Trademark Resemblance & Protection

• Key portion differences exist between physical and intellectual property.
• Restrictions apply once Intellectual Property Rights (IPR) are granted.
• There is no compulsion for someone to use their physical property, but the same is possible for intellectual property.
• An Intellectual Property (IP) enters the public domain after 20 years, and then no rights will be granted.
• Rights under IPR are statutory rights.
• One category is human rights, second is Fundamental Rights (FR), and third is statutory rights.
• IPR requires creating something as a precondition.
• There are three phases for Intellectual Property Rights (IPR): Creation, Process, and Status of having IPR.

Labour Theory - John Locke

• Intellectual Property Rights (IPR) are a product of human intellect, skill, and labor.
• Labor transforms something, like when natural resources are transformed.
• John Locke did not differentiate between physical and intellectual property in his theory.
• Human labor deserves proprietary rights.
• Human labor on natural resources deserves recognition in the form of proprietary rights.
• Someone who works on unowned resources has a natural right to the fruits of their efforts.
• The state has a duty to respect and enforce these rights.

Utilitarian Theory - Bentham

• The principle of max benefit to max number of people is related to the objective of IPR.
• Maximizing benefit is a justification that is accepted widely
• IPR originates from the creator and compels them to utilize it.

Personality Theory - Hegel

• Property is an extension of one's personality; the personality blooms through protection of one's proprietary rights.
• IPR creates a conducive environment for human creativity.
• Human creativity is essential for survival
• IPR can be realized by law in the form of rights.
• Personality theory focuses on providing a conducive environment for creativity
• It can be used for patents and copyrights.

Forms of IPR

• Forms include Patent, Trademark, Copyright, Industrial Design, and Geographical Indication

Patent

• Discovery is not recognized under IPR since it is not related to creation.
• Inventions which are new, non-obvious, useful, and have industrial application are granted patents
• A patent is an exclusive monopoly right to a solution, such as drugs to cure disease.
• A high level of inventiveness is expected and no-one should be able to make similar invention, nor know the technical know-how easily.
• Patents are granted for 20 years and are non-renewable.

Trademark (TM)

• A trademark is an identity used for recognition for trade and commerce products and services.
• The trademark has to be distinctive.
• Protected for 10 years initially and can be granted for perpetuity if used continuously
• If not used for 5 years continuously, an application for withdrawal can be granted.

Copyright

• Can be granted for music, cinematography, literary, graphical and musical works.
• Even a restaurant menu can be granted copyright protection
• Two conditions are: Fixation and Originality + originates from author
• Anything that can be put down with permanence can be granted copyright
• Granted for expression, not ideas

Industrial Design

• Outer appearance that appeals to the eye are part of design and configuration.
• An LG fridge was rejected for another fridge due to its horizontal handle, despite having the latest technology.
• Design often gets preference over technology.

Geographical Indication

• Geographical indication is for products specific to a location/region, area, place, or symbol like Patan-Patola or Darjeeling tea.

Historical Evolution of TM in India

• Years 1940, 1958, and 1999 marked key points
• Before 1940, trademark protection existed but was not part of any statute and was recognized under registration act while remedies were levied under SRA but no specific act.
• The first law was the British Act of 1940, and the revision committee was made subsequently under J. Rajagopal Iyengar, who went through the 1940 Act, UK Act, and other documents for protection of trademarks.
• A bill was then made and turned into the Trade and Merchandise Mark Act of 1958
• It was successful, comprehensive and well drafted but lacked to provide criminal remedies, having only civil remedies and no provision for well known service marks.
• The 1958 revision occurred after independence
• In 1998, TRIPS was formed and gave provision for all kinds of IPR, also providing for minimum standards of protection and harmonization; revision was needed to incorporate this.
• While patent and copyright laws were amended, a new act for TM was created.
• Additions revised existing definitions, but the scheme remains the same.
• The Act has provisions for an appellate body, which was not there previously, and it was made to reduce the burden of the High Court
• Appeals from registrars' orders now go to the Intellectual Property Appellate Board (IPAB), instead of the High Court

Functions of TM

• When registering, questions will not be asked: while quality isn't a criteria, it is important to sustain the trademark.
• Trademark (TM) is not limited to proprietary rights, but protects goodwill at large and guarantees unchanged quality.
• Trademarks identify the product's origin, create an impression of products, advertise products and build image.

