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UNIVERSITY OF PETROLEUM & ENERGY STUDIES

COLLEGE OF LEGAL STUDIES
B. Tech+ LLB (cyberlaw)
SEMESTER X
ACADEMIC YEAR: 2018-19. SESSIONS: FEB-MAY

PROJECT
FOR
INTELLECTUAL PROPERTY LAWS

“Law relating to Trademarks in India – A study with Special reference to

Passing Off and Infringement of Trademarks”

Under the Supervision of:

Ms. Parul Sinha
Asst. Professor in Law, Department of Law and Technology,
School of Law, UPES

NAME SAPID ROLL NO

Akash parmar 500039061 R120214003

Rameezul Hoda 500037992 R120214026

Pradip kr mahanty 500038906 R120214024

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1. INTRODUCTION

This research work on the subject “Law relating to Trademarks in India – A study with Special
reference to Passing Off and Infringement of Trademarks” is of immense importance in view
of the several infirmities and draw backs in implementation of the existing laws. Out of all the
Intellectual Property Rights, the trade mark is the only property which can be retained
permanently as long as it is renewed. World is constantly changing, apart from the physical
phenomenon this change is attributed to various inventions and developments in trade and
commerce. These inventions, advertising materials, books etc., are part of the human minds
backed by the intellectual labour. The products of the great minds are protected throughout the
world by legislations. The necessity and amendments to the existing Trade Mark Act has arisen
due to globalization and in order to curtail the unfair trade practices. Companies spent
enormous amount of money for the promotion of their goods and when the particular products
and brand names become famous, the undersized businessmen and general public try to imitate
the same to encash the goodwill and reputation established by the reputed companies.
Therefore, the brand name becomes famous and more often the product itself becomes
synonym for the brand name.
For instance, “XEROX” which has become synonym for the photocopy and also some of the
similar Indian names and famous brands like “DALDA” have become synonyms for the similar
range of products. As India is the signatory to TRIPs agreement, it is bound to incorporate the
international law and its covenants into the local laws. In view of that the Trade and
Merchandise Act, 1958 is transformed to a new act named as the Trademarks Act, 1999. The
question of passing off and infringement arises when someone is imitating the brand name of
the true owner in order to encash the goodwill and reputation of the said brand name.
Historically speaking, the Trademarks Registration Act of 1875 (UK) has created a legal
register of marks and the first Trademarks Registry in the world, which opened in London in
1876. The Trademark law was consolidated in 1883 and the Trademarks Act of 1905 gave the
first statutory definition of a ‘trademark’. In 1938 it saw further legal changes, which had major
effect on trade mark registration. As regards to India, the Parliament has enacted the
Trademarks Act 1999 by substituting the existing Trade and Merchandise Act 1958 and the
Government has framed the Trademarks Rules 2002 (with effect from September 15, 2003) to
ensure adequate protection for domestic and international brand owners, in compliance with
the TRIPs agreement.

2. SIGNIFICANCE OF THE STUDY

The Trademark is an intangible asset and its impact on the market is immense. Once
brand/Trademark becomes famous or well known it creates revenue to the trader. The
Trademark/Service mark can be assigned and licensed to the prospective user for good
consideration. The quality of the product and brand value plays vital role in the promotion of
goods and the business. The valuation of the brand significantly creates the status to the trader
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in the market. Not only the financial standing but it creates the social status in the market. In
the 3 recent past the value of the brand of APPLE (mobile phone) is stated as 100 billion dollars.
Any imitation or copying of the well-known trademarks by way of passing off and infringement
results in costly litigation. A well-chosen and well publicized trademark often has value far
beyond the physical assets of a company

3. TRADEMARK PROTECTION- A CONCEPTUAL ANALYSIS

Trademark law is concerned with preventing confusion among consumers and protecting
people’s investments in their source-indicating marks. Honest sellers spend millions to create
brand identity and do not want buyers to confuse their products with others’ products. Nor do
they want other sellers to use similar marks that dilute their name recognition. Prudent buyers
do not want to be confused about which producer is the source of a product and rely on a
mark to indicate what characteristics and quality the product has.1

3.1. DEFINITION OF TRADEMARK AND ITS VARIATIONS

3.1.1. European Union and United Kingdom

The Trademarks Act 1994 of the United Kingdom and the corresponding legislation in the
other 24-member states of the European Union, are in large part designed to implement the
European Trademarks Directive, and legislation has to be understood in the light of that
Directive. Although entitled “The First Council Directive to Approximate the Laws of the
Member States Relating to Trademarks”2, it is by no means merely a first step in the
harmonization of the trademark law; on the contrary it provides rather complete
harmonization of the laws of the member states on several of the primary features of the
trademark law. Thus, it lays down, among other things, the essential provisions governing the
nature of trademark; the grounds for refusal of invalidity; the rights conferred by a trademark;
and the conditions governing the exhaustion of rights.

