its identity with the registered trade mark and the similarity of
the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or
similarity of the goods or services covered by such registered trade
mark; or

(c) its identity with the registered trade mark and the identity of the
goods or services covered by such registered trade mark, is likely to
cause confusion on the part of the public, or which is likely to have
an association with the registered trade mark.

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Section 29 : Various types on Infringement
in each of its nine sub sections

3.  In any case falling under

clause (c) of sub-section (2),
the court shall presume
that it is likely to cause
confusion on the part of
the public.
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Section 29 : Various types on Infringement
in each of its nine sub sections

4. A registered trade mark is infringed by a person who, not being a

registered proprietor or a person. using by way of permitted use,
uses in the course of trade, a mark which-

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to

those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of
the mark without due cause takes unfair advantage of or is
detrimental to, the distinctive character or repute of the registered
trade mark.

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Section 29 : Various types on Infringement
in each of its nine sub sections

5. A registered trade mark is infringed by a

person if he uses such registered trade
mark, as his trade name or part of his
trade name, or name of his business
concern or part of the name, of his
business concern dealing in goods or
services in respect of which the trade mark
is registered.

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Section 29 : Various types on Infringement
in each of its nine sub sections
6. For the purposes of this section, a person
uses a registered mark, if, in particular, he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them
on 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 registered trade mark on business
papers or in advertising.

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Section 29 : Various types on Infringement
in each of its nine sub sections

7. A registered trade mark is infringed by a

person who applies such registered trade mark
to a material intended to be used for labelling
or packaging goods, as a business paper, or for
advertising goods or services, provided such
person, when he applied the mark, knew or
had reason to believe that the application of
the mark was not duly authorised by the
proprietor or a licensee.

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Section 29 : Various types on Infringement
in each of its nine sub sections

8. A registered trade mark is infringed by any

advertising of that trade mark if such advertising-

(a) takes unfair advantage of and is contrary to

honest practices in industrial or commercial matters;
or

(b) is detrimental to its distinctive character; or

(c) is against the reputation of the trade mark.

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Section 29 : Various types on Infringement
in each of its nine sub sections

9. Where the distinctive elements of a

registered trade mark consist of or include
words, the trade mark may be infringed
by the spoken use of those words as well
as by their visual representation and
reference in this section to the use of a
mark shall be construed accordingly.

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Suit for infringement : Jurisdiction

No suit for infringement of a registered trade

mark or suit relating to any right in a registered
trade mark or for passing off arising out of the
use by the defendants of any trade mark which
is identical with or deceptively similar to the
plaintiff’s trade mark, whether registered or not
shall be instituted in any court inferior to a
district court having jurisdiction to try the suit.

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Procedure followed

•The procedure followed in the

disposal of the suit is as laid down in
code of civil procedure, 1908.

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Period of limitation

Under the limitation Act, 1963, the period of

limitation for filing a suit for infringement of a trade
mark is three years from the date of infringement.
Where the infringement is a continuing one, a new
course of action arises every time as infringement
occurs. For instance, in a continued sale of
infringing article, sale of each article would give rise
to a fresh cause of action.

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Who can sue for infringement

The plaintiff in an infringement suit may be either:

(a) The proprietor of the registered trade mark of his legal successor.
(b) A registered user of a trade mark subject to a prior notice to the
registered proprietor and consequent failure of the registered
proprietor to take any action against the infringer.
(c) As an applicant for registration of a trade mark, he can file an
infringement suit to protect his right to continue with the suit which
will sustain only if his trade mark is registered before the hearing of
the suit.
(d) Legal hairs of the deceased proprietor of a trade mark.
(e) Any one of the joint proprietors of a trade mark.
(f) A foreigner proprietor of a trade mark registered in India when
infringement occurs in India.

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Who can be sued?

(a) The infringer who directly by his action

causes infringement or who uses or who uses
or contemplates or threatens to use a trade
mark infringing the plaintiff's right.
(b)The agents of infringers.
(c) Director and promoters of a limited
company can not be joined as co-defendants
unless they have personally committed or
directed infringing acts.
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Issues in infringement suits

• In a suit for infringement, the issues which are generally to be

determined are :
• (1) Whether the plaintiff's is indeed entitled to file the suit and claim
relief. It has to be determined whether he is the registered proprietor
or whether he is registered user qualified under the provision of the
Act.
(2) Whether the use of infringing trade mark or the proposed use of
the mark would actually amount to infringement.
(3) Whether the plaintiff's is entitled to any interim relief.
(4) Whether there have been actual instance of deception and
confusion amongst the public.
(5) Relief.

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The defences which may be set up by the
defendant
• The defendants may set up any of the following defences in an action
for infringement against him depending upon the applicability of the
relevant defence to his case:-
• (1) That the plaintiff in the suit has no title to sue questioning the
proprietorship of the trade mark owner may do this.
(2) That the use of the mark by the defendants is not an infringement
or it protected by the provisions of section 30 which list out the acts
which do not constitute infringement.
(3) That the defendant's right to use the contested mark arises by
virtue of concurrent registration.

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• (4) That the defendants has been an honest concurrent user
(5) That the defendants can attack the validity of registration of the
plaintiff.
(6) That the plaintiff is debarred from suing or claiming the relief
sought by his own conduct, e.g., by his own acquiescence, delay or
latches or his having acquired his right on the trade mark
fraudulently.

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Defences which can not be set up

Honest adoption of the mark is not a defence. The

defendant can not plead that he had adopted the
plaintiffs mark without the knowledge of existence
of plaintiffs trade mark.

Innocent infringement cannot be pleaded .

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 Coca Cola Company of Canada v. Pepsi
Cola 1942 (59) RPC 127
• Whether the word COLA was descriptive and
commonly adopted for naming the
beverages?
• Held by the court that “The distinguishing
feature of the mark coca cola was COCA and
not COLA”
• Similarly, distinguishing feature of the mark
Pepsi Cola was PEPSI and not COLA.
• No likelyhood of Confusion
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Relaxo Rubber Limited and another v.
Aman Cable Industries and another 1998 PTC
(18)
• Use of word RELAXO for various footwears.
• Respondents started using word RELAXO for
pvc. Pipes.
• Held that if any person uses the registered
mark in any manner in any place or in any
circumstances that have not been covered by
the scope of registration, it does not
constitute Infringement.