Features of TM

• TM protects the first to use and not the first to file.
• Rights of trade mark exist without registration unlike in the case for patents.
• When it comes to trademarks, if you use a trademark, you have a better claim over a person who applied for registration but did not use it, or if you were using it before another person uses it.
• Establishment of goodwill is therefore not based on registration, local and regional brands can grow without registration.
• Registered trademark proprietor has statutory protection, while unregistered trademark has legal protection

Infringement

• Infringement is available to claim, and includes perpetual protection of TM.
• Trademark infringement includes non-use clause and keeping it in use

Definitions, TM Act

• (m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof
• 1999 legislation added to the definition of "mark," including combination; shape of goods, packaging or combination of colors or any.
• The mark includes trade dress, i.e. a visual impression created by totality of all elements which gives a distinctive and recognizable appearance, like a bottle of coca cola. a product can have multiple protections, e.g., phone shape can be protected by industrial design, manual copyright, logo trade mark

Overlap

• Overlap of Intellectual Property (IP) takes place when single creative expression qualifies simultaneously for protection, like a bottle of coca-cola, which has industrial design protection as well as trademark.
• Such protection discretion is of the owner/user
• If a shape adds only aesthetic value, then it won't be a trademark, e.g., selling bananas in a box shaped as a banana because banana has natural shape, so no trademark can be granted.
• If distinctiveness of a shape has been acquired over time by use, a trademark can be granted, e.g., Toblerone's triangle shape.
• (zb) “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and (i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;
• For registration, TM is necessary i.e. a) Graphically represented and b) distinguishable

Salient Features of TM Act

• It is now possible to file multiple classification applications.
• The period of registration has been enhanced from seven years to ten years.
• The Register is no longer divided into Part A and Part B. A single Register of Trade Marks shall be maintained and all Part B registrations under the previous Act shall be included in this single Register
• Ex-parte injunction orders and other interlocutory orders can be passed.
• Consequences for a trademark violation are: a minimum penalty is 6 months imprisonment and a fine of 50k, and a max penalty is 3 yrs and a fine of 2l. Trademark violation is a cognizable and non-bailable offence
• Trade mark owners (including registered users) will now be able to initiate civil proceedings in any court having jurisdiction where they reside, work for gain or carry on business. -It is no longer necessary to initiate proceedings where the infringer resides or works for gain or carries on business, i.e., makes its goods / services available.
• These provisions assist the rights owner to plan all-India anti piracy operations from one jurisdiction of its own choice.

Distinction: TM and other IPs

• There is no overlap between Trademark (TM) and Patent because of different nature of IPR
• Overlap exists between Industrial Design (ID) and TM, where shape is protected in both
• Overlap also exists between TM and Copyright (CR) where graphical representation and artistic work are protected, and the call to opt for trademark or copyright protection has to be taken by the creator
• Overlap of TM and Geographical Indication (GI) previously occurred as protection was through collective marking, however after GI, very few overlaps are found

Deceptive Similarity

• Confusion takes place when one mark is available in absence of other
• Defined under section 2(h). Deceptively similar if it nearly resembles other mark as to be likely to or cause confusion.
• Near resemblance causes confusion in minds of consumers and causes him to buy it, resulting in a loss of goodwill, market and consumer.
• Trademarks create a layer of protection for consumers and also protects proprietor from losing his goodwill and business. so is both prop and consumer centric
• Well known marks initially start as ordinary marks but grows and becomes well known.
• Ordinary mark is class specific
• Relaxo (flip-flops) and Relaxo (PVC) - Court denied protection as there is no possibility of deception, b/w flip-flop and pipe
• Similarity per se is not prohibited, but it becomes a problem when deceptive. This isn't the case with well-known marks as they are exclusive e.g., if Relaxo acquires well known mark, there will be no other Relaxo. If well-known mark is not available, there may have multiple products.
• Well known mark is acquired only through litigation by courts pronouncements, not by registration Deceptive similarity is a ground for Opposing registration of mark, Challenging validity, Rectification, Infringement and passing off suit