3.1.2. European Law

Article 2 of the TM Directive entitled as “Signs of which Trademark may consist” provides
that
“A trademark may consist of any sign capable of being represented graphically, particularly
words, including personal names, designs, letters, numerals, the shape of goods or of their
packaging, provided that such signs are capable of distinguishing the goods or services of one
undertaking from those of other undertakings.
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3.1.3. United Kingdom

When UK legislature implemented the TM Directive into UK law it incorrectly thought that
the directive defined “trademark”. In fact, the attributes of a ‘trademark’ have to be gathered
from various sources, some explicit and some implicit3. Article 2 of the TM Directive was
implemented by the United Kingdom in S.1 of the 1994 Act as

3.1.4. United States of America

The term “trademark” includes any word, name, symbol, or device, or any combination
thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the
principal register established by this chapter, to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold by others and to indicate the
source of the goods, even if that source is unknown.
4.1.5. India
While some form of proprietary protection for marks in India dates back several millennia,
India’s statutory Trademarks Law dates back to 1860. Prior to 1940 there was no official
trademark Law in India. The principles of infringement actions had already been embodied in
S.54 of the Specific Relief Act of 1877 but it is interesting to note that there does not appear a
single reported case in India in which S.54 of the Specific relief act has been relied upon. The
reason for this may be that infringement actions in the United Kingdom after 1875 being
based on registered trademarks were not followed in India probably under the erroneous
impression that without registration of a trademark that cause of action was not available. But
the Supreme Court has affirmed the decision of the Bombay High Court that a trademark has
been considered as a property and an infringement action was known to India.
4.1.6. .BASIC PRINCIPLES OF TRADEMARK LAW
It is interesting to note that the law of trademark, practically all over the world is based on
three broad concepts. They are distinctiveness or distinctive character, deceptive similarity or
near resemblance of marks, same description or similarity of goods. The purpose of the Act,
as stated in the preamble, is to provide for registration and better protection of trademarks for
goods and services and to prevent the use of fraudulent marks. In consonance with this object
certain fundamental principles of trademark law can be extracted from the Trademarks Act
1999. Besides these principles, the principles laid down by Gita Mittal J of Delhi High Court
in Pfizer Products Incv. Neeraj Food Products are also enumerated below:

● Since registration confers on the proprietor a kind of monopoly right over the use of the
mark, which may consist of a word or a symbol legitimately required by other traders
for bonafide trading or business purposes, certain restrictions are necessary on the class
of words over which such monopoly right may be granted.
● Registration should not interfere with the bonafide use by other persons of names or
words in ordinary usage.
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● Property rights in a trademark acquired by use are superior to similar rights obtained
by registration under the act. This is clear from the preamble which refers to “better
protection of trademarks thereby necessarily implying the existence and availability of
some protection under the Common law. It, therefore follows that prior users of
trademarks should be protected against any monopoly rights granted under the statute.
● There are obviously two main interests to be protected when a mark is presented for
registration. There is the first interest of the public. A trademark ought not to be
registered if its use will be apt to mislead the public as to the origin of the goods they
are purchasing. They are also the interests of the other existing traders who are entitled
to object if the use of the trademark proposed for registration will be calculated to
enable the applicant’s goods to be passed off on the public as such other trader’s goods.
● It may so happen that the trader has honestly used the trademark for a number of years
although an identical mark has been registered or used by another. Section 12 of the act
provides for registration of such marks subject to certain limitations and suitable
conditions.
● A trademark has no meaning unless it is used in relation to some goods. Broadly
speaking, the life of a trademark depends upon its use and continued non-use may lead
to its eventual death. There is therefore no equitable or logical basis for the continuance
of protection afforded by registration where the mark is no longer in use for sufficiently
long period.
● A trademark is recognized as a property. The term ‘proprietor of a trademark’ is used
in the definition of a trademark and also in various other provisions of the act. It should
therefore be assignable and transmissible as in the case of other forms of property.
● Having regard to the peculiar nature of this property, the act has taken care to impose
● various restrictions and conditions for the assignment and transmission of property
rights in a trademark, whether registered or unregistered.
● Granting the benefits of registration under the Statute is not only a matter of interest to
the applicant seeking registration, but it is a matter in which the public is also interested.
It is, therefore, necessary that any number of public who wants to object to object to the
registration should be permitted to do so. The act accordingly provides for
advertisement of the application and opposition thereto by any interested party.

5. Development across globe due to liberalization and globalization

5.1. NEED FOR UNIFORMITY
The ever-increasing importance and proliferation of trademarks in international and domestic
commerce is remarkable in its own way and should not be overshadowed by the current
discussions concerning patents and copyrights. Most obvious is the impact of electronic
commerce and the growth of the Internet as a selling medium, a forum that transcends national
boundaries and bears no physical location on “Main Street.” The reputation of a product or
service travels rapidly in today’s commercial marketplace, and can reach foreign markets long
Before the trademark owner has actually begun marketing its products and conducting business.
Trademarks have become even more fundamental in our commercial lives due to the primary
changes taking place in the intensely competitive international markets in consumer goods. When
compared to the market that existed a few decades ago, today’s consumer demands variety)
quality, and constant novelty. To meet these demands, businesses tailor their products to smaller
and increasingly heterogeneous, niche markets. Consequently, the incentive exists to search for
the least expensive location to manufacture the product that will enable the business to compete
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in global markets. In this fluid environment, the trademark originator’s intent to expand beyond
its original market should be presumed.