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 Observation
• Following Acts may amount to Infringement:
• Where a trademark is used by a trader other than
the registered owner of the Trademark
• If the trader takes the whole of the mark with a
few editions as a colorable device and if such
trademark is used, it amounts to Infringement.
• If the Trademark is used by another in
advertisement material or in the letter heads or
visiting cards than it amounts to infringement.

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• The main object of the Trademark Law is to
prevent unfair competition for which the
exclusive right is restricted in use.
• To determine whether a trademark has been
infringed it must be identical with or
deceptively similar to another registered
trademark

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Indo-Pharma Pharmaceuticals Works Ltd.
V. Citadel Fine Pharmaceutical Ltd. AIR 1998
Del 347

• The trademarks ‘Emergex’ and ‘Enerjase’ are

not similar to each other even if they deal
with similar products.
• No infringement action is maintainable.

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Reasons…
• The product of the plaintiff is allopathy and is the syrup. Their products
are packed in the bottles and tins. But the defendant's product is
Ayurvedic and is the capsules which are packed in small cardboard
boxes. Therefore, the products and the containers are different.
• When the two products, which are being different, are handled by the
experienced persons in the pharmacy, it is not so easy to pass off the
goods as that of the appellant. The appellant's product is being syrup
containing carbohydrates, proteins, iron and vitamins. Therefore, the
persons would purchase the tonic kept in the bottle either under the
prescription of the Doctor or by his experience. He is accustomed by the
use of the particular brand.
• When the appellant's product is being allopathy, the persons who intend
to purchase the same would know what the product they are asking for.
• When the two products are entirely different, there cannot be any
misconception because the appellant's product is syrup and the
respondent's product is capsules. Both the products are prescribed by
the medical practitioners who are qualified persons in the respective
fields. Every pharmacy is having qualified pharmacist.
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 Parle Products Pvt. Ltd. V. J.P. & Co. AIR
1972 SC 1359

• Dispute regarding PARLE Gluco Biscuit.

• Defendant also started using same identity for selling
its product.
• Held by the Apex Court: “In an action for
infringement, the plaintiff must, no doubt make out
that the use of defendant’s mark is likely to deceive,
but the similarity between both marks is so close
either visually or phonetically or otherwise and the
court reaches to the conclusion that there is imitation
and no further proof required for passing injunction ”

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M/S. Lakme Ltd. vs M/S. Subhash Trading
And Others 1996 PTC (16) 567
• The plaintiff claimed to be the registered proprietor of trade
mark "LAKME" under No. 148249 in class 3 in respect of
soap, perfurnery, cosmetics and toilet preparations.
• The defendants started selling nail enamel under the trade
mark "LIKE ME" and the mark Designer which are identical
and/or deceptively similar to the trade mark of the plaintiff.
• The plaintiff has alleged that by use of the trade mark
"LAKSME" or "LIKE ME" in respect of the nail enamel the
defendants are infringing the trade mark of the plaintiff and
also infringing the rights of the plaintiff to their mark
Designer.

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• Defendant’s Trademark similar to the plaintiff’s and
both the trademark were dealing with cosmetics.
• Phonetically similar.
• Held, there is every possibility of deception and
confusion to be caused in the minds of prospective
buyers.
• Injunction granted.

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 Test of Infringement- deceptive similarity
Durga Dutt Sharma v. Navaratna Pharmacy
Laboratories(AIR 1965 SC 980)
The Supreme Court has stated the law as follows-
1. Where the two marks are identical, no further
questions arise for, then the infringement is made
out.
2. Where the two marks are not identical the plaintiff
would have to establish that the mark used by the
defendant so nearly resembles the plaintiffs
registered trade mark as is likely to deceive or cause
confusion in relation to the goods in respect of
which it is registered.
3. The onus would be on the plaintiff.
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4. The court has to compare the two marks- the degree of
resemblance which is necessary to exist to cause deception
not being capable of definition by laying down objective
standard. The persons who would be deceived are of course
the purchasers of the goods and it is the likelihood of their
being deceived that is the subject for consideration.
The purpose of the comparison is for determining whether
the essential features of the plaintiff’s trade mark are to be
found used by the defendant. The ultimate test is whether
the mark used by he defendant as a whole is deceptively
similar to that of the registered mark of the plaintiff.

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5.The Resemblances may be phonetic, visual, or in
the basic idea represented by the plaintiff’s mark.
6. The identification of the essential features of the
mark is in essence a question a fact and depends on
the judgment of the court based on evidence led
before it as regards the usage of the trade.

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Pepsico Inc. v/s Sunrise Beverages , 2007
(35) PTC 687 Del
There was Infringement of registered trade
mark 7UP & SEVEN UP by the defendant, use
of deceptively similar design and logo by
defendant -- Visual, phonetic, ocular and
structural similarity with the offending trade
mark '7th UP'. Injunction granted.

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M/S Mitaso Appliances Ltd v. Joginder
Singh, (1995 PTC, 105 Del )
The plaintiff’s were registered proprietors of the
registered Trade Mark ‘MITASO’; the defendants
used the mark ‘METASHOW’. Infringement was
alleged on the ground that the two marks on the
face of it were deceptively similar phonetically and
any ordinary customer could be easily mislead in
treating the goods of one as coming form the
source of another. Injunction restraining the
defendants from using the trade mark ‘META-
SHOW’ was granted.

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United Decorative Pvt. Ltd v. Prem
Traders
In, the plaintiffs were a reputed manufacturer
of dental cream COLGATE. Defendants used
the mark COLLEGIATE which is phonetically
similar to the plaintiff’s mark with
deceptively similar letters in white with the
red background so as to cause confusion in
the minds of the customers as pass off its
products as COLGATE. Hence the mark was
restrained through injunction.

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Glenmark Pharmaceuticals Ltd. Vs Curetech
Skincare and Galpha Laboratories Limited
(August 28, 2018)

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• The dispute concerned the Plaintiff's product Candid-B, an anti-fungal
cream, and a similar drug being sold by Defendant No. 2 named
Clodid-B.
• In addition to adoption of similar word mark, the Defendant No. 2
had also copied the trade dress, color scheme, art work, font style
and even manner of writing of the Plaintiff's product.
• The Defendant No. 2 stated that the impugned mark was adopted by
mistake and chose not to contest the suit. The Defendant No. 1,
being just the contract manufacturer for Defendant No. 2, also chose
to submit to the decree.