Similarity

• Similarity is of 3 types: Visual, Phonetic and Structural/ conceptual.
• Visual similarity is restrictive and considers main elements like color, size of font and overall look.
• Minute dissimilarities aren't considered, only essentially appealing elements are considered.
• Phonetic similarity exists even without visual similarity, e.g., Lakme and Likeme, Amul and 1 Mul. Structural and Conceptual Similarity Factors to decide deceptive similarity include Identity, popularity and recognition or Consumer assessment.
• Other things that can be assessed are the Nature of goods and services (Relaxo), Assessment of similarity, and Factual and surrounding circumstances

Types of Trade Marks

• Service Marks are for service business where actual goods under the mark are not traded.

• Service Marks are a mechanism available to protect marks used in the service industry.

• Service business examples are services like computer hardware and software assembly and maintenance, restaurant and hotel services, courier and transport, beauty and health care, advertising ,publishing, educational and the like, and are now in a position to protect their names and marks.

• The substantive and procedural rules governing both types of marks are fundamentally the same.

• Collective marks a “collective mark” means a trade mark distinguishing the goods or services of members of an association of persons (not being a partnership within the meaning of the Indian Partnership Act, 1932) (9 of 1932) which is the proprietor of the mark from those of others

• Certification marks a “certification trade mark” means a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registrable as such under Chapter IX in respect of those goods or services in the name, as proprietor of the certification trade mark, of that person

Distinctiveness

• 'well known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services

• Registration is not a requirement for protection, and a trademark can be protected even without registration; though registration gives a stautory remedy in case of violations

• Trademarks protect goodwill; goodwill is not contingent on registration, hence, not necessary.

• An important concept is distinctiveness, because not all marks are trademarks but only those that are distinct

• Distinctiveness can be identified from certain features that can be separated from the existing one

Stages of Registration

• Filing of the application, Numbering of the application, Search, Advertising of the application, Opposition proceeding
• Numbering is an admin step of note because registry allots a number. Though seeming to be a mere admin step-has a significant role in protecting rights e.g., Before 5 years, apply for a mark. Number has been allotted. Person did not follow up the procedure and abandoned the procedure. Entered the market subsequently. Can use date of application as proof that have been using for X no of years.,
• Opposition proceedings include a hearing following PNJ where if legittimately removed, the trademark will be granted
• After acceptance of the application comes the Issuance of certificate of registration

Refusal of Registration-

• Negatively drafted sections, with all the grounds for refusal, are divided into Absolute (s9) and Relative grounds (s11) sections
• Absolute Grounds (Section 9): mark devoid of distinctiveness, does not have characteristics which can separate it from other category of goods to which it belongs, mark describes the quality, kind, quantity, which are to being marketed under that name are marks that cannot be registered, for eg- Yeast cannot be a good TM for a bread manufacturer also words which are ordinary in common parlance i.e. 'Sugarfree' are difficult to register, so only the way the word looks, and the way ‘sugar free' is written or used, can be protected. This is followed by grounds like 'likely to cause confusion' ; 'hurting religious sentiments' for some religious groups etc 'Obscene or scandalous material’ or ‘prohibited under Emblem and names act’ and Category of shapes prohibited from being TMd.
• Types of Distinctiveness [S. 9(1)(a)]: Inherent Distinctiveness and Factual Distinctiveness Inherent Distinctiveness means Unique inherently or inherently different. Eg- Toshiba, Sony, Kodak etc.- these words do not have any dictionary meaning These terms cannot be said to be of ordinary use

Factual Distinctiveness,

• Factual Distinctiveness also called “Acquired factual distinctiveness’ is a kind of distinctiveness that firms use to Acquire some goodwill in the market . Eg- MakeMyTrip and has a Purpose- To strike a balance between consumer and corp interest