5.2. INTERNATIONAL AGREEMENTS RELATING TO TRADEMARK LAWS

5.2.a. Paris Convention for the Protection of Industrial Property- The Beginnings of the
International Trademark System. The Paris Convention for the Protection of Industrial Property
is the principal international treaty governing patents, trademarks, and unfair competition.
Concluded in 1883, the Paris Convention resulted in the first international effort to standardize
and simplify the protection of intellectual property rights in Member States. This Treaty has
been subsequently amended several times, the last amendment occur ring in Stockholm in
1967. Significantly, the Treaty drafted at the Paris Convention has the greatest number of
Member States of any treaty dealing with intellectual property rights, and is administered by
WIPO. The Paris Convention is primarily concerned with harmonization of
substantive trademark law and is premised on the fundamental principle that Member States
are not allowed to discriminate between their nationals and nationals of other Member States.
Thus, nationals of Member States enjoy the same rights, advantages, and protections as
nationals in every other Member State of the Paris Convention. The consistency in trademark
law among Member States is accomplished by the provisions of the Paris Convention that
provide for conditions associated with the filing and registration of trademarks which are
determined by national laws.

5.2.b. TRIPS Agreement :-

5.2.b.(i). WTO and The TRIPS Agreement The conclusion of the Agreement on Trade related
Aspects of Intellectual Property Rights (TRIPS) in 1994 presaged the advent of a global epoch
in trademark rights. The TRIPS Agreement not only provides substantive standards for the
eligibility and protection of trademarks, but also mandates that “effective” enforcement
procedures are available under national legal systems. It does so by establishing a global
network of “coordinate” national courts to enforce the substantive trademark provisions of the
Agreement. Without replacing the national, territorially-based trademarks of Member States,
TRIPS is based on principles of territoriality requiring independent trademark applications and
actions for the enforcement of rights in each Member State of the World
Trade Organization (WTO).

Trade-Related Aspects of Intellectual Property Rights (TRIPS) is expected to have the greatest
impact on the pharmaceutical sector and access to medicines. The TRIPS Agreement has been
in force since 1995 and is to date the most comprehensive multilateral agreement on intellectual
property. The TRIPS Agreement introduced global minimum standards for protecting and
enforcing nearly all forms of intellectual property rights (IPR), including those for patents.
International conventions prior to TRIPS did not specify minimum standards for patents. At
the time that negotiations began, over 40 countries in the world did not grant patent protection
for pharmaceutical products. The TRIPS Agreement now requires all WTO members, with few
exceptions, to adapt their laws to the minimum standards of IPR protection. In addition, the
TRIPS Agreement also introduced detailed obligations for the enforcement of intellectual
property rights. However, TRIPS also contains provisions that allow a degree of flexibility and
sufficient room for countries to accommodate their own patent and intellectual property
systems and developmental needs. This means countries have
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a certain amount of freedom in modifying their regulations and, various options exist for them
in formulating their national legislation to ensure a proper balance between the goal of
providing incentives for future inventions of new drugs and the goal of affordable access to
existing medicines.

Effects of an International Registration:

The effects of an international registration in each designated Contracting Party are, from the
date of the international registration, the same as if the mark had been deposited directly with
the office of that Contracting Party. If no refusal is issued within the applicable time limit, or
if a refusal originally notified by a Contracting Party is subsequently withdrawn, the protection
of the mark is, from the date of the international registration, the same as if it had been
registered by the office of that Contracting Party. An international registration is effective for
10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees.
Protection maybe limited with regard to some or all of the goods or services or may be
renounced with regard to only some of the designated Contracting Parties. An international
registration may be transferred in relation to all or some of the designated
Contracting Parties and all or some of the goods or services indicated.

5.2.c. Madrid Protocol – Indian case

India submitted its instrument of accession to the Protocol relating to the Madrid Agreement
Concerning the International Registration of Marks, known as the “Madrid Protocol” on 8 April
2013 with the World Intellectual Property Organization (WIPO). India became the 90th country
to accede to the Madrid Protocol. This is one of the most important developments in Indian
trademark law in recent years, providing a system for obtaining international trademark
protection that is streamlined and potentially very cost-efficient. The Madrid Protocol’s
efficient trademark protection shall be made available in India to international and domestic
trademark owners on 8 July, the date on which the treaty will enter into force with respect to
India.

6. PROTECTION OF TRADEMARKS- AN EVER EXPANDING CONCEPT

As we all know, in India prior to the Act of 1940 there was no statutory legislation relating to
trademarks and the protection of such was based on common law which was substantially the
same that was applied in England. The trademark Act 1940, introduced for the first time
machinery for the registration and statutory protection of trademarks in India. This Act was in
force until 1958, and then it was replaced by the Trade and Merchandise Act 1958. And then
in the year 1999 the Act of 1958 was replaced by the Trademarks Act 1999 to comply
with the provisions of TRIPS Agreement. Trademarks which are applied to goods and Service
marks are applied to services are protectable in India apart from Certification marks, which
indicate that particular products or services meet the standards set by the certifier. Well known
marks are also granted protected in India, though most countries protect only trademarks and
service marks. India also recognizes trademark rights under the Common law. Such rights are
acquired, through use of a trademark in commerce and registration is not mandatory. Common
law rights extend to a geographic area, in which the trademark owner carries on his business
under his mark in relation to products or services to which the mark is applied. Priority of right
is determined by who first used the mark within a particular geographic area. In countries, like
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India, which recognize common law rights, use of a mark in commerce has to be proved before
registration of the mark can be granted. In those countries that do not recognize common law
trademark rights, such rights can be acquired only through registration.