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Glenmark Pharmaceuticals Ltd. Vs Curetech
Skincare and Galpha Laboratories Limited
(August 28, 2018)
Drugs are not sweets. Pharmaceutical companies
which provide medicines for health of the
consumers have a special duty of care towards
them. These companies, in fact, have a greater
responsibility towards the general public. However,
nowadays, the corporate and financial goals of such
companies cloud the decision of its executives
whose decisions are incentivized by profits, more
often than not, at the cost of public health. This case
is a perfect example of just that.

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 Bhim Sain vs. Janta Naswar
Factory 1997 PTC (17) Del.
• Meaning of the terms ‘Confusion’, ‘Deception’
and ‘Deceptively Similar’ was explained.
• Confusion means an appropriate description of
the state of mind of a customer who on seeing
the mark thinks that it differs from the mark or
goods which he has previously bought, but it is
doubtful whether that impression is not due to
imperfect recollection.

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• Deception means knowingly and willingly
making a fake statement or representation
express or implied pertaining to a present or
past existing fact.

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• Deceptively Similar means a phonetic or
visual or otherwise made false
representation made willingly and knowingly
so as to make such a similar presentation of
one’s own products that his product should
be sold in the market as products of another
well established trader.

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 Himalaya Drug Co. v. Arya Aushadhi
Pharmaceutical Works. 1999 PTC 444 (DB) (MP)
• Dispute regarding names of medicines: SAPTLIN'
and 'SEPTILIN‘ and 'PEPTILIN‘.
• Only the registered proprietor of the Trademark or
the Registered User of Trademark can launch the
proceedings to prevent its infringement.
• In case the user of the mark has not been registered
then he can not maintain a suit under section 52 of
Act.
• Section:52 – Right of Registered User to initiate
proceedings of Infringement of the Trademark.
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Meaning : Dilution
Kind of trademark infringement which applies only to
famous marks.

It is a harm to a trademark by lessening its ability to

distinguish goods or services in the market.
It is the lessening of the capacity of a well known
mark to identify and distinguish goods or services,
regardless of the presence or absence of competition
between the owner of the well known mark and
other parties or of likelihood of confusion.

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Origin

The concept of Trademark

Dilution dates back to an
article written by Frank I.
Schechter and published in
the Harvard Law Review.
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Nature

Distinctiveness
Even when
of a mark is
there is no
protected
scope of
through
confusion
dilution

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Nature of the doctrine of dilution
• Dilution law is Proprietor oriented in nature which
seeks to prevent lessening of the value of well-
known or famous marks arising from the use of the
mark by the third parties.
• The underlying principle of dilution law is that the
unauthorized use of a well-known mark by third
parties, even if it does not cause confusion to the
consumers can affect the mark’s goodwill and
selling power as it then ceases to be associated with
a single source.
• Unlike in traditional trademark law, dilution claims
are not motivated by consumer interests.
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Types of Dilution

Dilution by Dilution by
Blurring Tarnishment

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Dilution by Blurring

Dilution by blurring is said to have taken place

when the ability of a well-known mark to identify
its product is blurred due to its association in the
minds of consumers as to the similarity between
two marks, one of them being a famous one.

It results in partially affecting the descriptive link

between the mark of the prior user and its goods.

In other words, the link between the mark and the

goods becomes blurred.

It, thus, amounts to reduction in the commercial value

of the trademark.

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Dilution by Tarnishment
Dilution by tarnishment, on the
other hand, is said to have
occurred when the goodwill of a
well-known mark is affected by
negative connections arising out of
similarity between the aforesaid
trademark and some other mark.

Tarnishment of a well-known mark occurs

when it is diluted due to low quality or
inferior variety of goods being associated
with a similar mark.

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Section 29(4) in The Trade Marks Act,
1999
(4) A registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which—
(a) is identical with or similar to the registered trade mark;
and
(b) is used in relation to goods or services which are not
similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and
the use of the mark without due cause takes unfair
advantage of or is detrimental to, the distinctive character or
repute of the registered trade mark.

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Judicial Approach Pre 1999 Act
1. Bata India Ltd. v. Pyarelal & Co.
AIR 1985 All. 242 (BATA and BATAFOAM)
2. Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan,
AIR 1994 Del. 239(Mercedes Benz cars and Benz
Undergarments)
3. Kirloskar Diesel Recon Private Ltd. v. Kirloskar Proprietary Ltd.
AIR 1996 Bom. 149 (Kirlosker Deisel and Kirlosker)

4. Caterpillar Inc. v. Mehtab Ahmed,

2002 (25) PTC 438 (Del.) (

5. Honda Motors Co. Ltd. v. Charanjit Singh, 2003 (26) PTC 1

(Del.) (Honda Automobiles and Honda Pressure Cooker)
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Daimler Benz Aktiegesellschaft v. Hybo
Hindustan
• In one of the issues before the single judge bench was whether
the defendant could use the mark ‘BENZ’ on underwear.

03/16/2021 61
Daimler Benz Aktiegesellschaft v. Hybo
Hindustan
• ‘In my view, the defendant cannot dilute, that by user of the name
“Benz” with respect to a product like under-wears.’
• The Hon’ble Judge stated in the judgment as under:
‘I think it will be a great perversion of the law relating to Trade Marks
and Designs, if a mark of the order of the “Mercedes Benz”, its
symbol, a three pointed star, is humbled by indiscriminate colourable
imitation by all or anyone; whether they are persons, who make
undergarments like the defendant, or anyone else. Such a mark is not
up for grabs — not available to any person to apply upon anything or
goods’

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Bata India Ltd. v. Pyarelal & Co.
AIR 1985 All. 242 (BATA and BATAFOAM)
The name “Bata” is neither a fancy name nor paternal name
nor in any way connected with the defendants. It is not the
name of a flower or fauna. It is a fancy name of a foreigner
who has established his business in making shoes and the like
products in this country. The name is well known in the market
and the user of such a name is likely to cause not only
deception in the mind of an ordinary customer but may also
cause injury to the plaintiff-Company.

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Judicial Approach Post 1999 Act
1. Hamdard National Foundation v. Abdul Jalil, 2008 (38) PTC 109 (Del.)