Ladder of distinctiveness

• Step 1: Highest chances when coined/ fanciful terms. Eg- Kodak
• Step 2: Arbitrary. Eg- Apple. Kind of use arbitrary as never heard of
• Step 3: Suggestive. Eg Good Night
• Step 4: Descriptive. Eg- Café Coffee Day
• Step 5: Generic. Eg Xeror. Generic terms not permitted to be used a TM. Cannot use the name of the product itself as a TM. For eg, Table, cannot be a TM
• Marks held not coined: UNEEDA U NEED A or WASHRINE - WASH + RINSE or ALUMINOX - ALUMINIUM + OXIDE [9(1)(b)]
• There is No prohibition on use of terms such as BEST, A+ etc., but no Grant of rights can be made in respect of these terms i.e. we are not allowing these terms
• List of characters/qualities mentioned in this section- Cannot get TM; Proposed Used cannot get TM
• But if factual distinctiveness has been attained, then protection given. Eg- Classic cigarette brand
• Case: M/S Hindustan Development Corp Ltd. v/s The Dep Registrar of TM-- Case under old TM Act Cannot grant RASOI for cooking oil and product for two reasons, and for which the courts denied this name -Not distinctive
• Direct reference to the product -Common word- No one can have monopoly over

Geographical names

• Case: The Imperial Tobacco co. v. Registrar of TM Case for TM for snow-clad hills in outline and the world Simla written
• Registration refused on grounds of it being proposed and Went to Cal HC- Simla has not acquired a secondary meaning, thus not permitted
• However a Geographical name or a geographical work can only be granted registration if it acquires distinctiveness
• Case: M/S PK Overseas Pvt. Ltd v. KRBL Ltd. And anr . Subject matter is the mark “Bemisaal”. Protection was Originally Granted for proposed used. (However, the Registrar should not have Granted since it denotes quality) Two possibilities of raising objection: -Objection at the stage of opposition- which is pre-grant -X Bemisal was in use and had acquired factual distinctiveness
• If a Trademark has acquired distinctiveness between the date of granting registration and challenge- then Trademark shall not be taken away and The distinctiveness should be through use (Law)

Provisio 9(1)(a)

• Section 9(1)(C) No limit on using these terms, but protection cannot be granted for such terms
• Trademark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known Trademark
• Provisions under sub section 9(1) will not be applicable to those marks which already have a factual distinctiveness

Section 9(2)

Trademarks shall be denied if

• Nature as to deceive the public or cause confusion
• Likely to hurt the religious susceptibilities. Eg- SITA for garbage bags
• Scandalous or obscene
• Prohibited under emblem act
• Shape has significant with respect to Trademark

Trade dress-

• Trade dress means visual element where The identity of the mark can equally reside in shape, colour combination etc Types of shapes that cannot be protected under shape for Trademark as trade dress: -Natural shapes -Shapes necessary for getting technical results -Shapes not serving the purpose of identity of products but serving value through aesthetic design only

• Relative grounds are mentioned in SECTIONS 11 and 12

SECTION 11- RELATIVE GROUNDS

Section 9 Absolute grounds are available to Registrar to deny registration Section 11 Relative grounds available to the general public at the stage of opposition

• Section 12 talks about honest concurrent use as an exception to Section 11. Honest concurrent use requires
  • Target base is not similar -No evidence of either having copied the other -Then the registrar may grant registration, based on certain conditions of operating in a specific market area etc. The essence of this will also constitute “GOODWILL”
• Section 11 talks about how objection can be raise wrt a particular mark -TM not be registered because--
• Its identity with an earlier Trademark and similarity of the goods or services covered by the Trademark ,or, Similarity to an earlier Trademark and the identity or similarity of the goods or services covered by the Trademark
• Reason: Cannot share resemblance to confuse customers, hence the focus in this section 11, is based on the Similarity of Goods/ Services which itself must be assessed by finding out if the goods or services are -Identical Goods/ Services -Same goods/ services -Similar Goods/ Services -Related goods/ services -Dissimilar goods/ services -No relation between goods/ services

Examples

• Shoes v. shoes increases the Chances of causing confusion while Cement v. Tiles i.e., Identical goods which lead to identitical trademarks leads to ‘yes’ to possibility of confusion. Another example is of how Similar goods also increase the chances of a trademark violation. For ‘Medicines v. Building material’ if both are Dissimilar industries then there is “NO’ to violation. And the converse is true to the violation chances if “Similar’ industries.