6.1. PROTECTION ACCORDED TO CONVENTIONAL TRADEMARKS

6.1 a. Collective marks

The collective marks are also marks at the first instance and could be in the form of a device,
name, word or label. The purpose and nature of collective marks is to distinguish the goods or
services of the members of an association of persons as against an individual juristic personality
as in the case of trade mark. The collective marks also indicate a connection in the course of
trade but such connection is not with a particular manufacturer but with an association of
persons of which such manufacturer is a member. The collective mark is not owned by any
individual manufacturer or member of the association. It is collectively owned
and possessed by the association of persons, which could be in the form of an incorporated
company, a society registered under The Society’s Act. The partnership firms are not eligible98
to own collective marks under most of the legislations in the World. The association of persons,
who own collective marks may compose of the manufacturers, traders, producers or
professional bodies like Institute of Chartered Accountants, Patent Agents, Trade Mark Agents,
Board of Cricket Control or alike.

The function of Collective Marks is to distinguish and identify the goods or services of the
members of the association of persons which own such collective marks. The association of
persons generally adopt some device, name, or symbol and such devices, names or symbols
are used by the members to indicate their membership of such association to the members of
the trade, general public or all others connected with such goods or services offered by the
association. A person is entitled to the use of a collective mark so long as he continues to be a
member of the association of persons formed with the objective of providing minimum
standard of quality for being admitted as a member. No individual member of such association
can claim an exclusive right to the use or exploitation thereof to the exclusion of other members
of the association.

6.1.2. Well known trademarks

The term ‘well known’ in relation to trademarks originates from the term ‘reputation’ which
was recognized for the first time in the age-old case of JG v Stanford wherein it was held that
the law of passing off prevents commercial dishonesty on the part of traders. The essence of
passing off has retained its classic form till date. The very basis of the said action is existence
of goodwill or reputation attached to the particular goods and the degree of representation that
is likely to deceive the public. In the absence of a statutory definition, acquisition of reputation
depends upon the usage of a particular good or service in connection with business.
However, a plaintiff’s reputation does not have to extend throughout the country and may be
restricted to a particular locality where the business is conducted. In India, protection to well-
known trademarks is given more importance as compared to ordinary trademarks. Formerly,
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this protection was given by way of common law formulations like passing off. For example,
in Daimler Benz Akietgesellschaft v Hybo Hindustan104, the manufacturers of Mercedes Benz
sought an injunction against the defendants who were using the famous ‘three pointed star in
the circle’ and the word ‘Benz’. The Court granted injunction against the defendants who were
using these marks for selling apparel. Similarly, in Whirlpool Co &Anr v N R Dongre105, the
plaintiff, Whirlpool had not subsequently registered their trademark after the registration of the
same in 1977. At the relevant time, the plaintiff had a worldwide reputation and used to sell
their machines in the US embassy in India and also advertised in a number of international
magazines having circulation in India. However, the defendant started using the mark on its
washing machines. After an action was brought against them, the Court held that the plaintiff
had an established ‘trans border reputation’ in India and hence the defendants were injuncted
from using the same for their products. Later, the Trademarks Act of 1999 (TM Act) brought
about several statutory changes, e.g., protection of well-known trademarks even without
registration or use in India apart from making some changes to harmonize it with the
obligations under the TRIPS Agreement. The Act also allowed the proprietors of well-known
trademarks a ground to oppose at the stage of registration itself, thereby giving special
treatment and rights for such marks.

7. Registration of Trademarks

PROCEDURE FOR REGISTRATION OF TRADEMARKS

7.1.a. Application for registration:

Any person claiming to be the proprietor of a trade mark used or proposed to be used by him,
may apply in writing to the Registrar in the prescribed manner for the registration of his trade
mark.

7.1.a.(i). Single Application for Different Classes of Goods and Services

A single application may be made for registration of a trademark for different classes of goods
and services and fee payable thereof shall be in respect of each such class of goods or services.
Under the ‘Trade and Merchandise Marks Act 1958, separate applications were requited to he
made it the applicant desired to register a trade mark in more than one class. According to r
2(1)I of the Trademarks Rules 2002. An ‘application for registration of a trade mark’ includes
the trade mark for goods or services contained in it. According to r 25(12), an application for
the registration of a trademark for goods or services shall:
(a) explain with sufficient precision, a description bv words, of the trade mark if necessary; to
determine the right of the applicant;
(b) be able to depict the graphical representation of the made mall,
(c) be considered as a three dimensional trade mark only it the application contains a statement
to that effect:
(d) be considered as a trade mark consisting of a combination of colours, only if the application
contains a statement to that effect.

The Supreme Court in American Home Products v. Mac Laboratories Pvt Ltd

Held that it is pertinent to note that both under Section 14(1) of the 1940 Act
and S.18(1) of the 1958 Act (section 18(1)of the Trademarks Act 1999). An applicant for
registration must be a person claiming to be the proprietor of a trademark used or proposed to
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be used by him. Therefore, unless it is the case of an applicant for registration that he is the
proprietor of a trade mark which has been used by him or which it proposed to be used by him
he is not entitled to registration.