2. Ford Motor Co. v. Mrs. C. R. Borman, 2008 (2) CTMR 474 (Del.)

3. ITC Ltd. v. Philip Morris Products SA & Ors., 2010 (42) PTC 572 (Del.)

4. Raymond Ltd. v. Raymond Pharmaceuticals Private Ltd., 2010 (44) PTC 25 (Bom.)

5. Chorion Rights Ltd. v. Ishan Apparel & Ors., 2010 (43) PTC 616 (Del.)

6. Kamdhenu Ispat Ltd. v. Kamdhenu Pickles and Spices Ind. Pvt. Ltd.,
2011 (46) PTC 152 (Del.)

7. Tata Sons Ltd. v. Manoj Dodia, 2011 (46) PTC 244 (Del.)

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Infringement though Comparative
advertisements involving “disparagement”
A registered trademark is infringed by any advertising of that
trademark if such advertising-
 
a) takes unfair advantage of and is contrary to- honest
practices in industrial or commercial matters; or

b) is detrimental to its distinctive character; or

c) is against the reputation of the trademark

03/16/2021 65
Meaning

•It is advertising which explicitly or

by implication identifies a
competitor or goods or services
offered by a competitor.

03/16/2021 66
Illustrative cases
• Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd
(Kiwi and Cherry Blossom)
• Reckitt & Colman of India Ltd. v. MP
Ramachandran & Anr. (Ujala v. Robin Blue)
• Pepsi Co. Inc. v. Hindustan Coca Cola Ltd, . 2001
(21) PTC. 699. (Pepsi and Thums Up)
• Dabur India Ltd v. Colgate Palmolive India Ltd, 2004
(29) PTC. 401 (Dabur and Colgate Tooth Powder)
• Paras Pharmaceuticals Ltd. v. Ranbaxy Laboratories
Ltd. AIR 2008 Guj 94 (Moov and Volini)

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• https://youtu.be/GyY15Jkkg2A

• https://youtu.be/XtXJSX71hhg

03/16/2021 68
Reckitt & Colman of India Ltd. v. MP
Ramachandran & Anr.
• 1. A tradesman is entitled to declare his goods to be best in the world,
even though the declaration is untrue;
• 2. He can also say that my goods are better than his competitors’, even
though such statement is untrue;
• 3. For the purpose of saying that his goods are the best in the world or
his goods are better than his competitors’ he can even compare the
advantages of his goods over the goods of others;
• 4. He, however, cannot while saying 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;
• 5. If there is no defamation to the goods or to the manufacturer of such
goods no action lies, but if there is such defamation an action lies and if
an action lies for recovery of damages for defamation, then the Court is
also competent to grant an order of injunction restraining repetition of
such defamation.

03/16/2021 69
Use of regt. Trade mark not constituting
infringement
• Statutory provisions- Section 30 of the Trade marks Act, 1999 deals
with certain instances of use of the trade mark which in the
circumstances mentioned therein do not constitute infringement.

03/16/2021 71
• When a person uses a trademark in accordance
with honest practices
• Use of mark to indicate kind, quality, quantity etc.
• Use of mark which is outside the scope of
registration
• Implied consent for Use
• Use of registered trademark in relation to parts and
accessories
• Use of two registered trademark identical or similar
to each other.
03/16/2021 75
Honest Practice

• A duty to act fairly in relation to the legitimate interests of the trademark owner.
• Honest conduct in trade
• Article 10bis of Paris Convention
• Article 10 bis - [Unfair Competition]
• (1) The countries of the Union are bound to assure to nationals of such countries
effective protection against unfair competition.
• (2) Any act of competition contrary to honest practices in industrial or commercial
matters constitutes an act of unfair competition.
• (3) The following in particular shall be prohibited:
• l. all acts of such a nature as to create confusion by any means whatever with the
establishment, the goods, or the industrial or commercial activities, of a competitor;
• 2. false allegations in the course of trade of such a nature as to discredit the
establishment, the goods, or the industrial or commercial activities, of a competitor;
• 3. indications or allegations the use of which in the course of trade is liable to
mislead the public as to the nature, the manufacturing process, the characteristics,
the suitability for their purpose, or the quantity, of the goods.

03/16/2021 76
NESTLE INDIA LIMITED VS. MOOD HOSPITALITY PVT.
LTD.
[2010 (42) PTC 514 (Del.) (DB)]

• "YO! China" vs. " 'Masala Yo!' &'Chilly Chow Yo!'".

• 'YO!' a plain and informal expression used world over to convey
excitement has been subject of a trade mark war in India. Moods
Hospitality (MH) that runs a chain of Chinese restaurants in India
under the name 'Yo! China' filed a suit for trade mark infringement
and passing off at the Delhi High Court seeking an interim injunction
against the use of the expression 'Yo' by Nestle India for their
recently-launched Maggi Cuppa Mania Instant Noodles in two
flavours – 'Masala Yo!' and 'Chilly Chow Yo!'. MH claimed prior rights
over the use of 'YO!' in relation to noodles. MH argued that the trade
mark 'Yo!' has become distinctive of its popular Chinese restaurant
chain 'Yo! China' and its products. On the other hand, Nestle India
argued that mark 'Yo!' lacks trade mark character and is publici juris.

03/16/2021 77
• Setting aside the order of the single judge bench, wherein Nestle was
restrained from using the expression "YO!", the Appellate Court
observed that there is nothing to suggest that the word "Yo" in
"Masala YO!" and "Chilly Chow Yo!" would create a connection in the
minds of the customers with respondent as being the source of the
product. On the contrary, the use of mark "Yo" retains its primary
meaning of inviting attention or as an exclamation. This is all the
more so because the appellant's distinctive trade mark "MAGGI" is
prominently displayed on the appellant's "Cuppa Mania" products. It
must also be remembered that the dispute here is with the use of
the mark "Yo" (with or without the exclamation mark) and, therefore,
the comparison has to be made with MH's registered trade mark
"Yo!" and not "Yo! China" which, taken as a whole, cannot be
confused with "YO!".

03/16/2021 78
Carlsberg India Pvt. Ltd vs Radico
Khaitan 

03/16/2021 79
• Radico Khaitan Ltd., a manufacturer of alcoholic beverages was the
plaintiff.
• The company was using the numeral i.e. 8 from 2006 itself till now,
and they were generating scores of profit which was added onto their
revenue turnover. Their sale during the years 2006-2007 till 2010-
2011, was 2136.4 million to 2565.9 million.
• Later, Carlsberg started selling beer by launching the product in
February 2011 under the trademark PALONE 8 with the numeral 8
being used in the same font and color as alike the one used by
Radico.