• Chances of causing confusion is to be looked into to prove that an earlier mark has some distinctiveness…This is how objections will work

• ‘Word v/s label- example. Kercheif TM for Videocon -However, already existing recognized TM. -If a Registrar will ask for reason of similarity, then the parties have to factually prove why they want to use the same label

• Instances where confusion can happen are through Same designed label, colour etc.

• Other examples are using Different label but phonetically similar, Different marks- similar or same label and Different label but similarly written/ designed. Hence it could be said that Similar trade dress gives way to a Punch line!

• Case: Bhole Baba Milk Food Industries Ltd. V. Parul Food Specialities Both in the dairy product biz. Both using Krishna, with similar graphical representation. BB went to court against PFS. Pvt. LTd. (DB)

• PFS had defense under s. 9 has ordinary word. And it also stated that Term of general use “milk’ cannot be monopolized

• As per db, Registration obtained is per se to the word Krishna, but to the word Krishna written in a distinctive form which is a label. Only this as a whole can be accorded protection, and not the word which is of common origin

• As far the label of PFS, they have to highlight Parul's LORD, so that it is significant and that its Parul’s. They should not keep it in small fonts and make sure its bold.

• Nothing which is of common origin is ever protected is not for any brand to exclusively seek, as the main ground

Criteria of Similarity

• All these factors are to be considered in light of the factual matrix, including :Nature of the mark, where mark can be a as a whole, assessed for for degree of resemblance or nature of goods Goods are assessend by the courts to see if they are similar or distinct and assessed under that Direct connection with the degree of the resemblance as similar kinds of goods have a higher chance of resembling the other Character and performance of goods of the rival trader Class of purchasers based onLevel of understanding of the class of purchasers and Level of understanding of the class of purchasers and Level of understanding of the class of purchasers and Level of understanding of the class of purchasers and Level of understanding of the class of purchasers

• The Court is usually stricter in applying this criteria when it comes to pharmaceutical companies, as most of the consumers remember medicines through colour, size etc rather than the name or composition Standard would be different when medicines are only used when a patient is admitted as the hospital is expected to have higher info on the drugs Other grounds the court takes into consideration are the Mode of purchasing for goods or product, Any other surrounding circumstances

• Marks held not similar: Temochem- Temoget; MEROmer- MEROnem; TriaMINIC- CoriMINIC; LIPIcor- LIPIcard; DropoVIT-ProtoVIT; Shiv SHAKTI- SHAKTI Ghog; NIFTas- NIFTran

• Marks held similar: Glucovita- Gluvita; Orzid- Forzid

• Rasmola-Hajmola; Nirma-Nirmala; Formis- CHarmis; Ostwin- Fortwin

Interim Injunction Application

-In The case of LIV-52 v/s LIV-T: Disallowed by SB, DB- Del HC +SC and the court noted ‘LIV indicates LIVER and used by many as prefix’ . The court mentioned that ‘While comparison of two TMs, generic words should not be considered’ During the Main trial, it was noted that ‘Marks should be considered as a whole, and so that even though LIV is common to trade, LIV cannot be disregarded while comparison of marks’ and LIV-T is deceptively similar to LIV-52 and hence the court decided that Defendant must be Restrained from using LIV individually but may use as prefix, i.e. LIVOGEN, LIVPAR, LIVOSIN, LIVAPLEX

• CASE: Franco Indian Research Pvt. Ltd. v. Unichem Laboratories Ltd.; EVACUOL- EVACAL Even where the adoption, is honest and bona fide, but if it is likely to cause deception, then, in my opinion, that fact that adoption was bona fide and honest would not come in the way of the Court granting temporary injunction in favour of the plaintiffs prevent possibility of deception and/or confusion.

• SECTION 11(2) is an Essential sub-section, which gives protection to well-known marks and which can be Under two categories as , Ordinary marks and Well-known marks Raises against it under: .