According to r 25(9) of Trademarks Rules 2002, a single application for the registration of a
trade mark for different classes of goods shall be made in Form TM-5I.Where an applicant files
a single application in more than one classes the Registrar determines that the goods or services
applied for fall in class or classes in addition to those applied for, the applicant my restrict the
specification of goods or services to the class applied for, or amend that application to add
additional class or classes on payment of the appropriate class fee and the divisional fee. The
new class created through a division retains the benefit of the original filing date or in the case
of an application, from a convention country the convention application date under S. 154(12)
provided the claim was otherwise properly asserted in the initial application. Where a single
application under s. 18(2) is filed from a convention country for one or more classes of goods
or services, the applicants shall establish (1986) 1 SCC 465, p.481.Trademarks Rules 2002, r
25(19)1. a sufficient ground to the satisfaction of the Registrar for the date of filing of
application in all such classes.

4. Infringement and Passing Off of Trademarks

5.1. CONCEPT OF PASSING OFF- A GENERAL OVERVIEW
An action for passing off is based on common law of tort and is founded on the principle that
“no man is entitled to represent his goods as being the goods of another man; and no man is
permitted to use any mark, sign or symbol, device or means, whereby without making a direct
representation of himself to a purchaser who purchases from him, he enables such person to
tell a lie or to make a false representation to somebody else who is the ultimate purchaser.
Acquisition of right in a trademark by means of registration was first regulated in the United
Kingdom by the Trademarks Registration Act, 1875.
Nevertheless, even before that it was clear that a trader had a right to prevent other people from
knowingly and fraudulently selling the goods as and for the plaintiff’s goods when they were
not and if the right was infringed there was a legal remedy. Both the Common Law Courts and
Equity Courts were empowered to try trademark cases but the nature of relief granted varied,
damages being a purely common law relief, while injunction and accounts of profit were the
reliefs available in equity courts.
In Kerly’s Law of Trademarks and Tradenames, ‘passing off has been defined as “it is an
actionable wrong for the defendant to represent, for trading purposes, that his goods are those
or that his business is that of the plaintiff, and it makes no difference whether the
representations are effected by direct statements, or by using some of the badges by which the
goods of the plaintiff are known to be his or any badges colourably resembling these, in
connection with the goods of the same kind not being the goods of the plaintiff, in such a
manner as to be calculated to cause the goods to be taken by ordinary purchasers for the goods
of the plaintiff.”
The law of passing off can be summarized in one short general proposition- no man may pass
of his goods as those of another. More specifically, it may be expressed in terms of the elements
which the plaintiff in such an action has to prove in order to succeed. They are often referred
to as “Classical trinity” and are mentioned below:
Firstly, he must establish a goodwill or reputation attached to the goods or services which he
supplies, in the mind of the purchasing public by association with the identifying getup under
which his particular goods or services are offered to the public, such that the get up is
recognized by the public a distinctive specifically of the plaintiff’s goods or services. Secondly,
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he must demonstrate a misrepresentation by the defendant to the public leading or likely to lead
the public to believe that the goods or services offered by him are the goods or services of the
plaintiff. Thirdly, he must demonstrate that he suffers or in a quietimet action, that he is likely
to suffer damage by reason of the erroneous belief engendered by the defendant’s
misrepresentation that the source of the defendant’s goods or service is same as that of the
plaintiff.
6.3. ACTION FOR INFRINGEMENT UNDER THE INDIAN TRADEMARKS ACT 1999-
JUDICIAL APPROACH
Section 29 of the Act deals with Infringement of trademark, this section specifically states
various acts which constitute infringement:-