03/16/2021 80
• Radico contends that Carlsberg is selling beer under the trademark
Palone8 with numeral 8 being used in the same font size, same font
and color. From the point of a reasonable person involved the trade
in any way, and from the perspective of the practices prevalent in the
industry i.e. to see what other players are doing in the same industry,
it can potentially create confusion in the minds of the consumers.
• By adding the slogan on numeral 8, Carlsberg essentially portrays the
idea of Radico’s trademark which emerges in the minds of the
consumers. They can associate and connect to Radico’s trademark i.e.
8PM while looking at the Carlsberg beer bottle with the label
prominently displaying the numeral 8PM in the same font and size
and with the same color and styling like that of Radico’s slogan.

03/16/2021 81
• There are various alcoholic drinks brands in the market having reference to the
numeral 8 like Signature and Bacardi. They contended that Numeral 8 was public
juris which meant, it was a public right which is common to the trade in alcohol.
Registration of the trademark Palone8 was under class 32 of Trademark Act 1999,
and both the products belong to different class. Further, as the alcohol consuming
consumers are very much aware, informed and can distinguish the features of beer
/ whisky/ rum/ brandy which are registered under the class 33 of trademark act
1999, it would not mislead the consumers.
• Radico’s slogan “AATH KE THAATH” with numeral 8 showcases & somehow
connects the numeric value to the luxury of Eight (8) empowering it in such a way.
While on the other hand, Carlsberg using the slogan 8 “KA DUM”regarding numeral
8, shows the potency of eight rather than intending to mislead the consumers.
Both belong to different class and both are different products. Even the other
products like:
– WHISKY under SIGNATURE with numeral 8, displayed prominently on the label,
– Bacardi’s 8 RUM
• Similarly, there are other various brands in alcoholic industry which uses the same concept to
make their product distinctive either by adding numeral or by adding the slogans.
• The reason about the price differentiation is substantial, Radico’s product i.e.
whisky price is costing Rs.300 per bottle while Carlsberg product i.e. beer price is
costing Rs. 65 per bottle. Well, if products belong to the different class and
category, having distinct feature by itself then there will a cost differentiation. Beer
cannot be sold at that range of price where Whisky and Rum are being sold.

03/16/2021 82
Judgment:

• On 20th December 2011, the Delhi High Court held the case in favour of Carlsberg
and dismissed Radico’s prayer for injunction.
• 1 The plaintiff has registered his trademark as 8PM for advertising its product in
the market and,
• 2. Both the goods & products have dissimilarity and both belong to different
sections and class and beer is only a dilution of alcohol and not assuchalcohol,
• 3 And after applying the test of distinctiveness which includes numeral and
considering the facts that Numeral 8 was public juris which meant, it was a public
right which is common to the trade in alcohol. Merely by the stylized written
form of the numeral 8, it cannot be a sufficient ground for Radico to obtain an
injunction.
• 4. The decisive question is a simple trade dress analysis of the overall “look and
feel” of the label, independent of its contents. Further, on comparing the two
labels, it can be seen that there is no prima facie cause of any consumer
confusion and damages caused, that would lead to infringement.
• 5.  It can be further seen that Radico had registration for a composite mark ‘8
PM’ and referring to Section 17 of the Trade Marks Act, a registered proprietor of
a composite mark cannot seek exclusivity with respect to individual components
of a Trade Mark. Since no exclusivity was claimed, there is no question of any
infringement since the only common aspect in both the marks is the numeral 8.

03/16/2021 83
Analysis:
• As far as my opinion goes, I won’t defer and would go synonymous
with the judgment, because of the following reasons:
• Both the products belonged and classified under variant classes i.e.
class 32 and class 33.
• Class 32 Beers; mineral and aerated waters and other non-alcoholic
beverages; fruit beverages and fruit juices; syrups and other preparations for
making beverages.
• Class 33 Alcoholic beverages (except beer).
• Class 33 excludes beer and on the other hand it includes whisky, rum, brandy
and alcoholic beverages.
• -A strong reference to common practice in the
trade of alcohol brought out that the numeral
8 is common to the trade, so there should not
be any dispute regarding the usage of
numeral i.e. 8.
03/16/2021 84
Analysis:

• -From the consumer’s point of view, if a consumer asks for a drink (in
a bar or in a alcoholic shop near to roads ) ,he will refer to the drink
category i.e. beer or whisky or so on ,he is aware of the fact that beer
is different and whisky ,rum ,brandy are different ,and even if he is
normal person who is drinking first time , through menu and  price of
the product he can analysis that beer are much cheaper as compare
to the whisky ,rum and brandy. So, there is always or at least often an
aware consumer who is able enough to distinguish among the drinks
or the type of alcoholic beverage which he/she wishes to prefer or to
consume.
• -Both the slogans reflect the different aspects of the product with
different brand  messages related to the numeral 8, Radico products
slogan message related to luxury of eight while Carlsberg product
slogan message related potency of eight.

03/16/2021 85
Anchor Health And Beauty Care Pvt ... vs
Procter & Gamble Manufacturing,

• Use of descriptive manner to describe the quality

03/16/2021 86
• Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing
Federation Ltd. & Ors' 2009 (41) PTC 336 (Del.) (DB)

03/16/2021 87
The court observed…

• At best, the mark is a combination of two popular English words.

Once a common phrase in the English language which directly
describes the product is adopted by a business enterprise, such
adoption naturally entails the risk that others in the field would also
be entitled to use such phrases provided no attempt is made to ride
on the band wagon of the appellant's indubitably market leading
product 'Sugar Free'. In this connection, merely because the
attributes of 'sugar free' can be described by other phrases cannot
detract from the common usage of the phrase 'Sugar Free' as
denoting products which do not contain sugar and any trader which
adopts such mark in the market place, does so with the clear
knowledge of the possibility of other traders also using the said mark.
That is precisely the reason for the denial of protection to such marks
by refusing registration as envisaged by Sections 9,30 and 35 of the
Trademarks Act, 1999."
03/16/2021 88
Hawkins Cookers Ltd v Murugan Enterprises
• This case is an appeal from an order of Single Judge of Delhi High
Court. The appellant is the registered proprietor of the trademark
HAWKINS for pressure cooker and parts thereof including gaskets.
The defendant manufactures and sells gaskets under the trademark
"MAYUR". On the packaging material of the defendant's product
appears the phrase "Suitable for Hawkins Pressure Cookers". The
words "suitable for" and "pressure cookers" are printed in black
colour and the word "Hawkins" is printed in red colour.