  -Raises against it under section 11(1) and well known marks -Raises against it under section 11(2)-Part. 1- Protection to/ 29(4)-Part 2-where Well known marks was limited to section 11, or acquired status under Rul

• Section 124- giving opportunity to registered well known Trademark to earlier acquire well known by either being in the process of registration or in litigation. So either through court pronouncement or registrars categorization

• Courts mentioned that it the mark “Now, can file for it and that there is No need to take any court case action in order to help court to decide whether I am a well known Trademark or not” but trademarkers ‘Now just need to fill a form’

• SECTION 2(1)(ZG)- Well known Trademark is the one that ‘Has become known to a substantial segment of the population, if not allowed to be protected there will be loss of goodwill and some sort of association’ Section 11(6) gives the court details to assess well known trademark status and provides exhaustive list on How the mark is promoted and includes the ‘active line of communication, with assessing the Duration extent or geographical area’ This helps the courts by further assessing the Duration, extent and geographical of any promotion etc. etc

• The Guidelines for recognition of well known mark provides points (i)the knowledge or recognition of that trade mark in the relevant section of the public, including knowledge in India obtained as a result of promotion of the trade mark; (ii)the duration, extent and geographical area of any use of that trade mark; (iii)the duration, extent and geographical area of any promotion of the trade mark

• Those guidelines also asses the (iv)the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark and (v)the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record

• Court also factors ‘Facts under (6) with 11(7). While deciding whether a TM is well-known or not, following factors have to be taken into assessment-’

  • 'Actual or potential consumers of goods and services, No of dealers with Business circles dealing with the goods or services, to which the Trademark applies’ However if the registrar recognizes a TM under the section 11(8), there will be considered to be a well-known mark only if the trademark in itself does not show certain factors for the trademark assessment…These need not be shown, in order to determine the mark to be a well-known mark and these include of course, the Actual Use or Registration data, and when the Application for registration has been filed Trademark: Well known, in, or,Registered in, or Respect of which an application for registration has been filed in, any jurisdiction other than India; Then they must assess under the category ‘ Well known’ to ensure that the mark follows requirement which the knowledge of the substantial segment of people to follow is proven true This is often by the case with luxury brands, proven by showing knowledge of their brand amongst the Indian public

Well known brands assessment

• Case: Rolex Sa v. Alex Jewellery Pvt. Ltd. & ors (2009) 41 PTC 282 (Del)-Rolex filed a case against Alex Jewellery doing biz of artificial jewellery and using name Rolex and Court gave explanation

• These brands ensure that their How well known Trademark comes to be recognized comes from watches and accessories where Plaintiff was able to provide that since 1912, this particular name is adopted for luxury watchesw and so they are sure that trademark brand is ready.

• Case: Warner Bros. Entertainment Inc. and anr. v. Harinder Kohli and ors. (2008) 38 PTC 185 (Del)-WB went to court and argued that Hari Puttar should not be permitted to be screened.

Section 11 objection

• CASE: Tata Sons Ltd. v. Manoj Dodia and ors -This case laidout various defeses against section 11 by showing Manoj Dodia and other has started biz and selling weighing scale and other equipment under the name 'A Tata' where Tata argued that the other trademarker was trying to ride on their goodwill.

• The Courts that the D were trying to ride on the Plaintiffs The Court considered following factors to determine whether well known mark or not: Extent of knowledge of the mark to its users Extent of knowledge of the mark to its users Extent of knowledge of the mark to its users Extent of knowledge of the mark to its users And Duration of the use of the mark.

• Duration is important because goodwill is established and protected through such time to create the product and other and The method, frequency, extent and duration of advertising and promotion of mark plus Geographical extent of the trading area in which the mark is used is what constitutes good practices. A solid and clear State of registration of the mark, along with clear Volume of biz of the goods or services sold under that mark and Nature and extent of the use of same or similar mark by other partiees.

• Those defenses of Trademark also require Extent to which the rights claimed in the mark have been successfully enforced and its assessment particularly before the courts of law and Trademark registry, the court added what the.

• Actual number of potential persons consuming goods or availing services that are being sold under that brand and their good will are also factors the court considers DefenseS AGAINST SECTION 11 OBJECTION

Here are various defense to file when you are challenged under SECTION 11 Defense Prior Use defense Concurrent Use defense Different goods/ services defense Different trade area defense Honest Concurrent Use defense

• Where Ordinary mark is protected in a specific class, this is how the protection is class specific.