V.4.a.(ii). Application to be filed in the Office of Trademarks Registry

The application for registration of a trade mark is to be filed in the office
of the Trademarks Registry within whose territorial limits the principal place of
business in India of the applicant or in the case of joint applicants, the principal
place of business of the first applicant is situated. However, where the applicant or any of the
joint applicants does not curry on business in India, the application is to be filed in the office
of the Trademarks Registry within whose territorial limits the place mentioned in the address
for service in India as disclosed in the application is situated. According to r 4 of the
Trademarks Rules 2002, the appropriate office of the Trademarks Registry for the
purposes of making an application for the registration of a trade mark under s 18
or for giving notice of opposition under S.21 or for making an application for
removal of a trademark under S.47 or cancelling or varying the registration of a
trademark under S.57 or for any other proceedings under the Act and the rules
shall be
a) in relation to a trade mark tin the Register of Trademarks at the notified
date, the office of the Trademarks Registry within whose territorial limits:
1) the principal place of business in India of the registered
proprietor of the trade mark as entered in the register as such
date is situate:
2) where there is no entry in the register as to the principal place
of business in India of the registered proprietor, the place
mentioned in the address for service in India as entered in the
register at such date is situate;
3) in the ease of jointly registered proprietors, the principal place
of business in India of the proprietor whose name is entered
first in the register as having such place of business in India at
such date is situate
4) where none of the jointly registered proprietors is shown in the
register as having a principal place of business in India, the
place mentioned in the address for service in India of the joint
proprietors as entered in the register at such date, is situate;
5) if no principal place of business in India of the registered
proprietor of the mark or in the case of joint registration, of any
of the joint proprietors of the mark, is entered in the register,
and the register does not contain any address for service in
India, the place of the office of the Trademarks Registry where
the application for registration of the trade mark was made, is
situate, and
b) in relation to a trade mark for which an application for registration is
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pending at the notified date or is made on or after the notified date, the
office of the Trademarks Registry within whose territorial limits
1) the principal place of business in India of the applicant as
disclosed in the application or, in the case of joint applicants,
the principal place of business in India of the applicant whose
name is first mentioned in the application, as having such place
of business is situate
177
where neither the applicant nor any of the joint applicants, as the case may be, has
a principal place of business in India, the place mentioned in the address for
service in India as specified in the application is situated.
V.4.a.(iii). Principal Place of Business of the Applicant
Rule 3 of the Trademarks Rules 2002.defines. ‘principal place of business in
India to mean
1) where a person carries on business in the goods or services concerned in a
trade mark:
a) if the business is carried in only one place. That place
b) If the business is carried on in India at more places than one, the place
mentioned by him as the principal place of business in India:
2) where a person it not carrying on business in the goods or services
concerned in a trade mark
a) if he is carrying on any other business in India at only one place, that
place;
b) if he is carrying any other business in India at more than one place, the
place mentioned by him as the principal place of business
3) where a person does not carry on any business in India but has a place of
residence in India, then such place of residence in India.
V.4.a.(iv). Address for Service
According to Rule 18 of the Trademark Rules 2002, an address for service in
India shall be given
178
(a) by every applicant for registration of a trade mark who has no principal place of business
in India;
(b) in the case of joint applicants for registration of a trade mark, if none of them has a principal
place of business in India;
I by the proprietor of a trade mark who had his principal place of business in India at the date
of making the application for registration but has subsequently ceased to have such place;
(d) by every applicant in any proceeding under the Act or the rules and every person filing a
notice of opposition, who does not have a principal place of business in India.
(e) by every person granted leave to intervene under rule 94.
Any written communication addressed to a person as aforesaid at an address for service in India
given by him shall be deemed to be properly addressed. Unless an address for service in India
as required in sub-rule (1) is given, the Registrar shall be under no obligation to send any notice
that may be required by the Act or the rules and no subsequent order or decision in the
proceedings shall be called in question on the ground of any lack or non-service of notice.
An applicant for registration of a trade mark or an opponent filing notice of opposition may
notwithstanding that he has a principal place of business in India, if he so desires, may
specifically request in writing, the Registrar with an address in India to which communications
in relation to application or opposition proceedings only may be sent. Such address of the
applicant or the opponent shall be deemed unless subsequently cancelled, to be the actual
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address of the applicant or the opponent, as the case may be, and all communications and
documents in relation to the application or notice of opposition may be served by leaving them
at, or sending them by post to such address of the applicant or the opponent, as the case may
be.
V.4.b. Acceptance or Refusal of Application
The Registrar may, subject to the provisions of this Act, refuse the application or may accept
it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as
he may think fit. In the case of a refusal or conditional acceptance of an application, the
Registrar shall record in writing the grounds for such refusal or conditional acceptance and the
materials used by him in arriving at his decision.

5. Developments of new mechanisms to resolve IP disputes

6.1. THE IMPORTANCE OF ALTERNATIVE DISPUTE MECHANISMS IN THE IP
DISPUTES
Intellectual property disputes have a tendency to be vast and complex and regularly include high
stakes. Determining these clashes through conventional suit methodologies can again be
impeding to the business interests of both sides to the dispute. The major disadvantages of
litigating these disputes can be the
(1) prolonged time to arrive at a resolution,
(2) high cost
(3) inflexibility of the result,
(4) lack of control over the outcome,
(5) poor predictability of the result,
(6) negative publicity and
(7) harm to the business relationship.
Interestingly, Alternative Dispute Resolution (ADR) methodologies offer various preferences over
prosecution in intellectual property cases. For sure, ADR is assuming a bigger part in
intellectual property debate. In a few cases, ADR can give an excellent substitute to
conventional routines. Former Chief Justice of the U.S. Supreme Court, Chief Justice
Burger once said “that the notion that ordinary people want black-robed Judges and well
dressed lawyers and fine Courtrooms as settings to resolve their disputes is not correct.
People with problems, like people with pains, want relief, and they want it as quickly and
inexpensively as possible.”
The ADR mechanism conjures up various advantages when the same is applied in
resolving various IP disputes. To sum-up, following are the various advantages :
● Quick and Efficient Resolution.
● Cost Savings.
● Creative, Business-Driven Results.
● Control Over Process and Result.
● Better-Informed Decision-Making.
● Maintained, Improved, or New Business Relationships.
● Confidentiality.
6.1.a. Suggestions to Improve Online Dispute Resolution Mechanism
In the absence of an enforceable international regulatory regime, the following suggestions are
proffered to establish ODRs as an effective mechanism of dispute resolution:
Creation of national and international body By an international treaty of the community of
nations, an international ODR body needs to be created which would establish its own
substantive and procedural law. Every member country should have a national body conducting
ODRs, providing the infrastructural facilities and the panel of arbitrators/mediators, based upon
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the guidelines set out in the treaty to which the country is a signatory/member. This
international body should be independent and should be vested with appellate powers. Hence,
in case the disputants wish to challenge the decision, they can only have recourse to this
appellate forum and not to the national civil court system. Further, the decisions should be final
and binding upon the parties and the said international body should also have the power to
enforce the award. “Due process” and “fair play” To be a successful means of resolving
disputes, ODR must satisfy all requirements of “due process” and “fair play,” such as the
appointment of an unbiased decision maker to settle disputes by allowing parties to choose
from a panel of arbitrators or mediators, which may be made available on the website of the
ODR provider; providing background information of arbitrators or mediators to facilitate the
process of selection; and pronouncing a reasoned decision.
Security technology
ODR providers should be certain that they adopt security mechanisms to ensure the safety of
the parties information, such as, allow only authorized access to their websites and adopt the
latest security technology available and update it regularly. ODR providers should also
mandate that parties use digital signatures in their online communications. The purpose of such
digital signatures is two-fold:
(a) it encrypts the online message or document, thereby providing security to the transmission;
and (b) it allows the receiver to verify the authenticity of the message. Owing to the adaptable
nature of ADR, traditional forms can be modified to resolve most online disputes. While there
are several challenges to ODRs becoming a viable mechanism of dispute resolution, it is only
a matter of time before these challenges are overcome. Further, the rapid growth of ODR
providers in the last few years is evidence that ODR is a far more effective mechanism for
resolving online disputes than traditional ADR or litigation. A concerted effort by the
governments, consumer groups, and the online industry could go a long way in facilitating the
establishment of speedy and economical resolution of disputes
employing the ODR mechanism.