03/16/2021 89
• The appellant's arguments were as follows :-
• 1. By writing "Suitable for Hawkins Pressure Cookers", the
respondent is infringing the registered trademark of the appellant.
• 2. The gaskets manufactured by the respondent can fit any pressure
cooker manufactured by any manufacturer. The gaskets are not
manufactured for any particular brand of pressure cooker, much less
Hawkins pressure cooker.
• 3. Other gasket manufacturers indicate on packaging material that
the gasket is suitable for all pressure cookers.

03/16/2021 90
Section 30 (d) of the TM Act

• Section 30 (d) of the TM Act was discussed in this case. The said
section states that a registered trade mark is not infringed where the
use of a trade mark by a person in relation to goods adapted to form
part of, or to be accessory to, other goods in relation to which the
trade mark has been used, if the use of the trademark is reasonably
necessary in order to indicate that the goods are so adapted and
neither the purpose nor effect of the use of the trade mark is to
indicate, otherwise than in accordance with the fact, a connection in
the course of trade between any person and the goods. At the heart
of the dispute is "what is use of the trademark being reasonably
necessary in order to indicate that the goods are so adapted." The
Court got into the meaning of the words "reasonable" and
"necessary". According to the Court, the word "necessary" means
"inherent in the situation" and the word "reasonable" means "just".

03/16/2021 91
• Thus the term "reasonably necessary" would mean that inherent in
the situation, it would be just. Importing this meaning into the
language of Sec 30 (d), the Court held that the manufacturers of
parts or accessories of the goods, could refer to the trademark of the
goods only if it was just to do so. This would necessarily mean that
the goods claimed to be a part or an accessory are specifically
manufactured to be used as a part of the goods. Hence, this would
not apply where the parts or accessories are capable of being used
by the goods of various manufacturers. In such a circumstance,
mentioning that the parts or accessories can be used by goods of
only one manufacturer would be a clear violation of the registered
trademark and Section 30 (d) does not come into the aid of the
respondent.

03/16/2021 92
• The Court came to the conclusion that the evidence clearly brings out
that the gaskets would fit the lid of all pressure cookers
manufactured by different manufacturers. This is contrary to the fact
finding of the Single Judge (court of first instance) who had observed
that the respondent has emphasized that the gaskets manufactured
by them are specifically made to be fitted in the Hawkins pressure
cookers. While coming to this conclusion, the Division Bench relied
on the following 2 paragraphs of the affidavits filed by the parties :-
"5. ...the dimension of all the lids - are the same. Therefore the
gaskets .... can be interchangeably used generally for all brands of
pressure cookers in the market [Sic]" "2. ...the defendant
manufactures gaskets, which are used for different types of pressure
cookers including the pressure cooker manufactured by the plaintiff
[Sic]"

03/16/2021 93
• According to the Division bench, the conclusion reached by the Single
Judge was contrary to the record. The Division bench also highlighted
that the respondent while writing "Suitable for Hawkins Pressure
Cooker" has given undue prominence to the word "Hawkins" by
printing it in a distinct red colour and the remaining words of the
sentence are printed in black colour. The Court set aside the order of
the Single Judge and ruled in favour of the appellants. The
respondents were given three months to exhaust the offending
printed material.

03/16/2021 94
Passing off

Passing off is selling one’s own

goods under the pretence that they
are the goods of another man.

Passing off occurs when one trader attempts to pass off goods
by misrepresenting them so as to make the consumers believe
that his goods are the same as those of another trader.

For example, using a mark ‘ Colgate’

on a tooth paste with a similar get
up to pass it off as ‘Colgate’

03/16/2021 95
Object of the law of passing off

The object of the law of passing off is to protect some

form of property- Usually the goodwill of the plaintiff
in his business or his goods or his services or in the
work which he produces or something of that kind.
The goodwill of the business is ordinarily represented
by a mark, name, get up or other badge.
Goodwill, misrepresentation and damage are the
three elements of the tort of passing off, which is
often referred to as the ‘classical trinity’ of passing
off.

03/16/2021 96
The substantive law of passing off is entirely based on common law,
i.e., case law. It is not defined in the Trade Marks Act, 1999. It is
referred to in Section 27(2), Section 134(1)(c) and Section 135.
Section 27(2) states that the rights of action against any person for
passing off goods of another person or the remedies in respect
thereof are unaffected by the provisions of the Act. Section 134(1) (c)
refers to jurisdiction of courts to try suits for passing off arising out of
the use of any trade mark. Section 135 specifies the remedies
available in respect of passing off arising from the use of a trade
mark.

03/16/2021 97
Scope of the Law

The concept of passing off which is a form of tort has undergone

changes in course of time.
At first it was restricted to the representation of one’s goods as those
of another.
Later it was extended to business and services. Subsequently it was
further applied professions and non- trading activities.
Today it is applied to many forms of unfair trading and unfair
competition where the activities of one person cause damage or
injury to the goodwill associated with the activities of another person
or group of persons.

03/16/2021 98
The elements of passing off- classical
formulation
The elements of
a passing off
action are

(4) Likelihood
of deception (1) Reputation
and confusion

(3) Damage. (2) Deception

03/16/2021 99
SM Dychem Ltd Vs. Cadbury (India) Ltd.,
(2000) 5 SCC 573
• In the instant case Honourable Supreme Court emphasized on the
dissimilar aspect as a test then the similar aspect as which were
taken as test in the earlier case.
• Facts of the Case:
• Plaintiff started business in 1988 in four products like potato-chips,
potato wafers, corn-pops. In January 1989 it started using the trade
mark PIKNIK. It applied for registration on 17.2.198. Respondent was
found using the mark 'PICNIC' for chocolates. The appellant filed the
suit based on alleged infringement of trade mark and passing off and
for temporary injunction. Trial Court held in the favour of appellant
and held that the two are Deceptively Similar Mark.
03/16/2021 101
• On appeal the High Court reversed the trial court’s decision and held
that the two marks are different in their appearance and word
composition. Supreme Court held the view of the High Court and
chooses to take the following grounds to decide the case :
• 1. Whether there was any special aspect of the common feature
which had been copied.
• 2. Mode in which the parts where put together differently, i.e.
whether dissimilarity of the part or parts was enough to make the
product dissimilar.
• 3. Whether, when there were common elements, should not pay
more regard to parts which were not common while at the same
time not disregarding the common parts?
Cadila Healthcare Vs. Cadila Pharmaceutical
Ltd., (2001) 5 SCC 73.
• Landmark decision which holds the ground regarding the test to
decide upon what amount to “Deceptively Similar”.
• The Cadbury case was overruled by this judgment.
Points of consideration