• Honest Concurrent Use requires: -Adoption must be honest/ with no intention to use someone's else's already existing trademark -Concurrent use of the Mark must be used with another Trademark The test for the adoption of Honest Concurrent Use is that -Conditions and limitations are can be Imposed by the Registrar of Trademark while allowing registration that have faced objection

• The conditions for concurrent use of trademark are:

  • The defendants adoption of trademark was for educational reasons
  • The defendants use of Trademark did not amount to an appropriation of trademark
  • The plaintiff did not establish its business name and trademark had reputation or goodwill throughout India
  • The use of defendant trademark was honest, because it did not cause confusion

• Here are various requirements for concurrent use of trademark through past case law Institute of Education v Anjani Kumar Goenka & anr

Two institutes- one in delhi and the other in Sikar Sikar- Mohini Devi Goenka Vidyalaya Raise issues of honest concurrent use Claim of Delhi school was that the Sikar one is trying to ride on our goodwill Delhi was established in 94, Sikar one in 95 One year is too less a time to established goodwill in one year The Court said that goodwill not yet established as and As established due to a trust deed which has taken place much before and not considered to be an ill intention on part of the Sikar institute

And So, Both the parties were accepted to have honest concurrent use in trade

Infringment of Trademark

• According to Blacks law dictionary- Infringement means 'an act that interfere 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 And it must not be a 'Registered Trademark' but instead an actual “infringed trademark” to face the action of the law As per Trademark Act, infringed if: -Found to be copy of whole registered mark with a few additions and alterations where Infringed mark is used in the course of trade and in Regular trade i.e. has the proprietor is engaged -Other tests if infringed when there, where there were infringements of ‘Use of use of infringed mark is printed or usual representation of the mark in advertisement but any oral use of the mark is not infringement

• The process of infringement is that he mark used by the other person so nearly resembles the mark of the registered proprietor with exclusive use is likely to deceive or cause confusion and in relation to goods in respect of which is it registered

• 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

• The court must assess: Of the registered proprietor is to be found used by other person than only than the Court may conclude the matter

• During Action for infringement P must be the registered owner of a Trademark-If not a registered Trademark proprietor, and the suit will therefore not be maintainable under Section 29

• The defendendant must be using a mark deceptively similar to the Plaintiffs mark

• Their Use must be in relation to the goods in respect of which the Plaintiffs mark is registered

• The defendants Use by the defendant must not be accidental but in the course of trade in their work or services Section 27- There is therefore to be NO action for infringement of unregistered Trademark

• Subsection (3) of 29. If a court decides the defendents act to be ‘identical’ then court’s that they may consider the act to “cause confusion’

• However, If it has been proven and proven and known to the courts that a similar mark is being used for a different class of goods and is a ordinary mark, no remedy maybe issued under Section 29 but if and rather If it a well-recognized Trademark and the other firms act’ is a mark, with an already existing and proven Indian market reputation’ then a remedy may follow

Who can sue for Infringement?

Action and Jurisdiction is however only available with the highest with jurisdictional strength and assessment in the district area based under Those grounds for jurisdiction under CPC that are already written there. There is a Limitation to the infringing action is therefore 3 years to go to court

-Here are the people who Can sue? Proprietor of the registered Trademark or legal successor Registered user Legal heirs of deceased proprietor As an applicant for registration Any one of the joint proprietors of a Trademark Foreigner proprietor of a Trademark registered in India when infringement occurs in India But here is” Who can be used” for the case of an infringement? Infringer Agents of infringers Directors and promoter of a ltd co cannot be joined unless they are individually involved.

• When an infringement is a continuing one, cause of action arises everytime there has been an infringement-For example-In a continued and continued sale of infringing article, sale of each article will give rise to various a fresh cause of action against the firm, and they the firm the burden

Explanation of factors influencing trademark resemblance and the stricter criteria applied to pharmaceutical trademarks. Discusses the approach to generic words in trademark comparison, key rulings in cases like LIV-52 vs. LIV-T and EVACUOL vs. EVACAL. Covers Section 11(2) and acquiring well-known status.