Chapter 8 Lacunae in current Trademark Laws

VIII.5. LOOPHOLES IN THE “PROPOSED TO BE USED” CLAUSE- CALLS FOR

REVISION
Section 18 (1) of the Trademarks act reads “Any person claiming to be the proprietor of a trade
mark used or proposed to be used by him, who is desirous of registering it , shall apply in
writing to the Registrar in the prescribed manner for the registration of his trade mark.”
It means that any person desirous of registering a trademark may do so by making an
application to the Registrar even without using the trademark at the time of making the
application. The legislative prudence behind such provision is to provide flexibility to those
applicants who bonafidely intend to use the mark in future. Traders or businessmen before
concretely launching a product into the market or offering a service to people need time to
acquaint the end users of the same. Advertising the goods/services by the applicant is one way
of familiarizing the consumers. The idea behind “proposed to be used” clause is to protect the
mark of the applicant during the incubation period of the business.
But actual purpose of the said clause is defeated by those unscrupulous applicants who register
marks devoid of any intention to use the mark in future. In addition to this there is absolutely
no mechanism adopted by the trademark registry to regularly check the actual usage status of
the registered trademark holder. Thus there are numerous marks registered by Registrar of
Trademarks which appear in the Registry without any actual usage by the so called proprietor
of the trademark.
VIII.5.a. Problems with the Current System
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1. Trademark registry is getting filled with marks that are never going to be used by the
registered owner of the mark. Thus the number of marks available for registration for an honest
applicant is becoming increasingly less.
2. It opened opportunities for those applicants who are registering trademarks with the sole
motive of selling the same in future, thus clearly deviating from the original purposes of
trademark protection. This is clearly not a healthy practice because
a. It puts honest applicants at the behest of devious registered trademark holders.
b. Commercial value of the trademark gets determined not by factors of reputation, quality of
goods, end user satisfaction etc; but merely by its non availability.
3. Availability of trademarks/tradenames, may not appear to be of concern currently but one
cannot assure that it will not be of concern in future.
4. Applications for registration of trademark in all classes although there is no actual use in all
classes of goods.
VIII.5.b. Comparision with other Jurisdictions
VIII.5.b.(i). United States of America
In United States of America an application for registration of trademark must specify the
“basis” for filing. Generally applicants base their application on either their current use of the
mark in commerce or their intent to use the mark in commerce in the future. Under either basis,
prior to registration one must demonstrate that he has used the mark in commerce in connection
with all the goods/services listed in your application by submitting an acceptable specimen.
The basic difference between these two filing bases is whether one has started to
use the mark on all the goods/services. If he has already used the mark in commerce in
connection with all goods or services listed in the application, he can file under “use in
commerce” basis. If he has not yet used the mark, but intend to use it in the future, he must file
under “intent to use” basis.
Therefore under the US Trademark Law, flexibility is provided to the applicants only at the
stage of filing of the application. To file an application actual usage of the mark is not a
condition precedent. But to obtain registration and to enjoy benefits thereof the applicant
should necessarily show current actual usage by filing a “Declaration of Use” with the United
States Patent and Trademark Office.

VIII.5.b.(ii). Canada
When an applicant files an application to a Canadian trademark, the applicant may:
a) Already be using the trademark in Canada; or
b) Propose to use the trademark in Canada at a later date.
A trademark cannot be registered until the trademark is used in Canada by the applicant.
Accordingly, when a Canadian trademark application is filed on the basis of ‘proposed use’,
ultimately (assuming all other hurdles to registration of the trademark are overcome in
prosecution) before the trademark can be registered, the applicant must file a Declaration of
Use. The date of first use in a Declaration of Use must be after the date that the application
based on proposed use was filed (ie. An applicant cannot file based on proposed use, and then
later claim use prior to the date of the application).