In Cadila Health Care v. Cadila Pharmaceutical Limited, it was held that

in action for passing off on the basis of deceptive similarity the
following factors are to be considered are:-
1. Nature of the marks i.e. whether the marks are word marks or labels
marks or composite marks i.e. both words and label works.
2. The degree of resemblance between the marks, phonetically similar
and similar in idea.
3. The nature of the goods in respect of which they are used as trade
marks.

03/16/2021 104
4. The similarity in the nature, character and performance of the goods
of the rival traders.
5. The class of purchasers who are likely to buy the goods bearing the
marks they require, on their education and intelligence and a degree
of care they are likely to exercise in purchasing and/or using the
goods.

03/16/2021 105
6. The mode of purchasing the goods or placing orders for the goods,
and
7. Any other surrounding circumferences which may be relevant in the
extent of dissimilarity between the competing marks.
Weight age to be given to each of the aforesaid factors depends upon
facts of each case and the same weight age cannot be given to each
factor in every case.

03/16/2021 106
• Facts of the Case:
• Appellant and Respondent in the instant case took over the assets of
a Cadila group with the condition that both can use the name Cadila
for their corporate transaction. Whole dispute arises when the
Respondent apply for the Registration of the trademark "Falcitab" as
brand name for the medicine. The objection was raised by the
appellant, who had already applied for the brand name "Falcigo" and
permission was granted. The medicine was to be used for the
treatment of cerebral malaria commonly known as 'Falcipharum'. The
appellant contained that the name used by the respondent are
similar to that used by the appellant. Hence appellant applied for the
interim injunction. Extra Assistant Judge, Vadodara dismissed the
interim injunction application. Same was also rejected by the High
Court. Against this order the Appellant moved to the Supreme Court.
• Decision of the Supreme Court:
• The Hon‟able Court analyzed the whole situation and without going into the
merits of the case laid down certain principles which should be taken into
consideration while deciding the “Deceptive Similarity”. The Apex Court referred
the matter to the district court to be decided on the given principle.
• Principles Lead Down to Decide Upon the “Deceptively Similar”.
• 1. The Nature of the Mark i.e. whether the marks are word marks or label marks
or composite marks that both and label works.
• 2. Degree of resemblances between marks phonetically similar and hence in
idea.
• 3. The nature of goods in respect of which they used as trade mark.
• 4. The similarity in the nature, character and performance of the goods of the
rival traders.
• 5. The class of purchaser who are likely to buy the goods bearing the marks they
require, on their education intelligence and a degree of care they likely to
exercise in purchasing and /or using the goods.
• 6. The mood of purchasing the goods or placing orders of the good.
• 7. Any other surrounding circumstances which may be relevant in the extent of
the dissimilarity between competing marks.
Defences in Passing off Action
1. The name, mark or other symbol, the use of
which is sought to be restrained, is not
distinctive of the plaintiff’s goods or business.
2. The defendant’s use of the name, mark or
other symbol is not such as to be likely to
pass off his goods or business as those of the
plaintiff.
3. The defendant has a right of his own to use
the name, mark or other symbol complained
of.
03/16/2021 109
Defences in Passing off Action

4. Isolated cases of passing off.

5. The plaintiff is not entitled to relief on
account of delay, estoppel, and acquiescence,
deceptive use of the mark or symbol,
misrepresentation of facts or fraudulent trade.
6. The goods or businesses of the plaintiff and
of the defendant are wholly different.
7. Defendant using the word complained of for
bona fide description of his goods
03/16/2021 110
Procedure in suits for passing off

A suit for passing off arising out of the use by the defendant of any
trade mark resembling the plaintiff’s trade mark must be instituted in
a court not inferior to a District Court having jurisdiction in a Court
not inferior to a District Court having jurisdiction to try the suit.
Where the passing off does not involve the use of any trade mark or
where there is no sale of goods the suit may be filed in a subordinate
judge’s court or a court superior to it.

03/16/2021 111
• Section 135(c) relates to jurisdiction of court in respect of passing off
arising out of the use of a trade mark. However under the definition
of trade mark in Section 2(1)(zb) includes service marks as well.
Accordingly in Section 135(c) applies to both trade marks relating to
goods and those relating to services.

03/16/2021 112
Persons who can be sued and who can sue in
an action for passing off

The plaintiff in a suit for passing off must the owner of a trade mark
which has acquired reputation in relation to some goods or the
owner of the goodwill in a trade name, or getup relating to some
goods or business or profession. An unregistered firm can file a suit
for passing off against a third party notwithstanding the prohibition
contained in Section 69(2)160 of the Partnership Act, as a suit for
passing off is not for enforcing rights arising from any contract161.
A mortgagee of a business and its trade name, who had never used
and had no intention to use the trade mark, cannot sue for passing
off.

03/16/2021 113
 The defendant in a suit for passing off must be a person, who had
passed off or whose activities are likely to pass off his goods as the
goods of another person, the plaintiff.
A person who is the agent of the registered proprietor of a trade
mark and has the sole franchise for selling the goods of the
registered proprietor and who had extensively advertised the mark in
the territory has locus standi to file a suit for passing off, though not
for infringement of the mark.

03/16/2021 114
The proprietor of an unregistered trade mark using the mark through a
licensee can bring an action for passing off162.
Action for passing off can be maintained by an unregistered firm and
such a suit will not be hit by the provisions of Section 9(2) of the
Partnership Act163.
An unregistered partnership firm can file a suit for infringement of
trade mark and passing off, Section 69(2) does not apply.