Chapter 09. Solutions and necessary suggestions with regard to passing off and infringement
of trademarks
Intellectual Property Rights (IPR) are considered to be the backbone of any economy and their
creation and protection is essential for sustained growth of a nation. The intellectual property
rights are now not only being used as a tool to protect the creativity and generate revenue but
also to build strategic alliances for the socio-economic and technological growth.
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The researcher has given a comprehensive account on the trademark laws in India. The law of
trademarks has undergone colossal change in the past seven decades with the enactment of
Trademarks 1940 and Trade and merchandise marks act 1958 and Trademarks act 1999.
Trademarks act 1940 provided for the first time statutory rights to the trademark owners. It
envisaged for recognition, protection and enforcement of the rights vested upon the owners of
trademarks.
The Trade and Merchandise Act 1958 consolidated provisions of Trademarks Act 1940, Indian
Merchandise Marks Act 1889 and Indian Penal Code. The prudence behind such consolidation
is to have trademark law codified, so that only one enactment governs multiple aspects of
protection of trademarks. This law has served its purpose for more than four decades and then
arose the need for new enactment in the light of developments in trading and commercial
practices, increasing globalization of trade and industry, the need to encourage investment
flows and transfer of technology and the need to simplify and harmonize trademark managing
systems. Thus the trademarks act 1999 was enacted. The
present act incorporates interalia registration of trademarks for services, collective marks, etc;
At the international level the growth of Trademark Protection is evident from the numerous
treaties entered into by the nation states. Today there is ample legal knowledge and easily
available resources to the newly developing countries if they wish to domestically legislate
upon trademark protection. Basic principles of protection of trademarks more or less remain
the same in all the treaties. Another inference drawn by the researcher is that, there are constant
endeavours by the nation states to bring about harmony in all the domestic legislations
pertaining to intellectual property rights especially trademarks. These endeavours
are necessitated by globalization of trade and commerce. Noteworthy amongst the Treaties
entered into by the nation states in recent times are the TRIPS Agreement and the Madrid
Protocol. The Indian Trademarks Act 1999 is based upon the United Kingdom Trademarks Act
1994 and the former was enacted primarily to meet the country’s obligations under The TRIPS
Agreement. India has also adopted the Nice Classification for Registration of Trademarks.
Recently India has ratified the Madrid Protocol and passed the Trademarks Amendment Act
2010 which incorporates the provisions of the protocol under Chapter IV(a). It simplifies the
procedure for international registration of trademarks. Therefore the researcher concludes that
Indian legislature is proactive and eager in domesticating the International Treaties and
Agreements. Protection of trademarks is an ever expanding concept.
Section 29 of the Trademarks Act 1999 deals with the aspect of infringement and Section 27
indirectly asserts the rights of unregistered trademark user to institute a suit for passing off.
Indian judiciary is still developing its knowledge over these concepts. Nevertheless the higher
judiciary is sufficiently advanced to deal with the complexities that arise from these kinds of
suits. Plethora of cases dealt by the higher judiciary guide the lower courts when adjudicating
upon the nascent aspects of infringement and passing off suits. For instance the Cadila Health
Care Ltd. Vs. Cadila Pharmaceuticals Ltd judgment by the Apex court is the guiding precedent
when dealing with passing off of medicinal products. But, the researcher being a practicing
advocate, witnessed lack of understanding of the subject by the lower judiciary. So there is a
need to improvise the knowledge base of the judges.
Intellectual property disputes often involve complex issues and large financial interests. In a
fast growing industrial world, trademarks become as equal an asset or sometimes more as the
final product itself. Any impact on the mark is liable to have an effect on the entire gamut of
operations of the industry. Thus it becomes important to protect it meticulously. If a dispute
arises with regard to the trademark it is in the best interests of the parties to resolve them at the
earliest. Admittedly efficiency of the conventional Indian judiciary is not at appreciable
standards. Delays are a common phenomenon in the adjudication of disputes. Therefore
alternate dispute resolution mechanisms are, more often than not, best suited for speedy
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adjudication of disputes. WIPO is actively persuading everyone to resolve their intellectual

property disputes through ADR. Domain disputes which may have cross border implications
are best resolved through Uniform Domain Name Dispute Resolution Policy(UDRP) and .IN
Domain Name Dispute Resolution Policy(.IN DRP). Proliferation of computers and easy
connectivity through internet facilitates online dispute resolution.

Therefore, it is the responsibility of the Supreme Court to become innovative and stop this
practice followed in the lower and High Courts. It is time to identify the loopholes in the
‘proposed to be used’ registration of trademarks. The entire rationale behind law of trademarks
is to protect those owners of the trademarks who actually use the trademark with which goods
or services are identified by the end users. Fraudulent practice of registering
trademarks with ulterior motives but not for actually using them is becoming rampant. If this
practice continues, larger problems such as registering of trademarks only for the sake of selling
them etc; will arise. Therefore, a fool proof mechanism for registration of trademarks which
prevents such malpractise should be developed. The procedures followed in foreign
jurisdictions like in United States of America and Canada will facilitate development of such
mechanism.