03/16/2021 115
Ranbaxy Laboratories Limited v/s Universal Twin
Labs
2008 (36) PTC 675 (BOMBAY)
Here the plaintiffs are the registered proprietor of the trade mark
VOLINI a medicinal and pharmaceutical preparation & an invented
word as, registered under Class 5. The defendants commenced
marketing under mark VONIGEL. It was held that the defendant
adopted a clever disguise for passing off its own product VONIGEL, by
infringing the registered trade mark of the plaintiff. There was
deceptively similar color combination.
The word mark, color scheme layout and get up adopted by the
defendant were held to be deceptively similar. So it was concluded
that adoption of mark was not honest.

03/16/2021 116
Hindustan Petroleum Corporation Ltd. v/s H.P.
Oil Corporation Ltd
2004 (28) PTC 362 (BOMBAY)

Plaintiff, Hindustan Petroleum Corporation Ltd is a large refining and

marketing oil company having a large network of retail outlets,
kerosene distributors and LPG dealership all over India. It has
conceived and adopted "HP" logo, being abbreviation of its corporate
name, as a trade mark which is registered.
Defendant with name and style of Hind Petro Corporation Ltd.,
subsequently it was renamed as H.P. Oil Corporation Ltd. adopting
the letters "H.P." as its trade mark in carrying on the business in
cooking gas in the State of Bihar. Plaintiffs registered their trade mark
"HP" and adoption of same by defendant amounts to infringement .
Held that the defendants were trying to passing off the goods by
infringing the trade mark of the plaintiff. Hence an injunction was
granted.

03/16/2021 117
RELIEF IN SUITS FOR INFRINGEMENT
OR PASSING OFF
• The type of relief to which a plaintiff is entitled are -
(1) An injunction restraining further use of the infringing mark.
(2) Damages or an account of profits.
(3) An order for delivery-up of infringing labels and marks for
destruction or erasure.

03/16/2021 118
INJUNCTION

• An injunction is a judicial process or order restraining a person from

continuing with wrongful act. the general rules governing the grants
of injunction are contained in section 36 to 42 of the Indian Specific
Relief Act, 1963 and Order XXXIX Rules 1 & 2 and section 151
( Inherent power of the Court) of the code of civil procedure, 1908.
• Injunction may be the following types :-
• (a) Anton piller order
(b) Mareva injunction
(c) Interlocutory injunction
(d) Perpetual injunction.
These are explained below:

03/16/2021 119
Anton piller order

• These are ex parte order to inspect defendant's premises. A court

may grant such an order to the plaintiff where there is a possibility of
a defendants destroying or disposing of the incriminating material.
Pass such an order if for inspection of the premises of the
defendants.
• An ex parte order means an order passed on the application of the
plaintiff without giving the defendants a notice of the application.
Such a notice would enable the defendant to temper with the
evidence of his infringement; hence ex parte order.

03/16/2021 120
• The three condition requisite for making and order are;
• (1) there must be a strong prima facie case in favour of the plaintiff.
(2) Such an order if not granted will cause irreparable damage to the
applicant for injunction.
(3) There must be clear evidence that the defendants have in their
possession incriminating documents or things and there is real a real
possibility that they may destroy such material if any notice of
application is served.

03/16/2021 121
Mareva injunction

• In such an order the court has power to freeze defendant's assets

where there exists a probability of the assets being dissipated or
canceled so as to make a judgment against him worthless and un-
enforceable.

03/16/2021 122
Interlocutory injunction

• This from of injunction is the commonly sought and most often granted
from of injunction. The interlocutory injunction it an order restraining
the defendants from continuance of the acts which amount to
infringement.
• An interlocutory / interim injunction may be granted ex parte that is
without notice in cases of urgency. Such ex parte injunction is however
granted for a limited period only.
• The plaintiff is seeking an ex parte interim injunction has to discharge
the duty of making full disclosure to the court of all facts which are
material to the exercise of the court's discretion whether or not to
grant the relief.
• Grant of interim / interlocutory injunction is discretionary, the plaintiff
or the applicant cannot claim it as a matter of right to have an ex parte
order granted in his favour.

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Perpetual injunction

• Perpetual injunction is an order restraining the defendants totally, for

all times to comes, from doing any act which infringes the right of the
proprietor of the trade mark. Perpetual injunction is generally
granted when the suit is finally decided. Perpetual injunction usually
follows when the grant of interim injunction against infringement
was granted at the beginning of the suit. It can be granted also in
cases where no interim injunction was granted.

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DAMAGES ACCOUNTS OF PROFITS

• The plaintiff if an action for infringement may be granted either damages or

an account of profits but not both. In an account of profit the infringer is
required to give up ill-gotten gains in favour of the plaintiff whose right he
has infringed.
• In case of damages the defendants has to compensate the plaintiff. The
damages may even be more than monetary profits reaped by the
defendants by the misuse of the plaintiff mark.
• The quantum of damages awarded is determined by the quantum of loss
actually sustained by the plaintiff which was the natural and direct
consequence of the unlawful acts of the defendants. Speculative and
unproven damages are also not considered and determining the quantum
of damages.
• In calculating the amount of profits, the damages suffered by the plaintiff is
immaterial. The accounts of profit, is made on the basis of actual profit, the
defendants has made out of the sale of infringing goods.

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• Radio Khaitan Ltd V. Carlsberg India Pvt Ltd, 2011 (48) PTC 1(Del)
• Casio Keisanki Kabushiki Kaisha V. Rakesh Sethi and Ors, 2011 (48) PTC 119(Del)
• Kalpataru Properties Private Ltd V. Kalpataru Hospitality and Facility
Management Services, 2011 (48) PTC 351(Bom)
• Ajinomoto Co., Inc. V. Sri Shankar Bhadar & Ors, 2011 (48) PTC 149 (Del)
• Societe Des Produits Nestle, S. A. & Anr V. Prayag Nutri Products Private Ltd.,
2011 (48) PTC 152 (Del)
• Tea Board India V. I.C.T Limited, 2011 (48) PTC 169 (Cal.)
• Lalit Kumar Arya & Anr V. Apsana Global Sugandhya (P) Ltd, 2011 (48) PTC 182
(Del)
• Godfrey Philips India Limited V. I.T.C. Limited, 2011 (48) PTC 190 (Cal.)
• Bata India Ltd vs A.M. Turaz & Ors
• United Spirits Ltd vs Invincible Entertainment

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